DETAILED ACTION
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by 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).
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (US 2020/0346972).
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).
Regarding claims 7 and 8: Eguchi et al. teaches the basic claimed surface treatment agent as set forth above. 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.
Response to Arguments
Applicant’s arguments filed December 8, 2025 have been considered but are moot because of the new grounds of rejection.
The rejection over Cho et al. is removed. Applicant’s argument that there are unexpected results is not persuasive. Eguchi et al. teaches the same copolymer as claimed. Evidence of unexpected properties may be in the form of 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) III).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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