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
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 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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 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
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.
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.
Conclusion
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