DETAILED ACTION
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7, 8, and 20-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent Claim 1 recites a step that involves “self-peeling of the coating film”. Independent Claim 20 also recites a step that involves “self-peeling of the coating film”. In paragraph [0033] of applicant’s specification, applicant recites that “in the present invention, the self-peeling means that the peel level of a dry coating film which is measured by the following evaluation method is 20% or more and 100% or less”.
Paragraph [0034] discusses applicant’s “evaluation method” and recites the following: “the composition is applied to an epoxy resin-coated substrate plate at 0.3 g/cm2, and dried for 24 hours; and an area of bonding between the substrate plate and the composition spread wetly on the substrate plate before drying, S1, and an area of contact of the coating film with the substrate plate after drying, S2, are measured, and a value of (S1-S2)/S1 is calculated and defined as the peel level”. However, applicant does not provide any detail about what “epoxy resin” is used to form the “epoxy-coating substrate plate”, and the “epoxy-coating substrate plate” is needed to know if “self-peeling” is occurring or not, in accordance with applicant’s definition of “self-peeling” presented in paragraphs [0033] and [0033] of applicant’s disclosure. Since the evaluation method is configured to measure how much the coating film has peeled from the “epoxy-coating substrate plate”, the chemical composition of the “epoxy resin” would seem to be a detail of critical importance, as it may affect how much the coating film peels from the epoxy resin-coated substrate plate. Some of the factors (see MPEP 2164.01(a)) used to determine if an invention is enabled include “the nature of the invention”, “the level of predictability in the art”, “the amount of direction provided by the inventor”, and “the quantity of experimentation needed to make or use the invention based on the content of the disclosure”. Since the nature of the invention concerns how much a chemical coating peels from an epoxy resin-coated substrate plate, since chemistry is not an art with a high-level of predictability, since there are many different types of epoxy resins in the world, and since applicant’s disclosure hasn’t provided detail on what epoxy resin is used to determine is peeling qualifies as “self-peeling”, a practitioner would potentially need to do an unreasonable quantity of experimentation (with various epoxy resin-coated substrate plates, testing different epoxy resins) in order to see if their coating film undergoes “self-peeling”, as defined by applicant in paragraphs [0033] and [0034] of applicant’s disclosure. Given the unpredictability of the chemical art, it does not seem likely that a given type of coating film would have the same peel level with respect to all the different possible types of epoxy resin that could be used to form an epoxy resin-coated substrate plate. In other words, a practitioner might say to themselves: “I have my coating film, but since I don’t know what epoxy resin is used to perform the test of whether “self-peeling” is occurring or not, I would have to do an unreasonable amount of experimentation -- using different epoxy resins –
to see if my coating film is performing the claimed method or not”.
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.
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 1-5, 7, 8, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,505,787 to Yamaguchi in view of CA 2687613 by Ludtke.
With regard to claims 1, 7, and 8, Yamaguchi teaches a method of removing pollutants (items 6 in Figure 1a) from a surface (item 3 in Figure 1a), wherein the method comprises forming a coating film (item 9 in Figure 1b) on the surface by applying an aqueous film-forming composition to the surface, drying the coating film, and removing (Figure 1c) the film – together with the pollutants – after drying the coating film such that the surface is clean (Figure 1d; Col. 2, line 17 to Col. 4, line 33). Yamaguchi teaches that the aqueous film-forming composition comprises polyvinyl alcohol (reads on film-forming component), water (reads on volatile solvent), and silicone oil (reads on silicone compound; Col. 2, line 17 to Col. 4, line 33).
Yamaguchi does not teach that the mass ratio of the silicone oil to polyvinyl alcohol in the aqueous composition is 0.01 to 1.00. However, Yamaguchi teaches that the polyvinyl alcohol is a “film forming agent”, and Yamaguchi teaches that the film forming present is present in the aqueous composition “in an amount of 1 to 50% by weight, preferably 10 to 30% by weight” (Col. 2, line 54 to Col. 3, line 47). With regard to the silicone oil, Yamaguchi teaches that the silicone oil is a release agent, and Yamaguchi teaches that the concentration of a release agent should be determined “depending on the strippability of the strippable film, the level of soil on the surface of the external wall of the building, etc.” (Col. 3, lines 47-54). In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi by optimizing the concentrations of polyvinyl alcohol and silicone oil in the aqueous composition. The motivation for performing those optimizations is that the concentrations of polyvinyl alcohol and silicone oil are result-effective variables, as Yamaguchi teaches that some polyvinyl alcohol concentrations are more preferred than others and as Yamaguchi teaches that the concentration of release agent should be determined “depending on the strippability of the strippable film, the level of soil on the surface of the external wall of the building, etc.”.
