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
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 1-4, 7, 10-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guin (WO 2021/150914).
Considering Claims 1 and 13: Guin teaches an article comprising a coating for reducing fouling (¶0084) comprising a polyelectrolyte network/complex (¶0050) comprising an anionic polyelectrolyte (¶0028) and a cationic polyelectrolyte (¶0024), where the coating has a glass transition temperature of at least 145 ºC (¶0056).
Considering Claims 2-4: Guin teaches the anionic polyelectrolyte as preferably being polystyrene sulfonate/a polymer with a hydrocarbon backbone and an aryl group pendant to the hydrocarbon backbone (¶0028).
Considering Claim 7: Guin teaches the cationic polyelectrolyte as comprising an ammonium group (¶0024).
Considering Claim 10: Guin teaches the cationic polyelectrolyte as preferably being poly(diallyldimethylammonium) chloride (¶0024).
Considering Claim 11: Guin teaches the anionic polyelectrolyte as preferably being polystyrene sulfonate and the cationic polyelectrolyte as preferably being poly(diallyldimethylammonium) chloride (¶0024), each of which has one charge per repeat unit.
Considering Claim 12: Guin teaches the thickness of the coating as being 0.2 to 50 microns (¶0054).
Considering Claim 15: Guin teaches the substrate as being a metal such as aluminum or stainless steel (¶0059), which would be capable of functioning as a weight.
Claims 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guin (WO 2021/150914).
Considering Claim 16: Guin teaches a method for coating an article comprising a coating for reducing fouling (¶0084) comprising applying to the substrate (¶0072) a coating a polyelectrolyte network/complex (¶0050) comprising an anionic polyelectrolyte (¶0028) and a cationic polyelectrolyte (¶0024) in a solvent (¶0069), where the coating has a glass transition temperature of at least 145 ºC (¶0056).
Considering Claim 17: Guin teaches the solvent as being water, and optionally an organic solvent (¶0069).
Claims 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guin (WO 2021/150914).
Considering Claims 20: Guin teaches an article comprising a coating for reducing fouling (¶0084) comprising a polyelectrolyte network/complex (¶0050) comprising an anionic polyelectrolyte (¶0028) and a cationic polyelectrolyte (¶0024), where the coating has a glass transition temperature of at least 145 ºC (¶0056).
The instant claim is a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
Claims 1-4, 6-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schienoff (US 2004/0265603).
Considering Claims 1-4 and 6-10, and 13: Schienoff teaches an article (¶0020) comprising a coating, where the coating comprises a polyelectrolyte complex (¶0013) comprising a negatively charged polymer electrolyte and a positively charged polymer electrolyte (¶0013). Schienoff teaches the negatively charged polyelectrolyte as preferably being a sulfonated polyether ether ketone/a polymer comprising a backbone with phenyl groups (¶0026; claim 8) and the positively charged polyelectrolyte as being selected from poly(diallyldimethylammonium chloride), poly(vinylbenzyltrimethylammon- ium), ionenes, poly(acryloxyethyltrimethyl ammonium chloride), poly(methacryloxy(2-hydroxy)propyltrimethyl ammonium chloride), poly(N-methylvinylpyridine), other poly(N-alkylvinylpyridines), poly(N-octyl-4-vinyl pyridinium iodide), poly(N-octadecyl-2-ethynyl pyridinium bromide)(PNO2EPB), poly(N-alkyl-2-ethynyl pyridine), poly(N-alkl-4-ethynyl pyridine) and copolymers thereof (¶0027, Claims 4 and 6).
Schienoff is silent towards the glass transition temperature of the coating when in contact with an aqueous medium. However, Schienoff teaches the same preferred polymers as the instant claims, including the polymer with an aryl backbone. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Schienoff does not teach the coating as being for reducing fouling of a surface. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Considering Claim 11: Schienoff teaches the positively and negatively charged polyelectrolytes as having a charge density between 0 and 1 per repeat unit (¶0022).
Considering Claim 12: Schienoff teaches the thickness of the coating as being from 10 nm to 1 mm (¶0035).
Considering Claim 15: Schienoff teaches the article as being a stainless steel wire/cable (¶0042).
Claims 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schienoff (US 2004/0265603).
