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 .
Election/Restrictions
Applicant’s election without traverse of Group III, Claims 28-44 in the reply filed on 4/9/2026 is acknowledged. Claims 1-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
Claim Objections
Claim 44 is objected to because of the following informalities: Claim 44 should be amended to recite according to the method of claim 36. Appropriate correction is required.
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 states that the omniphobic composition concentrate comprises “at least one of a polyol and monomer units thereof in polymerized form” and “a polymer comprising monomer units of the polyol” in lines 9 and 16 respectively. This renders the scope of the claim Indefinite as “at least one of a polyol and monomer units thereof in polymerized form” limits that either “the polyol” OR “monomer units thereof in polymerized form” are required wherein limitations of line 16 require that both “the polyol” AND “monomer units thereof in polymerized form” are required. For purposes of examination, the claims will be interpreted as "30 wt% to 85 wt% relative to the omniphobic composition concentrate of a polyol and monomer units thereof" rather than "30 to 85 wt% relative to the omniphobic composition concentrate of at least one of a polyol and monomer units thereof". Applicant is advised that if claim 28 is amended to overcome these issues, claim 47 should likely be amended in a similar manner.
Claim 28 states that the omniphobic composition concentrate comprises “at least one of a polyisocyanate and monomer units thereof in polymerized form” and “a polymer comprising monomer units of the polyisocyanate” in lines 7 and 16 respectively. This renders the scope of the claim Indefinite as “at least one of a polyisocyanate and monomer units thereof in polymerized form” limits that either “the polyisocyanate” OR “monomer units thereof in polymerized form” are required wherein limitations of line 16 require that both “the polyisocyanate” AND “monomer units thereof in polymerized form” are required. For purposes of examination, the claims will be interpreted as "2 wt% to 60 wt% relative to the omniphobic composition concentrate of a polyisocyanate and monomer units thereof" rather than "2 wt% to 60 wt% relative to the omniphobic composition concentrate of at least one of a polyisocyanate and monomer units thereof". Applicant is advised that if claim 28 is amended to overcome these issues, claim 47 should likely be amended in a similar manner.
Claim 28 states that the omniphobic composition concentrate comprises “at least one of a functionalized omniphobic polymer and monomer units thereof in polymerized form” and “a polymer comprising monomer units of the functionalized omniphobic polymer” in lines 11 and 16 respectively. This renders the scope of the claim Indefinite as “at least one of a functionalized omniphobic polymer and monomer units thereof in polymerized form” limits that either “the functionalized omniphobic polymer” OR “monomer units thereof in polymerized form” are required wherein limitations of line 16 require that both “the functionalized omniphobic polymer” AND “monomer units thereof in polymerized form” are required. For purposes of examination, the claims will be interpreted as "10 wt% to 50 wt% relative to the omniphobic composition concentrate of a functionalized omniphobic polymer and monomer units thereof" rather than "10 to 50 wt% relative to the omniphobic composition concentrate of at least one of a functionalized omniphobic polymer and monomer units thereof". Applicant is advised that if claim 28 is amended to overcome these issues, claim 47 should likely be amended in a similar manner.
Use of parentheses in Claim 37 – e.g. (or fabric) – renders the scope of the claim’s indefinite, as it is unclear whether the limitations enclosed in parentheses are optional or required. For the purposes of examination, these limitations will be interpreted as glass, wood, fabric, textile, and ceramics.
Claim 69 sets forth a molecular weight but do 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."
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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