As discussed, Yamaguchi teaches that the film-forming composition comprises polyvinyl alcohol. However, Yamaguchi is silent concerning the glass transition point of the polyvinyl alcohol.
Ludtke teaches that when using a polymer-comprising liquid to form a coating film on a surface, the glass transition point of the polymer is a result-effective variable that can affect the drying time of the coating film (Par. 0035 and 0037).
In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi such that the glass transition point of the polyvinyl alcohol is optimized, as Ludtke teaches that when using a polymer-comprising liquid to form a coating film on a surface, the glass transition point of the polymer is a result-effective variable that can affect the drying time of the coating film. The cleaning method of Yamaguchi involves drying the coating film before removing the coating film (and pollutants), and thus the speed of drying affects how long it takes to perform the cleaning method.
The combination of Yamaguchi in view of Ludtke does not disclose whether or not the drying of the coating film induces some self-peeling of the coating film. However, since Yamaguchi in view of Ludtke teaches performing the same steps as recited by applicant with the same chemicals as recited by applicant, it is reasonably expected that the same result occurs – namely, that drying of the coating film induces some self-peeling of the coating film.
With regard to claim 2, the combination of Yamaguchi in view of Ludtke does not explicitly teach that the step of removing the film – together with the pollutants – after drying the coating film involves collecting the film. However, once the film (together with the pollutants) has been removed from the cleaned surface, the film has served its purpose and can be considered waste material. In the art of cleaning, it is well known that waste material from a cleaning process can be collected such that the waste material can then be advantageously disposed of in some manner (MPEP 2144.03, Official Notice). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke such that the removed film (together with the pollutants) is collected as waste for some type of disposal, as the film has already served its cleaning purpose. Motivation for performing the modification was provided by the fact that, in the art of cleaning, it is well known that waste material from a cleaning process can be collected such that the waste material can then be advantageously disposed of in some manner.
With regard to claim 3, the combination of Yamaguchi in view of Ludtke does not teach that the drying of the coating film induces some self-peeling from a peripheral portion of the coating film. However, since the combination of Yamaguchi in view of Ludtke teaches performing the same steps as recited by applicant with the same chemicals as recited by applicant, it is reasonably expected that the same result occurs – namely, that drying of the coating film induces some self-peeling of the coating film from a peripheral portion of the coating film.
With regard to claim 4, the combination of Yamaguchi in view of Ludtke teaches that the film-forming composition is applied to building surfaces in order to remove pollutants therefrom (Abstract; Col. 2, line 17 to Col. 4, line 33 of Yamaguchi). The combination of Yamaguchi in view of Ludtke does not teach the density with which the film-forming composition is applied to building surfaces. However, the density of the application of the film-forming composition to building surfaces is a result-effective variable because if too little is applied, proper coating film formation may not cover building surfaces in order to successfully remove pollutants therefrom, and if film-forming composition is applied more densely than needed for pollutant removal to successfully occur, then film-forming composition is clearly being wasted. Therefore, in accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke such that the density with which the film-forming composition is applied to building surfaces is optimized, as that density is a result-effective variable.
With regard to claim 5, the combination of Yamaguchi in view of Ludtke teaches that the film-forming composition is applied to external building surfaces in order to remove pollutants therefrom (Abstract; Col. 2, line 17 to Col. 4, line 33 of Yamaguchi). The combination of Yamaguchi in view of Ludtke is silent with regard to the environmental temperature at which the drying of the coating film occurs. However, since an ambient outside temperature below -10°C or above 60°C is cold or hot (respectively) to a noteworthy extent, and since Yamaguchi doesn’t mention that such very cold or very hot environmental temperatures of the building exteriors is necessary for drying of the coating film to occur, Yamaguchi is considered to suggest having the drying of the coating film occur within the range specified by applicant in claim 5. Furthermore, in the art of drying, it is well known that drying can successfully occur at normal, ambient temperatures (MPEP 2144.03, Official Notice). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke such that the drying occurs at an ambient temperature within the range of applicant’s claim 5, wherein the ambient temperature is a temperature at which drying can occur. Motivation for performing the modification was provided by Yamaguchi suggesting as much and by the fact that, in the art of drying, it is well known that drying can successfully occur at normal, ambient temperatures.
