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 § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Hatanaka (US 2018/0215925 A1).
Regarding claim 1, Hatanaka teaches an antifouling film (Abstract), which also has antifogging properties ([0055]). The composition comprises silica particles and a polymer (c), which comprises an acrylamide structure and a hydrocarbon group having 2-20 carbon atoms (Abstract). The acrylamide structures include acrylate or methacrylate monomers with acyl nitrogen atoms substituted with hydrogen, methyl, or ethyl groups ([0024]), which read on the claimed “formula (a).” The hydrocarbon group groups comprise (meth)acrylate esters having, inter alia, 2 or more carbons within the within the ester group ([0024]), which reads on the claimed “structural unit based on at least one hydrophobic because these groups are (meth)acrylate esters and are therefore “(meth)acrylate-based monomers having a hydrocarbon group.”
Hatanaka further teaches that the silica particles preferably have a particle size equal to or smaller than 50 nm ([0076]), which falls within and therefore anticipates the claimed range of “not more than 60 nm.”
Hatanaka describes the preferred structural units within polymer (c) ([0142]), and specifically points out the suitability of a polymer formed from acrylamide and ethyl acrylate ([0163]). Moreover, Hatanaka teaches that the polymer (c) may include between 70 and 95 mol% of formula (1), of which acrylamide is a specified option ([0155] and [0163]). A polymer containing 70-95 mol% of acrylamide (71.079 g/mol) and 5 – 30 mol% of ethyl acrylate (100.12 g/mol) comprises between about 62.4 and 93.1 wt% of acrylamide, which overlaps and therefore anticipates the claimed range of “30 to 75% by mass.”
Hatanaka further teaches that the silica component may comprise between 5 and 95 wt% of the solids within the inventive formulation ([0082]), and polymer (c) may comprise between 0.1 and 90 wt% of the inventive formulation ([0170]). The silica component may therefore comprise between 5.3 and 99.9 wt% of the combined amounts of silica and polymer (c), which encompasses the claimed range of “74 to 87 wt%.” The claimed range comprises a significant portion (approximately 13.7%) of the prior art range. It has been held that a prior art genus containing only 20 compounds anticipated a single claimed species within the genus because “one skilled in [the] art would… envisage each member” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original). See MPEP 2131.02 and 2144.08. The degree of overlap between Hatanaka’s range and the claimed range is greater than the degree of overlap in Petering, and one of ordinary skill in the art would clearly envisage each value falling within the claimed range based on the values disclosed by Hatanaka. Therefore, Hatanaka’s range of 5.3 to 99.9 wt% overlaps the range of “74 to 87 wt%” with sufficient specificity to anticipate the claimed range.
Regarding the newly added compositional ranges of the combined silica and resin components, Hatanaka specifically teaches the compositional amounts of its components in terms of solid content (e.g., [0082] and [0170]) and explicitly teaches that the term solid content specifically refers to all non-solvent components, including those which may be liquid ([0059]). Hatanaka likewise teaches that the inventive film-forming process involves coating the inventive composition onto a substrate followed by removing solvent to form a film ([0258]). Since the solvent is removed during film formation and the solid content refers to every component other than solvent, the film comprises the solids content of the inventive coating composition.
Hatanaka teaches that the silica may comprise 5-95 wt% of the solids content ([0082]), and the polymer (c) may comprise 0.1-90 wt% of the solids content ([0170]), together these combined amounts overlap and therefore anticipate the claimed range of “at least 90% by mass.”
In the alternative, all of the prior art ranges noted above overlap the claimed ranges. In cases where the claimed ranges overlap, or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (see MPEP 2144.05). Therefore, the claimed ranges would have been obvious.
Regarding claim 2, within Example 1 of Hatanaka, the proportion of hydrophobic monomer (ethyl acrylate) within polymer (c-1) is about 26 wt% (20 g of ethyl acrylate / 77 g total of acrylamide and ethyl acrylate), which falls within and therefore anticipates the claimed range of “from 25 to 70% by mass.”
