CTNF 18/447,048 CTNF 85874 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-30-02 AIA 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. 07-34-01 Claims 6-7 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. Claim 6 limits Y-L 2 -C(O)-O-B to vinyl acetate, however vinyl acetate does not fit the formula. Specifically, Y is limited having one or more carbon-carbon double bonds but Y in vinyl acetate H 2 C=CH-O-(O)C-Me is methyl (Me), thus does not read on the claimed structure. Note that vinyl acetate does read on the other structure of claim 5. Claim 7 has the limitation that the -O-C(O)-B structure is saponified to -C-O-H. This does not make much sense chemically and the structure is unclear. First, carbon has four bonds, however the structure only shows two. Is it implied that the undrawn bonds are to hydrogen (which is typically only done in line drawings without C). Can they be bonded to anything? Second, it is not clear how -O-C(O)-B can go to -C-O-H. Where is the carbon coming from in the structure. When a polymer, or any compound of the structure R-O-C(O)-B is saponified, it goes to R-O-H. So, the structure should be -O-H not -C-O-H. If it is the structure, where is the extraneous carbon coming for? Is it suggesting that the hydroxyl group is only bound to carbons? Only bound to primary carbons? Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-7, 9-10 and 12-20 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 2002/0128367 (herein Daisey) . As to claims 1-2, 5-6, 9-10, 13, 17 and 19-20, Daisey discloses an additive (first polymer) for a water-based wood stain, water-based wood stains thereof and wood stained and dried with the stain. See abstract, paragraph 5, paragraphs 33-36 and examples. The polymer comprises styrene and methyl methacrylate, etc (thus a polymer of styrene and methyl methacrylate). See paragraph 5-12 and examples. Styrene reads on the first formula X-L 1 -A and methyl methacrylate reads on Y-L 2 -C(O)-OB. As to claim 7, the polymer comprises acrylic acid (paragraph 11), which is a saponified monomer fitting the claimed formula (e.g. saponification of t-butyl acrylate). The claim is in product by process format and the process steps do not add any additional structural differences since the end monomer unit is identical. The additive is a stain for wood. See abstract, paragraph 1 and examples. The particle size is taught as 90 to 300 nm. See paragraph 24. Also see examples. The additive can also comprise water. See paragraph 9. As to claim 12, the additive is dried to on a substrate (wood) to yield a wood stain. See paragraph 36, abstract and examples. As to claim 14, the water based stain (aqueous composition) comprises 2 to 25 wt% of the first polymer (additive). See paragraph 5 and examples. As to claim 15, Daisey discloses binders (paragraph 35 teaching rheology modifiers, hydrophically modified polyurethane). As to claim 16, the additive is combined with the wood stain. See abstract, paragraph 5, 9, 33 and examples. As to claim 18, the additive is made by addition of a free radical initiator (e.g. redox system to the monomer having a vinyl group. See paragraph 21 and eamples . 07-15-aia AIA Claim(s) 1-7, 9-10 and 12-20 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 2018/0086936 (herein Steiner) . As to claims 1-2, 4-6, 9-10, 12-13, 16-17 and 19-20, Steiner discloses an additive (polymer) for a water-based wood stain, water-based wood stains thereof and wood stained and dried with the stain and methods of preparing them by mixing. See abstract, paragraphs 120, 124, 153, 156 and examples. The polymer comprises styrene and methyl methacrylate. See paragraph 41-47 and examples. The particle size is from 50 to 200 nm. See paragraph 106 and examples. The additive and/or composition also comprises water. See abstract and examples. As to claim 3, the polymeric particles are present in 10 to 50 wt% in the examples. As to claim 7, the polymer comprises acrylic acid (paragraph 39), which is a saponified monomer fitting the claimed formula (e.g. saponification of t-butyl acrylate). The claim is in product by process format and the process steps do not add any additional structural differences since the end monomer unit is identical. As to claim 14, the polymeric particle is present in about 10 to 30 wt% in the examples with the stains. As to claim 15, the binders may be additionally added. See paragraph 110, 112 and examples. As to claim 18, the additive is prepared using free radical initiators. See paragraph 31 and examples . 