With regard to claim 21, the combination of Yamaguchi in view of Ludtke does not specify the weight average molecular weight of the film-forming polyvinyl alcohol. However, Yamaguchi teaches that some by-weight concentrations of film-forming agent are more preferable than others (Col. 3, lines 44-46 of Yamaguchi), and thus Yamaguchi is considered to teach that the weight average molecular weight of the film-forming polyvinyl alcohol is a result-effective variable, as it affects how many film-forming molecules can be present to achieve a preferred by-weight concentration of polyvinyl alcohol. In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke by optimizing the weight average molecular weight of the film-forming polyvinyl alcohol, as that weight average molecular weight can be considered a result-effective variable.
With regard to claim 22, the combination of Yamaguchi in view of Ludtke does not specify the mass% of the film-forming polyvinyl alcohol in the aqueous composition. However, Yamaguchi teaches that some by-weight concentrations of film-forming agent are more preferable than others, with Yamaguchi teaching that a by-weight concentration of film-forming agent preferably being 10 to 30% (Col. 3, lines 44-46 of Yamaguchi). Yamaguchi can thus be considered to teach that the mass% of film-forming agent in the aqueous composition is a result-effective variable, as Yamaguchi teaches that some by-weight values of the film-forming polyvinyl alcohol in the aqueous composition are more preferable than others. In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Yamaguchi in view of Ludtke such that the mass% of the film-forming polyvinyl alcohol in the aqueous composition is optimized, as the mass% can be viewed as a result-effective variable in view of Yamaguchi’s teachings.
With regard to claim 23, the combination of Yamaguchi in view of Ludtke does not recite that the water concentration (of the cleaning composition) is 50-92 mass%. However, Yamaguchi teaches a preferred polyvinyl alcohol concentration of 10 to 30% by weight (Col. 3, lines 44-46 of Yamaguchi). Yamaguchi can thus be considered to teach that the mass% of film-forming agent in the aqueous composition is a result-effective variable, as Yamaguchi teaches that some by-weight values of the film-forming polyvinyl alcohol in the aqueous composition are more preferable than others. Yamaguchi teaches that “the amount of each of other components of the cleaning fluid…is appropriately determined depending on the strippability of the strippable film, the level of the soil on the surface of the external wall of the building, etc.” (Col. 3, lines 47-54 of Yamaguchi). Yamaguchi can thus be considered to teach that the concentrations of “each of the other components” are thus result-effective variables, as Yamaguchi teaches optimizing those concentrations based on factors such as “the strippability of the strippable film, the level of the soil on the surface of the external wall of the building, etc.”. Therefore, in accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke by optimizing the concentration of all the components mixed with water in the aqueous composition – and thus also optimizing the concentration of water in the aqueous composition. Motivation for performing the modification was provided by Yamaguchi, who is considered to teach that the concentrations of polyvinyl alcohol and “the amount of each of other components of the cleaning fluid” are result-effective variables.
With regard to claim 24, in the combination of Yamaguchi in view of Ludtke developed in the rejection of claim 1, the concentration of the silicone oil in the aqueous composition is optimized, as discussed in that rejection of claim 1.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,505,787 to Yamaguchi in view of CA 2687613 by Ludtke as applied to claim 1 above, and as evidenced by JPH04345637 by Igarashi in view of JP2013209562 by Sakuse.
