DETAILED ACTION
This Office Action is in response to the Amendment filed on 8/13/2026.
Claim(s) 28-69 are now pending in the application.
The previous claim objections of claim(s) 44 are withdrawn in light of Applicant’s amendment and remarks.
Claim Objections
Claim 28 is objected to because of the following informalities:
Claim 28 recites (i), (ii), and (iii) with respect to two different components. It is suggested that
Line 3 be changed to recite (a) an omniphobic composition concentrate and (b) a polyurethane base; and
Lines 8 – 10 be changed to recite “(iv) optionally the functionalized omniphobic polymer; and (v) optionally up to 60 wt.%...of at least one diluent”.
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.
Claim 28-69 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 because:
Claim 28 recites “monomer units of a polyol” in line 7 and further recites “(ii) the polyol” in line 8. This renders the scope of the claim indefinite as it is unclear if “(ii) the polyol” is a separate and distinct component from a polyol which provides monomer units in polymer (i).
Claim 28 recites “monomer units of a polyisocyanate” in line 7 and further recites “(iii) optionally the polyisocyanate” in line 8. This renders the scope of the claim indefinite as it is unclear if “(iii) the polyisocyanate” is a separate and distinct component from a polyisocyanate which provides monomer units in polymer (i).
Claim 28 recites “monomer units of a functionalized omniphobic polymer” in line 7-8 and further recites “(iii) optionally the functionalized omniphobic polymer” in line 9. This renders the scope of the claim indefinite as it is unclear if “(iii) optionally the functionalized omniphobic polymer” is a separate and distinct component from a functionalized omniphobic polymer which provides monomer units in polymer (i).
Regarding the above 35 U.S.C. 112(b) rejections of Claim 28, for purposes of examination the claims will be interpreted in the following manner:
Lines 8-9 will be interpreted as “(ii) an additional quantity of the polyol; (iii) optionally an additional quantity of the polyisocyanate…optionally an additional quantity of the functionalized omniphobic polymer”;
Line 11 will be interpreted as “the monomer units of the polyisocyanate and any additional quantity of the polyisocyanate”;
Line 14 will be interpreted as “the monomer units of the polyol and any additional quantity of the polyol”;
Line 16 will be interpreted as “the monomer units of the functionalized omniphobic polymer and any additional quantity of the functionalized omniphobic polymer”;
Applicant is advised that if Claim 28 is amended according the above interpretation, Claim 47 should be amended in a similar manner (e.g. “any polyisocyanate present” should be amended to recite “any additional quantity of polyisocyanate present” in each instance, “monomer units of the polyol and the polyol” should be amended to recite “monomer units of the polyol and the additional quantity of polyol” in each instance, etc.)
Claims 50, 57, and 58 recites “the” polyol. There is insufficient antecedent basis for this limitation in the claim and therefore the scope of the claim is unclear. For purposes of examination, the claim will be interpreted as "the polyol in (ii) the additional quantity of polyol".
Claims 51, 60-69 recites “the” functionalized omniphobic polymer. There is insufficient antecedent basis for this limitation in the claim and therefore the scope of the claim is unclear. For purposes of examination, the claim will be interpreted as "the functionalized omniphobic polymer In (iv) the additional quantity of functionalized omniphobic polymer".
Claims 54-56 recites “the” polyisocyanate. There is insufficient antecedent basis for this limitation in the claim and therefore the scope of the claim is unclear. For purposes of examination, the claim will be interpreted as "the isocyanate in the (iii) the additional quantity of polyisocyanate".
Claim 69 sets forth a molecular weight but does not specify the units, therefore rendering the scope of the claim’s indefinite. For purposes of examination the molecular weight units will be interpreted as g/mol.
Claims 27-69 are further rejected under 35 U.S.C. 112(b) because they ultimately depend on Cl 28 and therefore inherit the deficiencies thereof.
Allowable Subject Matter
Claims 28-69 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The present claims are allowable over the closest references: US2020/0048459 to Rabnawaz et al.
Rabnawaz teaches a thermoset omniphobic composition [title] and a method of making the composition and coated article [0085] wherein the method comprising includes first reacting the first thermosetting component and the functionalized omniphobic polymer, followed by reacting the second thermosetting component [0088] to form the partially crosslinked reaction product [0088] (i.e., omniphobic composition concentrate). In one embodiment, the first thermosetting component comprises the polyisocyanate, the second thermosetting component comprises the polyol, functionalized omniphobic polymer comprises an amino group.
Rabnawaz teaches the amount of first, second, and third backbone segments [0031] wherein each segment comprises a reaction product of at least two components selected from the first thermosetting component, the functionalized omniphobic polymer, and the second thermosetting component.
However, Rabnawaz does not teach or fairly suggest combining the omniphobic composition concentrate and a polyurethane base formulation comprising at least one further polyisocyanate and at least one further polyol, or that the combined omniphobic composition concentrate and the polyurethan base formulation forms a crosslinked reaction product as the thermoset omniphobic composition. Additionally, the prior art does not provide motivation to further react a polyurethane base formulation comprising at least one further polyisocyanate and at least one further polyol.
Moreover, although Rabnawaz teaches the amounts of backbone segments that comprise the thermosetting components and functionalized omniphobic polymer, Rabnawaz does not teach the omniphobic composition comprising the specific amounts of polyisocyanate, polyol, functionalized omniphobic polymer, or monomer units thereof.
Furthermore, Rabnawaz does not teach or fairly suggest the omniphobic composition concentrate is in the form of a gel-free liquid.
In light of the above discussion, it is evident as to why the present claims are patentable over the prior art.
Any comments considered necessary by applicant must be submitted not later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance."
Response to Arguments
Applicant’s arguments, see pages 9-10 of applicant arguments, filed 8/13/2026, with respect to claims 28-69 have been fully considered and are persuasive. The 112(b) rejection of claims 28-69 has been withdrawn. However, the instant application is not presently in condition for allowance, in light of objections to the claims and new grounds of rejection set forth under 35 U.S.C. 112(b).
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.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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