DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 26, 2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (US 2020/0346972).
Regarding claim 1: Eguchi et al. teaches a surface treatment agent (abstract). The limitation “for organic-inorganic hybrid compositions” is intended use and carries little patentable weight. Eguchi et al. teaches a copolymer made of a mass/weight ratio (table 2 and para. 206) of HEMA/KBM-503 (table 2, production example 28, X21-22). HEMA is 2-hydroxyethyl methacrylate (para. 208) and KBM-503 is methacryloxypropyltrimethoxysilane (see compound structure in para. 207). Eguchi et al. further teaches methyl ethyl ketone/2-butanone (para. 172) as the dispersion solvent/liquid medium.
Not disclosed is the light transmittance or the haze value. However, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Eguchi et al. teaches the surface treatment agent is to be used on aquariums, meaning that light transmittance and haze are important factors for the viewer. Further, Eguchi et al. teaches the copolymers are transparent (para. 211). Finally, the copolymer of Eguchi et al. is made by the same monomers with the same weight ratio as in the instant specification. Therefore, a person having ordinary skill in the art would expect the light transmittance and haze value properties to be the same as in the claimed copolymer.
Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the methyl ethyl ketone/2-butanone of paragraph 172 in the polymerization process of production example 28 and would have been motivated to do so since Eguchi et al. teaches that methyl ethyl ketone/2-butanone is an acceptable solvent to use for the disclosed polymerization process and teaches it is a functional equivalent to the solvent used in the example (para. 172).
Regarding claims 5 and 6: Eguchi et al. teaches 2,2’-azobisisobutyronitrile as a polymerization initiator (para. 124). Further, Eguchi et al. teaches 600 mg (0.6 grams) of polymerization initiator per 60 grams of the monomers (para. 211 and 212). This is 1 wt% of the polymerization initiator in the surface treatment agent. While this specific polymerization initiator is not used in the X21-22 example, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to substitute the 2,2’azobisisobutyronitrile as the polymerization initiator and would have been motivated to do so since Eguchi et al. teaches they are functional equivalents (para. 124).
Response to Arguments
Applicant's arguments filed June 26, 2026 have been fully considered but they are not persuasive.
A) Applicant’s argument that the object of the disclosure of Eguchi et al. is different than the object of the present application is not persuasive. The Court in KSR stated that it is an error to look only to the particular problem the patentee was trying to solve. The problem motivating the patentee may be only one of many addressed by the patent’s subject matter and a person having ordinary skill in the art would not be led only to those elements of the prior art designed to solve the same problem (MPEP 2141 II A2).
B) Applicant’s argument that Eguchi et al. does not disclose an inorganic particle is not persuasive. An inorganic particle is not required by the claims to be present, and is merely a part of the intended use applicants have for the claimed surface treatment agent. The preamble of claim 1 states the purpose or intended use of the claimed surface treatment agent and does not distinctly define any limitations of the agent itself. See MPEP 2111.02 II.
C) Applicant’s argument that Eguchi et al. provides no technical motivation or suggestion directed toward controlling the dispersibility of inorganic particles is not persuasive. In KSR, the court noted that when a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. A disclosure that solves a problem which is different from that which the applicant was trying to solve may also be considered for prior art purposes (MPEP 2141 II A2).
D) Applicant’s argument that Eguchi et al. does not disclose methyl ethyl ketone as a dispersion solvent is not persuasive. In paragraph 172, Eguchi et al. discloses 2-butanone, which is methyl ethyl ketone.
E) Applicant’s argument that “it is well established” that when the dispersion solvent employed in a given composition differs from that of a reference composition, the optical properties of the resulting composition may vary significantly is not persuasive. Applicants provide no evidence or data of this statement. Argument does not replace evidence where evidence is necessary. Arguments presented by applicant cannot take the place of evidence on the record (MPEP 2145 I). Further, Eguchi et al. teaches a polymer formed by polymerizing only methacryloxypropyltrimethoxysilane and 2-hydroxythyl methacrylate monomers in a 1:1 weight ratio as claimed. In the broader disclosure than the examples, Eguchi et al. teaches MEK as a solvent (para. 172). Applicant has not established with evidence that the addition of MEK as a solvent to the polymerization process would affect the haze and light transmittance properties enough for the cited example to not be within the claimed ranges of light transmittance and haze value. In other words, even if the choice of solvent affects these values, would adding MEK to the example composition make the light transmittance less than 40% and the haze value greater than 80%? There is no claimed amount of MEK, so even a gram of MEK would read on the claimed surface treatment agent. Would a gram of MEK change the properties to be outside the claimed ranges? Further, Eguchi et al. does teach MEK as an alternative solvent (para. 172). Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either obviousness or anticipation has been established, and the applicant has the burden of showing that they are not. A chemical composition and its properties are inseparable (MPEP 2112.01). Applicants point to the examples in the instant disclosure as evidence of unexpected results. However, evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims (MPEP 716.02(b). In this case, the prior art teaches a polymer formed by polymerizing only methacryloxypropyltrimethoxysilane and 2-hydroxythyl methacrylate monomers in a 1:1 weight ratio as claimed. Therefore, showing results where one of these monomers is changed is not a comparison with the closest prior art. The closest prior art has the claimed monomers in the claimed weight ratio.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