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hatanaka (US 2018/0215925 A1) in view of Ju (US 2019/0315996 A1).
Regarding claims 3 and 4, Hatanaka teaches all of the limitations of claims 1 and 2, as described above. Hatanaka differs from claims 3 and 4 because it is silent with regard to the claimed molecular weight dispersity. Hatanaka does however teach that the inventive film has excellent hydrophilicity ([0301]).
In the same field of endeavor, Ju teaches a hydrophilic coating composition containing copolymers (Abstract), including (meth)acrylamides and/or (meth)acrylates ([0033]). Ju further teaches that molecular weight distributions of between 1.1 and 3.0 are advantageous in terms of providing improved hydrophilicity and adhesiveness ([0069]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate a molecular weight distribution ranging from 1.1 to 3.0 within the polymer of Hatanaka as taught by Ju for the purpose of improving the hydrophilicity and adhesiveness of the inventive antifouling and antifogging coating. The range of molecular weight distributions taught by Ju overlap the claimed ranges of “not more than 3.0,” establishing prima facie cases of obviousness.
Response to Arguments
Applicant's arguments filed April 13, 2026 have been fully considered but they are not persuasive.
Applicant argues that Hatanaka fails to disclose the claimed compositional range; however, as described above, Hatakana does teach the claimed range.
Applicant asserts issues regarding the formulation of Hatanaka relating to a leaching mechanism therein, and states “by largely limiting the composition of the two specific structural components (A) and (B) to at least 90% by mass, the present invention minimizes the presence of “other” mobile additives or residual monomers” and states that “the superior “resistance to water run marks” is achieved specifically and only by excluding these leachable impurities through this high-concentration requirement.” As described above, Hatanaka teaches the claimed range and therefore does not “teach away” from the claimed composition. Importantly, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Applicant’s remaining arguments are directed towards allegations of unexpected results. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In the instant case, the data provided contains results for compositions wherein the amorphous silica and resin components comprise 100% of the non-volatile portions of the composition (e.g., Inventive Example 1 contains 8.2 parts of amorphous silica PL-ID and 1.5 parts of Resin A-2; all of the remaining components are volatile liquid components, See Table 2 on p. 24 of instant Specification). Comparatively, the claims are open to compositions containing as little as 90% silica and resin.
Furthermore, the data provided for the “resistance to water run marks” provided not properly described by the remainder of the specification. Tables 2 and 3 (pp. 24=25 of instant Specification) contain data points for “Resistance to water run marks” which are indicated as “G,” “P,” and “VP.” However, [0058] indicates that a “Resistance to Water Run Marks” value of “G” indicates no water run marks on the coating film while a value of “VP” indicates that water run marks are visible. No mention is made of a rating of “P” within this scheme and, since the ratings for “G” and “VP” are dichotomous (i.e., “G” and “VP” describe the presence or absence of run marks only, and make no mention of severity of water run marks), it is unclear what a rating of “P” is intended to mean.
For at least the foregoing reasons, Applicant has argued that evidence of unexpected results for a narrow portion of the claimed range, using an unclear rating system, would be sufficient to rebut a prima facie determination of obviousness. The applicant need not provide evidence for every possible composition as claimed; however, the experimental results are not reasonably commensurate in scope with the claims so as to successfully rebut a prima facie determination of obviousness.
Regarding the Declaration filed on April 13, 2026, Applicant has re-created examples from prior art document Hatakana in an attempt to illustrate that the composition of Hatanaka fails to meet the claimed composition.
As an initial matter, the claims do not require that the composition possesses any specific resistance to water run marking, and therefore the experimental results provided do not rebut the fact that the composition of Hatanaka reads on the claimed composition.
The presence of compositions within Hatakana which do not fall within the claimed composition does not rebut the existence of compositions which do fall within the claimed composition. Importantly, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). Hatanaka therefore reads on the claimed composition despite the fact that some compositions of Hatanaka do not fall therein.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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