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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5, 11, 19, 29, and the claims dependent therefrom are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The reasons articulated previously still apply.
Claim Rejections - 35 USC § 102
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.
Claim 35 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takada et al., JP 2013-119618 for the reasons outlined previously.
Formula (2-1-2) on page 32 is anticipatory of the claimed monomer where, n is 4, X is an oxygen atom, R2 a C6 aromatic hydrocarbyl group with a C3 alkyl group attached thereto.
Claim 35 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuwana et al., U.S. Patent Application Publication No. 2018/0037817 for the reasons outlined previously.
Formula (G3-1) in [0365] is anticipatory of the claimed monomer where, n is 6, X is an oxygen atom, R2 a C12 biphenyl group with a C3 alkyl group attached thereto.
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.
Claims 1, 5, and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al., WO 2021/066604 for the reasons outlined previously.
Response to Arguments
Notwithstanding the fact that Applicant cites to several commercial permutations of the polydimethylsiloxane mono(meth)acrylate, unless or until it is confirmed that the molecular weights reported in association with these are all number averaged mw or weight-averaged mw, the intended scope of these claims cannot be known.
The prior art rejections over Watanabe, Suzuki, and Schwendeman are all withdrawn as the Examiner clearly failed to observe of component d)i) that the alkyl mono(methacrylate) had to feature a linear alkyl ester moiety.
Regarding the rejection over Takeda, which the Examiner admittedly misreported as having document number JP 2016-119618, as opposed to JP 2013-119618, the latter clearly portrays a structure at the indicated teaching location anticipatory of the claimed monomer where R1 is a hydrogen atom, n=4, X is an oxygen atom, and R2 is a group comprising one aryl ring and one C3 alkyl substituent bound thereto. Because the Examiner cited the proper number on the PTO-892 form, attached the proper document to the last Office action, and insofar as the correct number was a single figure off from being correctly cited, it is concluded that Applicant could easily have inferred a typographical error. Not only this but they could have sought clarification from the Examiner if there were still confusion. For these reasons, the Examiner does not perceive that the issuance of a second non-final rejection is necessary at this time.
As for Kuwana, it is noted that Applicant did not even challenge the validity of the rejection but rather simply suggested that the Examiner should “check his work”. The Examiner continues to regard Kuwana as an anticipatory disclosure.
Concerning the rejection over Choi, the Examiner does not agree with Applicants’ characterization of paragraph [0166]. This passage does not list cycloalkyl (meth)acrylate and aromatic (meth)acrylate as optional additional monomers the copolymer may include. Rather, it says that the polymer “may further include one or more types selected from the group consisting of an alkyl (meth)acrylate having less than 8 carbon atoms (which of course is the genus to which butyl methacrylate belongs) a cycloalkyl methacrylate…” Hence, at least in the context of this passage, the cycloalkyl (meth)acrylate and aromatic (meth)acrylate are no less obvious than is butyl methacrylate. While the Examiner appreciates that butyl methacrylate is incorporated into each of the prior art exemplifications, it does not nullify the fact that cycloalkyl (meth)acrylate- and aromatic (meth)acrylate monomers are also disclosed. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
As to the notion that the incorporation of either a cycloalkyl (meth)acrylate or an aromatic (meth)acrylate would leave a practitioner of the prior art invention with no expectation of achieving water repellant properties, the Examiner does not follow. Not only do the other monomers, i.e. the monomer bearing a polydiorganosiloxane chain, and the monomer that provides a pendant C10 or higher alkyl chain, confer hydrophobic characteristics, but so do monomers bearing cycloalkyl- and aromatic hydrocarbon substituents. Moreover, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) One of ordinary skill is aware, for instance, that the presence of bulky cycloaliphatic rings and/or aromatic rings, may provide increased heat resistance, higher refractive indices, hardness, etc. any of which would be beneficial in a surface protection film.
THIS ACTION IS MADE FINAL. 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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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August 11, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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