With regard to claim 25, the combination of Yamaguchi in view of Ludtke teaches that the silicone oil is a release agent (Col. 3, lines 7-9 of Yamaguchi). The phrase “silicone oil” can be applied to a plurality of different chemicals, and the combination of Yamaguchi in view of Ludtke does not specifically recite that the “silicone oil” comprises one of the chemicals listed in claim 25. However, Yamaguchi does teach that the release agent can be a release agent suitable for use as a release agent for metal molds (Col. 3, lines 7-9 of Yamaguchi). Igarashi provides evidence that dimethylpolysiloxane (aka “PDMS”) can successfully be used as a release agent for metal molds (Par. 0040 of Igarashi translation). It is well known in the field of chemistry that PDMS can be considered a “silicone oil”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Yamaguchi in view of Ludtke such that PDMS is used as the silicone oil in the aqueous composition. PDMS is a silicone oil, and motivation for performing the modification was provided by Yamaguchi teaching that the release agent can be a release agent suitable for use as a release agent for metal molds. Igarashi provides evidence that PDMS can successfully be used as a release agent for metal molds (Par. 0040 of Igarashi translation).
The combination of Yamaguchi in view of Ludtke as evidenced by Igarashi does not recite the kinetic viscosity of the PDMS. However, Sakuse teaches that when applying a cleaning liquid to a to-be-cleaned surface in order to form a removable cleaning film from the cleaning liquid, the viscosity of the cleaning liquid is a result-effective variable because the viscosity should be low enough such that the film can be formed over irregularities of the to-be-cleaned surface while not being so low that an undesired level of flow may occur (Abstract and pages 2-7 of Sakuse translation, with emphasis on the page 7 viscosity discussion on page 7 of that translation). In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke as evidenced by Igarashi by optimizing the viscosity of the PDMS used in the aqueous cleaning composition, as the viscosity of the aqueous cleaning composition can be considered a result-effective variable in light of Sakuse’s teachings that when applying a cleaning liquid to a to-be-cleaned surface in order to form a removable cleaning film from the cleaning liquid, the viscosity of the cleaning liquid is a result-effective variable because the viscosity should be low enough such that the film can be formed over irregularities of the to-be-cleaned surface while not being so low that an undesired level of flow may occur.
Then combination of Yamaguchi in view of Ludtke as evidenced by Igarashi in view of Sakuse does not explicitly teach that the DMPS is nonvolatile. However, since the DMPS serves to aid the stripping of the formed film from the to-be-cleaned surface (Col. 3, lines 3-10 of Yamaguchi), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke as evidenced by Igarashi in view of Sakuse such that the DMPS is nonvolatile, as the DMPS should remain in the cleaning chemistry in order to aid stripping of the formed film instead of volatilizing away into the atmosphere.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,505,787 to Yamaguchi in view of CA 2687613 by Ludtke as evidenced by JPH04345637 by Igarashi in view of JP2013209562 by Sakuse.
With regard to claim 20, Yamaguchi teaches a method of removing pollutants (items 6 in Figure 1a) from a surface (item 3 in Figure 1a), wherein the method comprises forming a coating film (item 9 in Figure 1b) on the surface by applying an aqueous film-forming composition to the surface, drying the coating film, and removing (Figure 1c) the film – together with the pollutants – after drying the coating film such that the surface is clean (Figure 1d; Col. 2, line 17 to Col. 4, line 33). Yamaguchi teaches that the aqueous film-forming composition comprises polyvinyl alcohol (reads on film-forming component), water (reads on volatile solvent), and silicone oil (reads on silicone compound; Col. 2, line 17 to Col. 4, line 33).
As discussed, Yamaguchi teaches that the film-forming composition comprises polyvinyl alcohol. However, Yamaguchi is silent concerning the glass transition point of the polyvinyl alcohol.
Ludtke teaches that when using a polymer-comprising liquid to form a coating film on a surface, the glass transition point of the polymer is a result-effective variable that can affect the drying time of the coating film (Par. 0035 and 0037).
In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi such that the glass transition point of the polyvinyl alcohol is optimized, as Ludtke teaches that when using a polymer-comprising liquid to form a coating film on a surface, the glass transition point of the polymer is a result-effective variable that can affect the drying time of the coating film. The cleaning method of Yamaguchi involves drying the coating film before removing the coating film (and pollutants), and thus the speed of drying affects how long it takes to perform the cleaning method.
