DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7-16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,286,570. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
US ‘570 claims an aqueous composition for release coatings, having a total solids content of no more than 10 wt%, comprising (a) a release polymer free of silicone polymer, and comprising a polymer having a molecular weight of 125±75 kg/mol, which includes thio(carbonyl)-containing groups, and (b) 0.75-1.25 wt% dioctyl sulfosuccinate (claim 1). US ‘570 goes on to claim the solids content of no more than 8 wt% (claim 2), and an article comprising a substrate coated with the release coating (claims 4-5) and further comprising an adhesive (claim 6).
Dioctyl sulfosuccinate is a known superwetter.
US ‘570 reads on instant claims 1-4, 7-16 and 18.
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.
Claims 1, 2 and 7-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wempe (US 4,386,183), as evidenced by Oliver (US 5,270,103).
Wempe discloses preparing a release layer from 10% aqueous solution of polyvinyl alcohol to which 5 wt% (based on weight of the polyvinyl alcohol) of a release promoting agent was added, where the release promoting agent is exemplified as Aerosol OT, a dioctyl ester of sodium sulfosuccinic acid. This represents a release coating comprising 0.5 wt% superwetter relative to the composition with a solids content of 10 wt%.
Wempe anticipates instant claims 1, 2 and 8-15.
As to claim 7, Wempe exemplifies the polyvinyl alcohol to include Vinol 350, which as evidenced by Oliver has a Mw of 124,000-186,000 (col. 6, ll. 21-36).
As to claim 16, Wempe discloses applying the release coating to an adhesive.
Claims 1-2, 10-12 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sarkar (US 2002/0022118).
Sarkar exemplifies an ink repellent coating of the following (p. 6, [0051]):
PNG
media_image1.png
144
570
media_image1.png
Greyscale
,
where GEMTEX 680 is described as dihexyl sulfosuccinate surfactant (p. 5, Table 1).
Sarkar discloses the ink repellent coatings as release coatings (p. 3, [0024]). The composition comprises a solids content of about 10 wt%.
Sarkar anticipates instant claims 1-2, 10-12 and 14-15.
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.
Claims 5-6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sarkar (US 2002/0022118), as applied above to claims 1-2, 10-12 and 14-15, and further in view of DiZio (US 5,990,238), Dahlquist (US 2,532,011) and Kinning (2004/0126576), as evidenced by Mussell (US 2016/0362237).
Sarkar anticipates instant claims 1-2, 10-12 and 14-15, as applied above and described herein as such, as Sarkar exemplifies an inki repellent coating comprising polyvinyl N-octadecyl carbamate and 0.05 wt% superwetter with a solids content of 10 wt%.
Sarkar teaches that the polyvinyl N-octadecyl carbamate is made according to US 5,990,238, to DiZio. DiZio exemplifies the polyvinyl N-octadecyl carbamate as comprising 52 mol% polyvinyl acetate (col. 20, Example 3).
Sarkar in view of DiZio is prima facie obvious over instant claims 5-6.
As to claim 7, Sarkar teaches that useful repellent coatings include urethane release coatings such as the class of polymers disclosed in US 2,532,011 (p. 3, [0024]).
Kinning teaches that polyvinyl N-alkyl carbamates are described, for examples, in US 2,532,011, and include polyvinyl octadecyl carbamate, teaching that typically polyvinyl octadecyl carbamate release materials have a molecular weight of from 50,000 to 300,000 g/mol (p. 5, [0056]). This overlaps with the claimed range of 125±25 kg/mol, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 13, dihexyl sulfosuccinate and the claimed dioctyl sulfosuccinate are homologues. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP 2114.09(II).
Therefore, one of ordinary skill in the art would expect dioctyl sulfosuccinate to possess similar properties as dihexyl sulfosuccinate is a known release agent in the LAB of Sarkar. Note, these compounds are both known release agents, as evidenced by Mussell (p. [0222]).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Sarkar (US 2002/0022118), as applied above to claims 1-2, 10-12 and 14-15, and further in view of Goldstein (US 10,889,736).
