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 .
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.
Claim(s) 1-3, 14, 34-42 are rejected under 35 U.S.C. 103 as being unpatentable over Nagahara et al. (US 2015/0225500).
Regarding claims 1 and 14, 36-41 Nagahara discloses substrate particle to contain a dye is not particularly limited as long as it can contain the dye. Examples of the substrate particle may include an organic particle, an inorganic particle except for metal, and an organic and inorganic composite particle. It is preferable that the substrate particle be an organic particle, and preferably a resin particle. The resin particle is formed from a resin (para 0085). Examples of a resin to form the organic particle and the resin particle may include a polymer of a polymerizable monomer such as an olefin such as ethylene, propylene, butadiene, butylene, and methylpentene, and a derivative thereof; a styrene derivative such as styrene, .alpha.-methylstyrene, p-methylstyrene, p-chlorostyrene, divinylbenzene, and chloromethylstyrene; vinyl fluoride; vinyl chloride; a vinyl ester such as vinyl acetate and vinyl propionate; a vinyl ether such as methyl vinyl ether; an unsaturated nitrile such as acrylonitrile; a (meth)acrylate derivative such as methyl (meth)acrylate, ethyl (meth)acrylate, butyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, stearyl (meth)acrylate, ethylene glycol (meth)acrylate, trifluoroethyl (meth)acrylate, pentafluoropropyl (meth)acrylate, and cyclohexyl (meth)acrylate, dicarboxylic acid such as phthalic acid; diamine; diallyl phthalate; benzoguanamine; triallyl isocyanate; and a condensate and a polymer that mainly contain polyether such as polyethylene glycol and polypropylene glycol, polyvinyl alcohol, polyacetal, an allyl resin, a furan resin, a silicone resin, polyurethane, a fluororesin, a vinyl resin, polycarbonate, polyamide, (un)saturated polyester, polyethylene terephthalate, polysulfone, polyphenylene oxide, polyimide, polyamide imide, polyether ether ketone, polyether sulfone, an epoxy resin, a phenolic resin, a melamine resin, sugar, starch, cellulose, or polypeptide. The polymerizable monomer may be used alone or in combination of two or more kinds thereof. The resin to form the organic particle and the resin particle may be used alone or in combination of two or more kinds thereof (para 0086), where divinyl benzene, methyl (meth) acrylate, butyl (meth) acrylate, cyclohexyl (meth) acrylate would meet the limitation of hydrophobic monomer (I), a crosslinkable monomer (II) and crosslinkable monomer (II) of claim 2 and reactive/hydrophilic monomer (III) and polypropylene glycol dimethacrylate would correspond to crosslinkable monomer (II) of claim 2.
While there is no disclosure that the organic fine particle is an slip prevention organic fine particle and anti-slip agent as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. slip prevention and anti-slip agent, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Nagahara and further that the prior art structure which is a organic fine particle identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
However, the recitation in the claims that the slip prevention organic fine particle is “for textile, capable of being present on a substrate in a state of having a particle shape” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Nagahara disclose organic fine particle as presently claimed, it is clear that the organic fine particle of Nagahara would be capable of performing the intended use, i.e. for textile, capable of being present on a substrate in a state of having a particle shape, presently claimed as required in the above cited portion of the MPEP.
As Nagahara discloses organic fine particle as stated above, it therefore would be obvious that organic fine particle would intrinsically exhibit slip prevention effect to prevent misalignment of a textile product on the substrate and would intrinsically have slip resistance of 8 mm or less, when measured in accordance to the claimed method in claim 1 and would intrinsically satisfy at least one of conditions of (i) to (iii) of claim 3.
Regarding claim 34, with respect to the molar ratio of hydrophobic monomer (I)/short chain hydrocarbon group containing monomer (III), When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claim 35, Nagahara discloses resin particle is formed from a resin (para 0085). Examples of a resin to form the organic particle and the resin particle may include a polymer of a polymerizable monomer such as an olefin such as ethylene, propylene, polycarbonate (para 0086), where polycarbonate would intrinsically have the claimed high glass transition temperature.
With respect to 20 mol% or more limitation, It would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization motivated by the desire to have have impact resistance and durability, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05).
Regarding claim 42, with respect to parts by mol of monomer (II) and monomer (IV), with respect to the molar ratio of hydrophobic monomer (I)/short chain hydrocarbon group containing monomer (III), When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nagahara et al. (US 2015/0225500) as applied to claim 1, further in view of Madenokoji et al. (JP 2009-191236).
Regarding claim 4, Nagahara fails to disclose the organic fine particle having a particle size of 50-700 nm.
Whereas, Madenokoji discloses the crosslinked resin particles of the present invention are formed from a monomer mixture consisting of 5- 45 wt% t-butyl acrylate, 10-70 wt% crosslinkable monomer, and 85-0 wt% copolymerizable vinyl monomer. Therefore, it is possible to provide crosslinked resin particles that are excellent in coating property and light diffusion performance and can be used for an optical sheet having high antiglare property or light diffusion property (page 2). The average particle size of the crosslinked resin particles is preferably 0.3 to 200 μm, more preferably 0.8 to 100 μm. An average particle diameter of 0.3 μm or more is preferable from the viewpoint of ensuring light diffusibility, and an average particle diameter of 200 μm or less is preferable from the viewpoint of ensuring coatability (page 4).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to form organic resin particle of Nagahara having a particle diameter of 0.3-200 microns as taught by Madenokoji motivated by the desire to have light diffusibility and improved coatability.