The combination of Yamaguchi in view of Ludtke teaches that the silicone oil is a release agent (Col. 3, lines 7-9 of Yamaguchi). The phrase “silicone oil” can be applied to a plurality of different chemicals, and the combination of Yamaguchi in view of Ludtke does not specifically recite that the “silicone oil” comprises one of the chemicals listed in claim 25. However, Yamaguchi does teach that the release agent can be a release agent suitable for use as a release agent for metal molds (Col. 3, lines 7-9 of Yamaguchi). Igarashi provides evidence that dimethylpolysiloxane (aka “PDMS”) can successfully be used as a release agent for metal molds (Par. 0040 of Igarashi translation). It is well known in the field of chemistry that PDMS can be considered a “silicone oil”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Yamaguchi in view of Ludtke such that PDMS is used as the silicone oil in the aqueous composition. PDMS is a silicone oil, and motivation for performing the modification was provided by Yamaguchi teaching that the release agent can be a release agent suitable for use as a release agent for metal molds. Igarashi provides evidence that PDMS can successfully be used as a release agent for metal molds (Par. 0040 of Igarashi translation).
The combination of Yamaguchi in view of Ludtke as evidenced by Igarashi does not teach that the mass ratio of the PDMS to polyvinyl alcohol in the aqueous composition is 0.01 to 1.00. However, Yamaguchi teaches that the polyvinyl alcohol is a “film forming agent”, and Yamaguchi teaches that the film forming present is present in the aqueous composition “in an amount of 1 to 50% by weight, preferably 10 to 30% by weight” (Col. 2, line 54 to Col. 3, line 47). Yamaguchi teaches that the concentration of a release agent should be determined “depending on the strippability of the strippable film, the level of soil on the surface of the external wall of the building, etc.” (Col. 3, lines 47-54). In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke as evidenced by Igarashi by optimizing the concentrations of polyvinyl alcohol and PDMS in the aqueous composition. The motivation for performing those optimizations is that the concentrations of polyvinyl alcohol and PDMS are result-effective variables, as Yamaguchi teaches that some polyvinyl alcohol concentrations are more preferred than others and as Yamaguchi teaches that the concentration of release agent should be determined “depending on the strippability of the strippable film, the level of soil on the surface of the external wall of the building, etc.”.
The combination of Yamaguchi in view of Ludtke as evidenced by Igarashi does not recite the kinetic viscosity of the PDMS. However, Sakuse teaches that when applying a cleaning liquid to a to-be-cleaned surface in order to form a removable cleaning film from the cleaning liquid, the viscosity of the cleaning liquid is a result-effective variable because the viscosity should be low enough such that the film can be formed over irregularities of the to-be-cleaned surface while not being so low that an undesired level of flow may occur (Abstract and pages 2-7 of Sakuse translation, with emphasis on the page 7 viscosity discussion on page 7 of that translation). In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke as evidenced by Igarashi by optimizing the viscosity of the PDMS used in the aqueous cleaning composition, as the viscosity of the aqueous cleaning composition can be considered a result-effective variable in light of Sakuse’s teachings that when applying a cleaning liquid to a to-be-cleaned surface in order to form a removable cleaning film from the cleaning liquid, the viscosity of the cleaning liquid is a result-effective variable because the viscosity should be low enough such that the film can be formed over irregularities of the to-be-cleaned surface while not being so low that an undesired level of flow may occur.
The combination of Yamaguchi in view of Ludtke as evidenced by Igarashi in view of Sakuse does not explicitly teach that the DMPS is nonvolatile. However, since the DMPS serves to aid the stripping of the formed film from the to-be-cleaned surface (Col. 3, lines 3-10 of Yamaguchi), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi in view of Ludtke as evidenced by Igarashi in view of Sakuse such that the DMPS is nonvolatile, as the DMPS should remain in the cleaning chemistry in order to aid stripping of the formed film instead of volatilizing away into the atmosphere.
The combination of Yamaguchi in view of Ludtke as evidenced by Igarashi in view of Sakuse does not disclose whether or not the drying of the coating film induces some self-peeling of the coating film. However, since Yamaguchi in view of Ludtke as evidenced by Igarashi in view of Sakuse teaches performing the same steps as recited by applicant with the same chemicals as recited by applicant, it is reasonably expected that the same result occurs – namely, that drying of the coating film induces some self-peeling of the coating film.
Response to Arguments
Applicant's arguments filed July 28, 2028 have been fully considered but they are not persuasive.
With regard to the examiner’s enablement rejections, applicant presented an affidavit by Noriaki Ushio, but the arguments in this affidavit are not persuasive.