Considering Claim 16: Schienoff teaches an article (¶0020) made by a process comprising applying a coating (¶0034), where the coating comprises a polyelectrolyte complex (¶0013) comprising a negatively charged polymer electrolyte and a positively charged polymer electrolyte (¶0013) and a solvent (¶0030). Schienoff teaches the negatively charged polyelectrolyte as preferably being a sulfonated polyether ether ketone/a polymer comprising a backbone with phenyl groups (¶0026; claim 8) and the positively charged polyelectrolyte as being selected from poly(diallyldimethylammonium chloride), poly(vinylbenzyltrimethylammon- ium), ionenes, poly(acryloxyethyltrimethyl ammonium chloride), poly(methacryloxy(2-hydroxy)propyltrimethyl ammonium chloride), poly(N-methylvinylpyridine), other poly(N-alkylvinylpyridines), poly(N-octyl-4-vinyl pyridinium iodide), poly(N-octadecyl-2-ethynyl pyridinium bromide)(PNO2EPB), poly(N-alkyl-2-ethynyl pyridine), poly(N-alkl-4-ethynyl pyridine) and copolymers thereof (¶0027, Claims 4 and 6).
Schienoff is silent towards the glass transition temperature of the coating when in contact with an aqueous medium. However, Schienoff teaches the same preferred polymers as the instant claims, including the polymer with an aryl backbone. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Considering Claim 17: Schienoff teaches the solvent as being water or an organic solvent (¶0030).
Claims 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schienoff (US 2004/0265603).
Considering Claim 20: Schienoff teaches an article (¶0020) comprising a coating, where the coating comprises a polyelectrolyte complex (¶0013) comprising a negatively charged polymer electrolyte and a positively charged polymer electrolyte (¶0013). Schienoff teaches the negatively charged polyelectrolyte as preferably being a sulfonated polyether ether ketone/a polymer comprising a backbone with phenyl groups (¶0026; claim 8) and the positively charged polyelectrolyte as being selected from poly(diallyldimethylammonium chloride), poly(vinylbenzyltrimethylammon- ium), ionenes, poly(acryloxyethyltrimethyl ammonium chloride), poly(methacryloxy(2-hydroxy)propyltrimethyl ammonium chloride), poly(N-methylvinylpyridine), other poly(N-alkylvinylpyridines), poly(N-octyl-4-vinyl pyridinium iodide), poly(N-octadecyl-2-ethynyl pyridinium bromide)(PNO2EPB), poly(N-alkyl-2-ethynyl pyridine), poly(N-alkl-4-ethynyl pyridine) and copolymers thereof (¶0027, Claims 4 and 6). The positive and the negative electrolyte can be applied sequentially (¶0033).
Schienoff is silent towards the glass transition temperature of the coating when in contact with an aqueous medium. However, Schienoff teaches the same preferred polymers as the instant claims, including the polymer with an aryl backbone. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Schienoff does not teach the coating as being for reducing fouling of a surface. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
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.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schienoff (US 2004/0265603) as applied to claim 1 above, and further in view of Schlenoff et al. (US 2019/0224664).
Considering Claim 5: Schienoff teaches the article of claim 1 as shown above.
Schienoff does not teach the negatively charged polymer as having a background comprising phenyl groups, where each phenyl group is substituted with a sulfonate group. However, Schlenoff et al. teaches using a polyphenylene sulfonate where each phenyl group is substituted in a polyelectrolyte coating (¶0038). Schienoff and Schlenoff et al. are analaogous art as they are concerned with the same field of endeavor, namely polyelectrolyte coatings. It would have been obvious to a person of ordinary skill in the art to have used the polyphenylene sulfonate of Schlenoff et al. in place of the polyether ether ketone sulfonate of Schienoff, and the motivation to do so would have been, as Schlenoff et al. suggests, they are functional equivalents (¶0038).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Schienoff (US 2004/0265603) as applied to claim 1 above, and further in view of Zhu et al. (ACS Appl. Mater. Interfaces 2015, 7, 852−861).
Considering Claim 14: Schienoff teaches the article of claim 1 as shown above.
