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 .
Election/Restrictions
Applicant’s election without traverse of Group I, stearyl acrylate, 2-methylene-1,3-dioxepane, fabric, no C or D species in the reply filed on 6/5/26 is acknowledged.
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/5/26.
Priority
The foreign priority documents are not in English. The claims are given an effective of the filing of the PCT: 11/8/21
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/14/25, 10/8/24, 6/26/23, 5/3/23 have been considered by the examiner.
The X references noted on the ISR are, at this time, deemed cumulative to Rehmer US 5294688 (set forth below).
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 6 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dai (Biodegradable poly(ester) poly(methyl methacrylate) copolymer for marine antibiofouling, Progress in Organic Coatings, 124, 2018, 55-60).
Dai discloses copolymers of 2-methylene-1,3-dioxepane (MDO) and methyl methacrylate (MMA) (abstract). The monomers are in a mol% of 80 mol% MMA and 20 mol% MDA (section 2.2). The polymer is non-fluorinated (e.g. there are no fluorine groups therein).
The above copolymer meets the copolymer of claim 1, wherein the MMA meets the “hydrophobic monomer having an unsaturated double bond and 3-40 hydrocarbon atoms”. Since the copolymer requirements are met, and, the coating would implicitly have some oil and water repellency, the “water and oil repellent composition” requirements are deemed to be met. There are no properties associated with such, the copolymer must be to some degree oil and water resistant for some period of time otherwise it would easily wash off the surface and not give the biofouling properties desired in marine environments. Further, the mol% above meet that of dependent claim 5.
If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112(III) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Elements above also meets the copolymer requirements of claim 2 (the MMA is an ester group), claim 3 (the 2-methylene-1,3-dioxepane meets this). Claim 6 is drawn to the future intended use, which is thusly rejected. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim(s) 1-6, 9 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rehmer (US 5294688).
Rehmer discloses UV crosslinkable copolymers (title) comprising 75-99.5 wt% olefinically unsaturated monomers and 0.5-25 wt% unsaturated monomers having the formula of the abstract (abstract). The copolymers are used as coating agents, impregnants or adhesives (abstract).
The olefinically unsaturated monomers include acrylic and methacrylic esters of alkanols having 1-18 carbon atoms (Column 3 lines 59-65). A C18-alkanol would be stearic alkanol. Thus, use of steryl acrylate (the elected species) is embraced by Rehmer, but other monomers that meet claim 1, such as butyl acrylate, isoamyl acrylate and others therein (Column 3 lines 62-68) are disclosed. Picking one option from a list of compounds is held by the Office to be anticipated.
The monomer of the formula of the abstract may be 2-methylene-1,3-dioxepane (Column 3 line 48), meeting the elected species of the cyclic vinylidene monomer of claim 1, further this is also an exemplified species wherein the 1-methylene-1,3-dioxepan is the same compound as above.
There are no fluorine monomers therein. When using 75-99.5 wt% stearyl acrylate and 0.5-25 wt% 2-methylene-1,3-dioxepane, this calculates to a mol% range of 1.4-48.7 mol% 2-methylene-1,3-dioxepane and 51-98.6 mol% stearyl acrylate (using MW 2-methylene-1,3-dioxepane 114 g/mol, MW stearyl acrylate 324.5 g/mol)
stearyl acrylate
2-methylene-1,3-dioxepane
SUM
wt%
75
25
100 wt%
99.5
0.5
100 wt%
mol
0.231
0.219
0.450
0.307
0.004
0.311
mole%
51.3
48.7
100 mole%
98.6
1.4
100 mole%
Elements above meet the composition/monomer requirements of claims 1-5. Since the mol% requirements are met, the water- and oil-repellant requirements of claim 1 are deemed to be met. The only thing seemingly required is the use of these two monomers. Thus, the property is deemed inherent. Alternatively, since the mol% ranges are also embraced the property is deemed to be embraced by the reference. If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112(III) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Elements above meet claims 1-5. The composition may be used for fabrics (Column 11 line 42), as required by claim 9. Claim 6 is drawn to the future intended use and is thusly rejected.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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