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 with traverse of group I, claims 1, 20, and 21, in the reply filed on March 6, 2026 is acknowledged. The traversal is on the ground(s) that the special technical feature is not known in the art. This is not found persuasive because the special technical feature of claim 1 is known in the art. Nitta et al. (JP 2017218713) in view of Liu et al. (WO 2020/142388) teach the claimed copolymer of claim 1.
Nitta et al. teaches a silicone-acrylate copolymer (pg. 2) comprising 90 parts by weight of stearyl acrylate/a monomer of the first repeat unit, where R1 has 18 carbon atoms and R2 is hydrogen; 8 parts by weight of a siloxane modified acrylate of the formula
PNG
media_image1.png
112
306
media_image1.png
Greyscale
; and 2 parts of hydroxyethyl methacrylate/a monomer of third repeat unit, where R2 is methyl, R7 is an oxygen atom, D3 is an ethylene group, v is zero, and R8 is a hydroxyl group/crosslinkable group (Example 7). Z1 and Z2 are zero in this example.
Nitta et al. does not teach the siloxane modified acrylate as having 10 to 16 silicon atoms. However, Liu et al. teaches a silicone-acrylate copolymer comprising a siloxane modified acrylate of the formula
PNG
media_image2.png
166
214
media_image2.png
Greyscale
(¶00257) or
PNG
media_image3.png
236
306
media_image3.png
Greyscale
(¶0071). Nitta et al. and Liu et al. are analogous art as they are concerned with the same field of endeavor, silicone-acrylate copolymers. It would have been obvious to a person of ordinary skill in the art to have substituted the monomer of Liu et al. for the siloxane modified monomer of Nitta et al., and the motivation to do so would have been, as Liu et al. suggests, the claimed monomer provides higher viscosity and improved water contact angle when compared to the monomer of Nitta et al. (Table 2, Example 4 and Comparative Example 2).
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 6, 2026.
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 1, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Nitta et al. (JP 2017218713) in view of Liu et al. (WO 2020/142388). Note: A machine translation provided by the applicant on June 21, 2023 is being used for JP 2017218713.
Considering Claims 1, 20, and 21: Nitta et al. teaches a silicone-acrylate copolymer (pg. 2) comprising 90 parts by weight of stearyl acrylate/a monomer of the first repeat unit, where R1 has 18 carbon atoms and R2 is hydrogen; 8 parts by weight of a siloxane modified acrylate of the formula
PNG
media_image1.png
112
306
media_image1.png
Greyscale
; and 2 parts of hydroxyethyl methacrylate/a monomer of third repeat unit, where R2 is methyl, R7 is an oxygen atom, D3 is an ethylene group, v is zero, and R8 is a hydroxyl group/crosslinkable group (Example 7). Z1 and Z2 are zero in this example.
Nitta et al. does not teach the siloxane modified acrylate as having 10 to 16 silicon atoms. However, Liu et al. teaches a silicone-acrylate copolymer comprising a siloxane modified acrylate of the formula
PNG
media_image2.png
166
214
media_image2.png
Greyscale
(¶00257) or
PNG
media_image3.png
236
306
media_image3.png
Greyscale
(¶0071). Nitta et al. and Liu et al. are analogous art as they are concerned with the same field of endeavor, silicone-acrylate copolymers. It would have been obvious to a person of ordinary skill in the art to have substituted the monomer of Liu et al. for the siloxane modified monomer of Nitta et al., and the motivation to do so would have been, as Liu et al. suggests, the claimed monomer provides higher viscosity and improved water contact angle when compared to the monomer of Nitta et al. (Table 2, Example 4 and Comparative Example 2).
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, 20, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/681,245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 2 of application ‘245 teaches a composition comprising the claimed copolymer taught in an anticipatory manner. As the claim recites the copolymer, it implicitly teaches the copolymer, even though the claim as a whole is directed towards an emulsion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, 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.
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.
/LIAM J HEINCER/Primary Examiner, Art Unit 1767
Prosecution Insights