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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of the species of a fluoropolyether group-containing polymer of formula (1) and a species of formula (f1) in claim 4 in the reply filed on 5/1/2026 is acknowledged.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 2/26/2021. It is noted, however, that applicant has not filed a certified copy of the JP2021-030453 application as required by 37 CFR 1.55.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7, 9, 10, and 12-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,428,524 in view of Yoshida et al, US2016/0289488.
Patented claim 8 recites a surface treating agent (for claim 1) comprising a fluorine-containing copolymer of the formula (1) or formula (2) shown below.
PNG
media_image1.png
186
452
media_image1.png
Greyscale
Note that variables RF1, RF2,, p, q, R4 as R4a, n, Xa, Xb, and Ra have the same definitions as recited in the instant claim 1. The fluorine-containing polymer of the patented claim therefore corresponds to claimed polymer (A) (for claim 1).
Regarding claim 7: The patented claim states that R4a may comprises a hydroxyl group.
Regarding claim 9: The patented claim states that n is 1 to 100, overlapping the claimed range.
The patented claim is silent regarding the inclusion of a siloxane polymer having the claimed structure.
Yoshida discloses the production of a surface treatment composition used on devices such as the touch panel of a mobile phone (abstract, ¶0349), wherein said composition comprises a fluorine containing polymer and a curable silicone-containing polymer (abstract). Said fluorine-containing polymer has a perfluoropolyether-containing structure (¶0013-0016). Said silicone-containing polymer may correspond to either of the following formulae (0033-0037, 0286--0296) and has a molecular weight of 500 to 20000 (for claims 1, 14) (¶0296), corresponding to the claimed polymer (B).
PNG
media_image2.png
273
577
media_image2.png
Greyscale
Variables R11, R12, R13, R14, R15, R16, R17, R20, R21, R22, R23, R24 and R25 can be C1 to C10 alkyl groups (¶0287-0288), and n4 and n5 are 1 to 500 (¶0295). Further note that R18 is a divalent organic group (¶0292) and X1 may be hydrogen or a methyl group (¶0294); the terminal group R18-OC(O)CX1=CH2 therefore corresponds to claimed structure R27-R28 wherein R27 is the divalent organic group made up to -R18-O- and R28 is -CO-CH=CH2 or -CO-C(CH3)=CH2 (for claims 12, 13). The first siloxane structure therefore corresponds to the required formula (for claim 10) when R25 is an alkyl and R26 is R27-R28 (for claim 12) and the second siloxane structure corresponds to the claimed formula when R25 and R26 are both R27-R28 (for claim 13).
Yoshida teaches that inclusion of the siloxane polymer with the fluorine-containing polymer results in a final surface treatment agent that confers improved surface slip properties and friction durability in addition to the water/oil repellency and antifouling properties conferred by the fluorine-containing polymer.
The patented claim and Yoshida are both directed towards the same field of endeavor-i.e., the development of surface treatment agents comprising a perfluoropolyether compound. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to modify the composition of Shibutani by adding the siloxane polymer taught by Yoshida, with the reasonable expectation of obtaining a final composition that would provide improved surface slip properties and friction durability in addition to water/oil repellency and antifouling properties.
Claim 1, 7, 9, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 27 of copending Application No. 18/176,856 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claim 27 recites a composition comprising a fluoropolyether-containing polymer and a siloxane polymer.
Regarding the claimed polymer (A): The fluoropolyether-containing polymer of the copending claim is defined as corresponding to either formula (3) or formula (4); note that formula (3) and formula (4) of the copending claim are identical to formula (1) and formula (2), respectively, of the instant claim. The fluoropolyether-containing polymer of the copending claim therefore corresponds to the claimed polymer (A).
Regarding claim polymer (B): The siloxane polymer of the copending claim may have the structure shown below wherein m is 1 to 300, and R1 and R2 can be C1 alkyl groups.
PNG
media_image3.png
80
570
media_image3.png
Greyscale
Note that this corresponds to the siloxane (for claim 1) of the recited formula (for claim 10) wherein R21, R22, R23, R24, and R25 are all C1 alkyl groups and R26 is a monovalent organic group of the structure -Xa-Xb-R4n-S-C(S)-Ra. Regarding the molecular weight, based on the limitations that R21, R22, R23, R24, and R25 can all be C1 alkyl groups and m can be as low as 1, the siloxane polymer will have a molecular weight greater than 147, overlapping the claimed range (for claim 1).
Regarding claim 7: The copending claim states that R4a may comprises a hydroxyl group.
Regarding claim 9: The copending claim states that n is 1 to 100, overlapping the claimed range.