07-15-aia AIA Claim(s) 1, 3-12 and 18 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Li et al. "Self-stratification of amphiphilic Janus particles at coating surfaces", Mater. Horiz., 7, 2047, (2020), 2047-2055 (herein Li) with evidence by the supporting information of Li . Note that the supporting information of Li was published on the same date and is complementary to the publication describing in more details the synthesis etc., which is typical in scientific publications. Thus, the supporting information is part of the Li publication. Further, note that 102 rejections can have multiple references (in the instant case the evidentiary references) in certain situations such as showing that a characteristic of a material of the primary reference is inherent. See MPEP 2131.01(III). In the instant case, the supporting information describes how the particles are made. As to claims 1, 4-11, Li discloses Amphiphilic Janus particles for water based coatings and paints as an additive. See abstract and page 2047 and 2053. Li discloses that the use of Janus particle as an additive (page 2053) yields high water contact angles, thus better wetting properties to yield high coating performance, water resistance, durability, hardness, etc. See page 2047 and abstract. The Janus polymers are taught as polystyrene-co-polyvinyl alcohol (saponified vinyl acetate) that are crosslinked with EGDMA to yield a 50/50 hydrophilic/hydrophobic ratio of lobes. See page 2 of the supporting information. Styrene reads on the formula of claim 1 and vinyl acetate reads on the formula of claim 5, which is saponified according to claim 7. The Janus particles are 400 nm in size. See figure 4 and the supporting information. While Li is silent on the intended use “for a water-based wood stain”, the additive is identical as elucidated above and therefore would be suitable. MPEP 2111.02 states that "if the body of a claim fully and intrinsically sets forth all 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". Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. As to claim 3, the Janus particles were present in 10 wt% in water. See page 2049 and page 3 of the supporting information. As to claim 12, dried products (coatings) are disclosed. See figure 1, 3 and page 2053. As to claim 18, a method of making the additive is shown in the supporting information comprising adding a free radical initiator (AIBN) and polymerizing monomers having a vinyl (e.g. styrene). See pages 1-3 of the SI . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 13-17 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,171,328 (herein Trauth) in view of Li et al. "Self-stratification of amphiphilic Janus particles at coating surfaces", Mater. Horiz., 7, 2047, (2020), 2047-2055 (herein Li) with evidence by the supporting information of Li . As to claims 13-17 and 19-20, Trauth discloses a water-based wood stain for staining wood, dried products thereof, methods of applying to wood and wood with the stain comprising binder, colorant, water etc. See abstract, col. 1 and examples. Trauth is silent on the claimed additive. Li discloses Amphiphilic Janus particles for water based coatings and paints as an additive. See abstract and page 2047 and 2053. Li discloses that the use of Janus particle as an additive (page 2053) yields high water contact angles, thus better wetting properties to yield high coating performance, water resistance, durability, hardness, etc. See page 2047 and abstract. The Janus polymers are taught as polystyrene-co-polyvinyl alcohol (saponified vinyl acetate) that are crosslinked with EGDMA to yield a 50/50 hydrophilic/hydrophobic ratio of lobes. See page 2 of the supporting information. Styrene reads on the formula of claim 1 and vinyl acetate reads on the formula of claim 5, which is saponified according to claim 7. The Janus particles are 400 nm in size. See figure 4 and the supporting information. the Janus particles were present in 10 wt% in water. See page 2049 and page 3 of the supporting information. It would have been obvious at the time of the invention to have additive the additive of Li to the stain of Trauth and thereby preparing a method of adding additive to the stain and using the stain to wood because one would want improved water contact angles and wetting properties for better wetting properties to yield high coating performance, water resistance, durability, hardness, etc. See page 2047 and abstract of Li. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST. 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, Arrie Lanee Reuther can be reached at (571) 270-7026. 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. /MARK S KAUCHER/Primary Examiner, Art Unit 1764 Application/Control Number: 18/447,048 Page 2 Art Unit: 1764