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 of Group I (claims 1-8) in the reply filed on November 11th, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Claims 9-20 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-8 are under examination and the requirement for restriction is made final.
Applicant’s election without traverse of Invention I in the reply filed on November 21st, 2025 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 21st, 2025.
Specification
The disclosure is objected to because of the following informalities:
Typo 1: On page 3 line 7, “an organic acids” should read “an organic acid” or “organic acids”
Typo 2: On page 13 line 3, “FIG. 5A show” should read “FIG. 5A shows”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Aibara (US 9818598 B2) and further in view of Amin-Sanayei (US 8765890 B2), as evidenced by Koh (WO 2011037124 A1).
With regard to claims 1-3, Aibara discloses a film-forming treatment composition (see Abstract). Aibara further discloses the film-forming treatment composition as comprising an organic acid and a fluorine-containing polymer (see Abstract).
However, Aibara fails to disclose a hydrophobic polymer.
Amin-Sanayei discloses fluoropolymers used in coatings, an analogous art (see Col 4 line 4-7). Amin-Sanayei further discloses a copolymer of 70-99% VDF and 1-30% HFP (see Col 4 line 37-38). This corresponds to a PVDF-HFP copolymer. A PVDF-HFP copolymer comprising 92% VDF and 8% HFP may have a molecular weight of 200,000g/mol, as evidenced by Koh (see Example 24).
Aibara discloses a film forming treatment comprising a fluorine containing polymer. Amin-Sanayei discloses fluoropolymers used in coatings and further discloses a copolymer of 70-99% VDF and 1-30% HFP (see Col 4 line 37-38). Applicant is reminded of In re Kerkhoven, which affirmed that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose....the idea of combining them flows logically from their having been individually taught in the prior art". In re Kerkhoven, 626 F .2d 846, 850, 205, USPQ 1069, 1072 (CCPA 1980). Therefore, one having ordinary skill in the art would find the claimed invention obvious as both Aibara and Amin-Sanayei disclose a coating composition comprising a fluorine containing polymer. As stated above, both Aibara and Amin-Sanayei disclose a coating composition comprising a fluorine containing polymer. It would, therefore, have been obvious to utilize the PVDF-HFP copolymer of Amin-Sanayei in the composition of Aibara to produce a coating composition comprising a fluorine containing polymer.
With regard to claim 4, Aibara discloses the film-forming treatment composition as comprising an organic acid and a fluorine-containing polymer (see Abstract). Aibara further teaches 0.1wt% to 10wt% of an organic acid (see col 10 line 55-60). Aibara further discloses 1wt%-15wt% of a fluorine containing polymer (see Col 9 line 55-60).
With regard to claim 5, Aibara teaches oxalic and malic acid as suitable organic acids (see col 10 line 52-54).
With regard to claim 6, Aibara discloses the composition may comprise N,N-dimethylformamide and N,N-dimethylacetamide (see col 6 line 36-37).
With regard to claim 7 and claim 8, Aibara discloses all of the limitations of claim 1.
However, Aibara fails to disclose a hydrophobic polymer.
Amin-Sanayei discloses fluoropolymers used in coatings, an analogous art (see Col 4 line 4-7). Amin-Sanayei further discloses a copolymer of 70-99% VDF and 1-30% HFP (see Col 4 line 37-38). This corresponds to a PVDF-HFP copolymer. A PVDF-HFP copolymer comprising 92% VDF and 8% HFP may have a molecular weight of 200,000g/mol, as evidenced by Koh (see Example 24).
Aibara discloses a film forming treatment comprising a fluorine containing polymer. Amin-Sanayei discloses fluoropolymers used in coatings and further discloses a copolymer of 70-99% VDF and 1-30% HFP (see Col 4 line 37-38). Applicant is reminded of In re Kerkhoven, which affirmed that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose....the idea of combining them flows logically from their having been individually taught in the prior art". In re Kerkhoven, 626 F .2d 846, 850, 205, USPQ 1069, 1072 (CCPA 1980). Therefore, one having ordinary skill in the art would find the claimed invention obvious as both Aibara and Amin-Sanayei disclose a coating composition comprising a fluorine containing polymer. As stated above, both Aibara and Amin-Sanayei disclose a coating composition comprising a fluorine containing polymer. It would, therefore, have been obvious to utilize the PVDF-HFP copolymer of Amin-Sanayei in the composition of Aibara to produce a coating composition comprising a fluorine containing polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY SHARON HARRIS whose telephone number is (571)270-1390. The examiner can normally be reached 7:30-5:00.
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/B.S.H./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761