In Ushio’s affidavit, Ushio states that “based on my experience and expertise, a person skilled in the subject matter of the present application, with or without referring to the present specification, would be able to practice the claimed method”. However, it is noted that independent claims 1 and 20 each recite “self-peeling”, and “self-peeling” is defined in applicant’s specification. So, consulting the specification would be necessary in order to attempt to confirm that “self-peeling” is actually occurring. This is worth noting because the examiner’s enablement rejections were prompted by applicant’s specification not providing detail about what “epoxy resin” is used to form the “epoxy-coating substrate plate”, and the “epoxy-coating substrate plate” is needed to know if “self-peeling” is occurring or not, in accordance with applicant’s definition of “self-peeling” presented in paragraphs [0033] and [0033] of applicant’s disclosure. Since the evaluation method is configured to measure how much the coating film has peeled from the “epoxy-coating substrate plate”, the chemical composition of the “epoxy resin” would seem to be a detail of critical importance, as it may affect how much the coating film peels from the epoxy resin-coated substrate plate.
In Ushio’s affidavit, Ushio states the following:
Based on my experience and expertise, a person skilled in the field of removing pollutants using self-peelable films would be capable of selecting an appropriate epoxy resin for evaluating self-peeling of compositions that might be used in the context of the claimed method. Further, if needed, such skilled artisan could compare peel level results obtained with a candidate epoxy resin with peel level results for the numerous working examples in the present specification to confirm that an appropriate epoxy resin has been selected to evaluate self-peeling. Even if necessary, it would not be technically difficult or unduly taxing of time and resources of a skilled person to perform multiple iterations of the evaluation described in the present application.
This line of argument is not persuasive. Let’s say a practitioner initially selects what they think is an appropriate epoxy resin for evaluating the self-peeling resulting from a given film-forming cleaning composition. They test their composition on this appropriate epoxy resin and see no “self-peeling” as defined in applicant’s specification. Does this necessarily mean the practitioner’s composition does not read on applicant’s claimed invention? No, because there may be a different (that is, different from the initially selected epoxy resin) epoxy resin on which this practitioner’s composition would demonstrate this “self-peeling”. So now the practitioner is faced with a problem: there are many different epoxy resins in the world; even if the practitioner tests a bunch more epoxy resins and discovers that their composition does not demonstrate applicant’s “self-peeling” on any of that bunch of epoxy resins, there may still be a remaining/untested epoxy resin on which the composition could demonstrate this “self-peeling”. In applicant’s arguments dated 7/28/2025 (presented by attorney Doughty), applicant argues that “while the OA asserts that a skilled artisan ‘would potentially need to do an unreasonable quantity of experimentation,’ this is conclusory”. However, in these arguments (such as the above argument involving a hypothetical “practitioner”), the examiner provides clear reasoning about the potential problems involved in a practitioner determining whether a given composition results in self-peeling or not, and thus the examiner does not consider his position to be merely conclusory.
As discussed in the examiner’s enablement rejections, some of the factors (see MPEP 2164.01(a)) used to determine if an invention is enabled include “the nature of the invention”, “the level of predictability in the art”, “the amount of direction provided by the inventor”, and “the quantity of experimentation needed to make or use the invention based on the content of the disclosure”. Since the nature of the invention concerns how much a chemical coating peels from an epoxy resin-coated substrate plate, since chemistry is not an art with a high-level of predictability, since there are many different types of epoxy resins in the world, and since applicant’s disclosure hasn’t provided detail on what epoxy resin is used to determine is peeling qualifies as “self-peeling”, a practitioner would potentially need to do an unreasonable quantity of experimentation (with various epoxy resin-coated substrate plates, testing different epoxy resins) in order to see if their coating film undergoes “self-peeling”, as defined by applicant in paragraphs [0033] and [0034] of applicant’s disclosure. Given the unpredictability of the chemical art, it does not seem likely that a given type of coating film would have the same peel level with respect to all the different possible types of epoxy resin that could be used to form an epoxy resin-coated substrate plate. In other words, a practitioner might say to themselves: “I have my coating film, but since I don’t know what epoxy resin is used to perform the test of whether “self-peeling” is occurring or not, I would have to do an unreasonable amount of experimentation -- using different epoxy resins –
to see if my coating film is performing the claimed method or not”.