Claim(s) 1, 3-4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Madenokoji et al. (JP 2009-191236).
Regarding claims 1, 3-4 and 14, Madenokoji discloses the crosslinked resin particles of the present invention are formed from a monomer mixture consisting of 5- 45 wt% t-butyl acrylate, 10-70 wt% crosslinkable monomer, and 85-0 wt% copolymerizable vinyl monomer. Therefore, it is possible to provide crosslinked resin particles that are excellent in coating property and light diffusion performance and can be used for an optical sheet having high antiglare property or light diffusion property (page 2). The average particle size of the crosslinked resin particles is preferably 0.3 to 200 μm, more preferably 0.8 to 100 μm. An average particle diameter of 0.3 μm or more is preferable from the viewpoint of ensuring light diffusibility, and an average particle diameter of 200 μm or less is preferable from the viewpoint of ensuring coatability (page 4). The crosslinked resin particles. When the crosslinked resin particles of the present invention are coated on a substrate together with a binder, a coating film (light diffusing layer) excellent in coating property can be obtained while maintaining high light diffusibility. The crosslinkable monomer is not particularly limited, and any known monomer can be used as long as it has crosslinkability. For example, ethylene glycol di (meth) acrylate, (Meth) acrylate monomers such as diethylene glycol di (meth) acrylate, caprolactone-modified dipentaerythritol hexa (meth) acrylate, Examples include divinylbenzene, divinylnaphthalene, and aromatic divinyl monomers that are derivatives thereof. Methyl methacrylate, ethyl methacrylate, n-butyl methacrylate, isobutyl methacrylate, 2-ethylhexyl methacrylate, cyclohexyl methacrylate. Among the copolymerizable vinyl monomers, methyl acrylate, methyl methacrylate, ethyl methacrylate, isobutyl methacrylate, cyclohexyl methacrylate. The crosslinkable monomers may be used alone or in combination (page 3), where divinyl benzene, methyl (meth) acrylate, t-butyl (meth) acrylate, cyclohexyl (meth) acrylate would meet the limitation of hydrophobic monomer (I), a crosslinkable monomer (II) and crosslinkable monomer (II) and reactive/hydrophilic monomer (III).
While there is no disclosure that the organic fine particle is an slip prevention organic fine particle and anti-slip agent as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. slip prevention and anti-slip agent, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Madenokoji and further that the prior art structure which is crosslinked organic fine particle identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
However, the recitation in the claims that the slip prevention organic fine particle is “for textile, capable of being present on a substrate in a state of having a particle shape” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Madenokoji disclose crosslinked organic fine particle as presently claimed, it is clear that the organic fine particle of Madenokoji would be capable of performing the intended use, i.e. for textile, capable of being present on a substrate in a state of having a particle shape, presently claimed as required in the above cited portion of the MPEP.
As Madenokoji discloses crosslinked organic fine particle as stated above, it therefore would be obvious that organic fine particle would intrinsically exhibit slip prevention effect to prevent misalignment of a textile product on the substrate and would intrinsically have slip resistance of 8 mm or less, when measured in accordance to the claimed method in claim 1 and would intrinsically satisfy at least one of conditions of (i) to (iii) of claim 3.
Response to Arguments
Applicant’s arguments filed on 12/4/2025have been fully considered, but they are moot in view of new grounds of rejections as stated above.
Applicant argues that Nagahara does not in fact disclose slip prevention organic fine particles), Nagahara is structurally distinguished by the changed made to amended claim 1. Further, a person of ordinary skill in the art would not have had a reason or motivation to modify the structure of Nagahara to arrive at the claimed slip prevention organic fine particle, let alone to achieve predictable results.
However, it is not clear how the structure of Nagahara is different than structure of present invention, as Nagahara discloses organic fine particle comprises a polymer as presently claimed, it therefore would have, absent evidence to the contrary slip prevention properties.
Applicant argues that advantageous results are neither taught nor suggested by Nagahara, and were not predictable by a person of ordinary skill in the art at the time of the claimed invention (and certainly not predictable from Nagahara). Thus, these unexpectedly superior results further support patentability of the presently claimed invention. This is because, for example, evidence of a "superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected" is evidence of non-obviousness, because "that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious." In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Examiner is kindly directed to review the Examples of the present application. In particular, a person of ordinary skill in the art comparing between the Examples and Comparative Examples in the present specification would readily appreciate that the unexpectedly superior results are significant. For example, when comparing Example 12, where particles prepared in Synthesis Example 5 (synthesized only using monomers I and II) were used, with Examples 8, 5, and 2, which used the same amounts of particles synthesized using the monomers I, II, and II, once can see that Example 12 resulted in worse performance in terms of slippage resistance and water repellency (see, e.g., Table 3 of the specification).
However, the data is not in commensurate in scope with the scope of the present claim, as table 1 discloses examples with the components in specific monomer molar ratio, whereas Claim 1 does not recite any molar ratio of claimed monomers, so it is not clear if the unexpected properties will be achieved if the components are present in any amount of molar ratio of all 3 monomers.
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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788