Sarkar anticipates instant claims 1-2, 10-12 and 14-15, as applied above and described herein as such, as Sarkar exemplifies an inki repellent coating comprising polyvinyl N-octadecyl carbamate and 0.05 wt% superwetter with a solids content of 10 wt%.
Sarkar teaches that the polyvinyl N-octadecyl carbamate is made according to US 5,990,238, to DiZio. DiZio teaches that the release coating composition includes a polymer including a vinyl-derived backbone having substituents attached thereon, which include a urethane linked nitrogen-bonded hydrocarbon side chain, where the vinyl-derived backbone is formed from acrylic esters (col. 5, ll. 9-23).
Goldstein teaches that water-based PVODC (poly(vinyl octadecyl carbamate)) compositions are known, but contain small amounts of solvents, resulting in the presence of VOCs, where it is known in the art that there is a desire to reduce VOCs (col. 1-2). Goldstein teaches a polymer that can be used as a release coating or a release agent in a LAB, which can be provided in a VOC-free form and which exhibit excellent release even after aging under high humidity (col. 2, ll. 40-44). Goldstein teaches that the polymer can include mer units that contain pendent groups that include at least two (thio)carbonyl groups and multiple additional heteroatoms, which can be formed by reacting a mono-iso(thio)cyanate having a long chain alkyl group with a polymerizable compound, such as a (meth)acrylate-type compound (col. 3, ll. 17-22). Goldstein teaches the percentage of mer derived from inventive release polymers is at least 50 mol% (col. 12, ll. 26-40).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have substituted the PVODC of Sarkar with the acrylate based homopolymer of Goldstein, as Goldstein teaches that these polymers having lower VOCs than the typical PVODCs used in LABs.
Note Goldstein also teaches that the molecular weights of the resulting polymers are similar to those used in the manufacture of PVODC, generally 125±75 kg/mol (col. 12, ll. 41-45).
Sarkar in view of Goldstein is prima facie obvious over instant claims 3-4.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sarkar (US 2002/0022118) in view of Dahlquist (US 2,532,011), Yanutola (US 2005/0014886) and Kinning (US 2004/0126576).
Sarkar exemplifies the formation of an ink repellent coating, also described as a release coating, of the following (p. 6, [0051]):
PNG
media_image2.png
148
556
media_image2.png
Greyscale
,
where GEMTEX 680 is described as dihexyl sulfosuccinate surfactant (p. 5, Table 1).
Example 5 suggests an aqueous composition (waterborne with 90% water), 0.05 wt% of sulfosuccinate, and a solids content of about 10 wt%.
Sarkar teaches that useful repellent coatings include urethane release coatings such as the class of polymers disclosed in US 2,532,011 (p. 3, [0024]).
US ‘011 teaches that the the low-adhesion polyvinyl carbamate polymers can be prepared from 50% hydrolyzed polyvinyl acetate, suggesting the presence of 50 mol% vinyl acetate.
Kinning teaches that polyvinyl N-alkyl carbamates are described, for example, in US 2,532,011, and include polyvinyl octadecyl carbamate, teaching that typically polyvinyl octadecyl carbamate release materials have a molecular weight of from 50,000 to about 300,000 g/mol (p. 5, [0056]). This overlaps with the claimed range of 125±25 kg/mol, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Yanutola teaches release coatings, specifically LAB (low adhesion backsize) compositions, teaching that backsize materials generally include a combination f a film forming polymer and a release agent, generally in combination with useful additive such as surfactants, where the ingredients can be suspended in water (p. 1, [0003]).
Yanutola teaches that a variety of surfactants, including sulfosuccinates, may be useful to prepare the aqueous compositions, teaching that generally, useful amounts of these ingredients may be in the range of up to 5 wt% (p. 9, [0076]-[0077]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the amount of sulfosuccinate surfactant in the waterborne urethane LAB of Sarkar, as Yanutola teaches that these additives are typically used in an amount of up to 5 wt%.
The range suggested by Yanutola overlaps with the claimed range of 0.1-1.5 wt%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Sarkar in view of Dahlquist, Kinning and Yanutola is prima facie obvious over instant claims 17-18.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Brieann R Johnston/Primary Examiner, Art Unit 1766