In Ushio’s affidavit, Ushio states that “if needed, such skilled artisan could compare peel level results obtained with a candidate epoxy resin with peel level results for the numerous working examples in the present specification to confirm that an appropriate epoxy resin has been selected to evaluate self-peeling”. This is not persuasive. Let’s say a practitioner first selects a “candidate epoxy resin” and successfully reproduces applicant’s “self-peeling” for all the working examples disclosed by applicant. So far, so good. However, if the practitioner then tests their own film-forming composition on this “candidate epoxy resin” and finds no “self-peeling”, that information would not be enough for the practitioner to successfully conclude that their composition does not demonstrate applicant’s claimed “self-peeling” because there could be another, as-yet-untested epoxy resin on which all the working examples and the practitioner’s composition would demonstrate “self-peeling”. Without knowing the chemistry of the epoxy resin used to define if “self-peeling” is occurring or not, an unreasonable quantity of experimentation could be required to determine if a practitioner’s composition self-peels or not. Ushio’s statement that “it would not be technically difficult or unduly taxing of time or resources of a skilled person to perform multiple iterations of the evaluation described in the present application” is thus not persuasive to the examiner.
In applicant’s arguments dated 7/28/2025 (presented by attorney Doughty), applicant argues that “the text of enablement is whether ‘whether [the specification], when filed contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.’” However, the examiner’s point is that without knowing the chemistry of the epoxy resin used to define if “self-peeling” is occurring or not, an unreasonable quantity of experimentation could be required to determine if a practitioner’s composition self-peels or not. The examiner will repeat an earlier discussion to emphasize this point: let’s say a practitioner initially selects what they think is an appropriate epoxy resin for evaluating the self-peeling resulting from a given film-forming cleaning composition. They test their composition on this appropriate epoxy resin and see no “self-peeling” as defined in applicant’s specification. Does this necessarily mean the practitioner’s composition does not read on applicant’s claimed invention? No, because there may be a different (that is, different from the initially selected epoxy resin) epoxy resin on which this practitioner’s composition would demonstrate this “self-peeling”. So now the practitioner is faced with a problem: there are many different epoxy resins in the world; even if the practitioner tests a bunch more epoxy resins and discovers that their composition does not demonstrate applicant’s “self-peeling” on any of that bunch of epoxy resins, there may still be a remaining/untested epoxy resin on which the composition could demonstrate this “self-peeling”.
Applicant argues (in the arguments by attorney Doughty) that “the present specification provides a clear, detailed explanation of how to evaluate whether a composition yields a coating this is self-peeling”. This is not persuasive. As discussed above, without knowing the chemistry of the epoxy resin used to define if “self-peeling” is occurring or not, an unreasonable quantity of experimentation could be required to determine if a practitioner’s composition self-peels or not.
Applicant argues (in the arguments by attorney Doughty) that “applicant does not concede that this is how claim 1 should/would be interpreted by a court of other tribunal”. However, the examiner’s argument isn’t based on the decisions of a hypothetical court/tribunal. As discussed, the examiner’s point is that without knowing the chemistry of the epoxy resin used to define if “self-peeling” is occurring or not, an unreasonable quantity of experimentation could be required to determine if a practitioner’s composition self-peels or not.
Ushio’s arguments regarding enablement are repeated in attorney Doughty’s arguments dated 7/28/2025. The examiner’s responses to the repeated arguments regarding enablement are the same – regardless of whether they come from Doughty or Ushio – and thus don’t need to be duplicated.
Similarly, Ushio also presents arguments relating to the examiner’s obviousness rejections, and those lines of argument are also presented by Doughty in Doughty’s arguments. The examiner’s responses to the repeated arguments regarding the obviousness rejections are the same – regardless of whether they come from Doughty or Ushio – and thus don’t need to be duplicated.
With regard to claim 1, applicant argues that:
However, Yamaguchi does not specify any particular mass ratio of a silicone compound to a film-forming component – (C)/(A) in claim 1. Dec., 12. The only thing that Yamaguchi specifies is that the strippable film forming agent is contained in an amount of 1 to 50% by weight in the aqueous cleaning fluid and that the total amount of solids in the aqueous cleaning fluid should not exceed 50% by weight. Dec., 12; Yamaguchi, 3:44-42.