Schienoff is silent towards the surface charge. However, Zhu et al. teaches that the surface charge of the polyelectrolyte complex controls the antifouling properties of the film (Abstract). Schienoff and Zhu et al. are analogous art as they are concerned with the same field of endeavor, namely polyelectrolyte coating. It would have been obvious to a person of ordinary skill in the art to have optimized the surface charge through routine experimentation, and the motivation to do so would have been, as Zhu et al. suggests, the ideal surface charge depends on the pH of the environment and the character of the fouler (Abstract).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Schienoff (US 2004/0265603) as applied to claim 16 above, and further in view of Kamineni et al. (Langmuir 2007, 23, 7423-7427).
Considering Claim 18: Schienoff teaches the method of claim 16 as shown above. Schienoff teaches the solvent as being water and an organic solvent (¶0030).
Schienoff does not teach the organic solvent as being formamide. However, Kamineni et al. teaches using formamide as an organic solvent in polyelectrolyte coating (abstract). Schienoff and Kamineni et al. are analogous art as they are concerned with the same field of endeavor, namely polyelectrolyte coating. It would have been obvious to a person of ordinary skill in the art to have selected the formamide of Kamineni et al. in the process of Schienoff, and the motivation to do so would have been, as Kamineni et al. suggests, it has good solving properties for the polyelectrolytes.
Considering Claim 19: Schienoff teaches applying to the surface of an article the claimed coating, followed by rinsing with water for three minutes (Example 1).
Schienoff does not teach washing coating with formamide. However, Kamineni et al. teaches washing a polyelectrolyte coating with formamide (Experimental). It would have been obvious to a person of ordinary skill in the art to have washed the coating with formamide prior to the water wash, and the motivation to do so would have been, to remove unconjugated polymer from the coating.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Guin (WO 2021/150914) as applied to claim 1 above, and further in view of Schlenoff et al. (US 2019/0224664).
Considering Claim 5: Guin teaches the article of claim 1 as shown above.
Guin does not teach the negatively charged polymer as having a background comprising phenyl groups, where each phenyl group is substituted with a sulfonate group. However, Schlenoff et al. teaches using a polyphenylene sulfonate where each phenyl group is substituted in a polyelectrolyte coating (¶0038). Guin and Schlenoff et al. are analaogous art as they are concerned with the same field of endeavor, namely polyelectrolyte coatings. It would have been obvious to a person of ordinary skill in the art to have used the polyphenylene sulfonate of Schlenoff et al. in place of the polyether ether ketone sulfonate of Guin, and the motivation to do so would have been, as Schlenoff et al. suggests, they are functional equivalents (¶0038).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Guin (WO 2021/150914) as applied to claim 1 above, and further in view of Zhu et al. (ACS Appl. Mater. Interfaces 2015, 7, 852−861).
Considering Claim 14: Guin teaches the article of claim 1 as shown above.
Guin is silent towards the surface charge. However, Zhu et al. teaches that the surface charge of the polyelectrolyte complex controls the antifouling properties of the film (Abstract). Guin and Zhu et al. are analogous art as they are concerned with the same field of endeavor, namely polyelectrolyte coating. It would have been obvious to a person of ordinary skill in the art to have optimized the surface charge through routine experimentation, and the motivation to do so would have been, as Zhu et al. suggests, the ideal surface charge depends on the pH of the environment and the character of the fouler (Abstract).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Guin (WO 2021/150914) as applied to claim 16 above, and further in view of Kamineni et al. (Langmuir 2007, 23, 7423-7427).
Considering Claim 18: Guin teaches the method of claim 16 as shown above. Guin teaches the solvent as being water and an organic solvent (¶0030).
Guin does not teach the organic solvent as being formamide. However, Kamineni et al. teaches using formamide as an organic solvent in polyelectrolyte coating (abstract). Guin and Kamineni et al. are analogous art as they are concerned with the same field of endeavor, namely polyelectrolyte coating. It would have been obvious to a person of ordinary skill in the art to have selected the formamide of Kamineni et al. in the process of Guin, and the motivation to do so would have been, as Kamineni et al. suggests, it has good solving properties for the polyelectrolytes.
Considering Claim 19: Guin teaches applying to the surface of an article the claimed coating, followed by rinsing with water for three minutes (Example 1).
Guin does not teach washing coating with formamide. However, Kamineni et al. teaches washing a polyelectrolyte coating with formamide (Experimental). It would have been obvious to a person of ordinary skill in the art to have washed the coating with formamide prior to the water wash, and the motivation to do so would have been, to remove unconjugated polymer from the coating.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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