The disclosure of Yamaguchi does not indicate that any particular amount of the silicone compound should be present in the aqueous cleaning fluid, much less a specific mass ratio with the strippable film forming agent.
This line of argument is not persuasive. Yamaguchi also teaches that the concentration of a release agent should be determined “depending on the strippability of the strippable film, the level of soil on the surface of the external wall of the building, etc.” (Col. 3, lines 47-54). The relevant portion of the examiner’s rejection of claim 1 is reproduced below, and this portion articulates the examiner’s optimization argument:
Yamaguchi does not teach that the mass ratio of the silicone oil to polyvinyl alcohol in the aqueous composition is 0.01 to 1.00. However, Yamaguchi teaches that the polyvinyl alcohol is a “film forming agent”, and Yamaguchi teaches that the film forming present is present in the aqueous composition “in an amount of 1 to 50% by weight, preferably 10 to 30% by weight” (Col. 2, line 54 to Col. 3, line 47). With regard to the silicone oil, Yamaguchi teaches that the silicone oil is a release agent, and Yamaguchi teaches that the concentration of a release agent should be determined “depending on the strippability of the strippable film, the level of soil on the surface of the external wall of the building, etc.” (Col. 3, lines 47-54). In accordance with MPEP 2144.05, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Yamaguchi by optimizing the concentrations of polyvinyl alcohol and silicone oil in the aqueous composition. The motivation for performing those optimizations is that the concentrations of polyvinyl alcohol and silicone oil are result-effective variables, as Yamaguchi teaches that some polyvinyl alcohol concentrations are more preferred than others and as Yamaguchi teaches that the concentration of release agent should be determined “depending on the strippability of the strippable film, the level of soil on the surface of the external wall of the building, etc.”.
Applicant argues that Yamaguchi’s “discussion is with reference to all components (strippable film forming agent, optional release agent, optional surfactant, acid, alkali)”. This line of argument is not persuasive. Yamaguchi teaches that “the amount of each of other components of the cleaning fluid, such as a release agent, a surfactant, an acid and an alkali, is appropriately determined depending on the strippability of the strippable film, the level of the soil on the surface of the external wall of the building, etc.” (Col. 3, lines 47-54 of Yamaguchi). In that quote, the word “each” was italicized by the examiner for emphasis. In the examiner’s opinion, Yamaguchi is clearly providing motivation to optimize the concentration of each component “depending on the strippability of the strippable film, the level of the soil on the surface of the external wall of the building, etc.”.
With regard to self-peeling, applicant argues the following:
Yamaguchi does not disclose any specific composition, so it is not possible to say that any composition according to Yamaguchi would necessarily exhibit self-peeling. Dec., 14. While the OA asserts that “it is reasonably expected that the same results occur,” this is not the standard for inherency. Further, there is no recognition of self-peeling as a possible or desirable feature in Yamaguchi or Ludtke – thus, it cannot be said to have been expected based on the teachings of such references.
Applicant continues the argument by argueing that “the examples of the present application demonstrate that varying components and component amounts of (A) a film-forming component, (B) a volatile solvent, and (C) a silicone compound influences peel level and, thus the presence or absence of self-peeling”. This line of argument is not persuasive. Firstly, the examiner’s rejection doesn’t rely on Yamaguchi or Ludtke reciting that self-peeing is possible or desirable. The examiner’s rejection also does not make an inherency argument. The examiner’s rejection simply says that applicant’s recited property (applicant’s recited self-peeling property) is expected to occur in the method of Yamaguchi or Ludtke because the combination of Yamaguchi or Ludtke teaches performing the same steps as recited by applicant with the same materials as recited by applicant. The relevant portion of the rejection of claim 1 is reproduced below:
The combination of Yamaguchi in view of Ludtke does not disclose whether or not the drying of the coating film induces some self-peeling of the coating film. However, since Yamaguchi in view of Ludtke teaches performing the same steps as recited by applicant with the same chemicals as recited by applicant, it is reasonably expected that the same result occurs – namely, that drying of the coating film induces some self-peeling of the coating film.
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 RYAN L COLEMAN whose telephone number is (571)270-7376. The examiner can normally be reached 9-5 Monday-Friday.
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, Kaj Olsen can be reached at (571)272-1344. 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.
/RLC/
Ryan L. Coleman
Patent Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714