The copending claim does not specifically recite the production of a composition wherein the siloxane polymer has a molecular weight of more than 350 and less than 10000.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The scope of the molecular weight in the copending claim overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a composition comprising a fluorine-containing copolymer and a siloxane polymer having the required molecular weight in the view of the copending claim (for claim 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-15 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.
Regarding claims 1 and 14: Independent claim 1 and dependent claim 14 both recite limitations regarding the molecular weight of the siloxane polymer. Note, however, that the claims do not specify the units of said molecular weight (e.g., g/mol, kg/mol). The scope of the claimed invention is therefore unclear.
Claims 2-13 and 15 depend from claim 1 and do not correct this deficiency. Claims 2-13 and 15 are therefore indefinite per the same rationale as claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Shibutani et al, WO2021/045209.
The examiner notes that Shibutani et al, US2022/0195115, has been used as an equivalent English translation of WO2021/045209 for the preparation of this Office Action.
Shibutani discloses the production of a surface treating agent (for claim 1) comprising a fluorine-containing copolymer and a silicone oil (abstract; ¶0200).
Regarding the claimed fluoropolyether group-containing polymer (A): The prior art fluorine-containing copolymer may have the structure shown below (¶0006-0023).
PNG
media_image4.png
76
254
media_image4.png
Greyscale
Note that variables RF1 (¶0007, 0009, 0011, 0013), Xa (¶0019), Xb (¶0020), R4 (¶0014-0017), n (¶0018), and Ra (¶0021-0023) correspond to claimed variables RF1, Xa, Xb, R4, n, and Ra, respectively (for claim 1). The prior art fluorine-containing copolymer therefore corresponds to claimed polymer (A) (for claim 1).
Regarding the claimed siloxane polymer (B): As noted above, Shibutani teaches the inclusion of a silicone oil in the prior art composition (¶0200). Said silicone oil may be a dimethyl silicone oil containing 2000 or less siloxane bonds (¶0201); this polymer has the structure shown below wherein n is less than or equal to 1999.
PNG
media_image5.png
101
211
media_image5.png
Greyscale
This corresponds to the claimed formula wherein R21, R22, R23, and R24 are all C1 alkyl groups (for claim 10), R25 and R26 are both C1 alkyl groups (i.e., monovalent organic groups) (for claims 10, 11), and p is an integer (for claim 10). As n is less than or equal to 1999, it is calculated that the prior art dimethyl silicone oil would have a molecular weight in the range of about 162.4 to 148396.2, overlapping the claimed range (for claim 1). Said silicone oil is included in an amount of 0 to 50 parts per 100 parts of the fluorine-containing polymer (claim 15).The prior art silicone oil therefore corresponds to the claimed siloxane polymer (B) (for claim 1).
Regarding claims 2-4: Variable RF in the structure of the fluorine-containing copolymer is preferably the structure shown below (for claim 2), wherein each RFa may be fluorine (for claim 3) and a, b, c ,d, e, and f are each 0 to 200, with the proviso that the sum of a, b, c, d, e, and f is 1 or more (¶0061-0063).
PNG
media_image6.png
44
334
media_image6.png
Greyscale
Further note that this structure corresponds to claimed formula (f1) when a, b, and c are 0 and each Fa is fluorine (for claim 4).
Regarding claims 5-8: Variable R4 in the in the structure of the fluorine-containing copolymer may have the structure shown below wherein R31 and R32 may be hydrogen, Y1 and Y2 may be single bond(s), R33 may be an epoxy group (for claim 7, 8) (¶0091, 0099-0116), corresponding to claimed R4a (for claims 5, 6).
PNG
media_image7.png
177
138
media_image7.png
Greyscale
Regarding claim 9: The variable n in the structure of the fluorine-containing copolymer is an integer of 1 to 100 (0018), overlapping the claimed range.
Shibutani does not specifically exemplify the production of a composition wherein the silicone oil has a molecular weight in the range of more than 350 and less than 10000.
The prior art range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a composition comprising a fluorine-containing copolymer and a silicone oil having the required molecular weight in the view of the teachings of Shibutani (for claim 1); see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shibutani et al, WO2021/045209, as applied to claims 1-11 and 15 above, and further in view of Yoshida et al, US2016/0289488.
As discussed earlier in this Action, Shibutani discloses a surface treating agent comprising a fluorine containing-copolymer. Shibutani teaches that the prior art surface treating agent can be used provide improvements in water repellency, oil repellency, and antifouling properties (¶0003, 0252) to devices such as touch panels of mobile phones (¶0255).
Shibutani is silent regarding the inclusion of a siloxane polymer having the claimed structure.
Yoshida discloses the production of a surface treatment composition used on devices such as the touch panel of a mobile phone (abstract, ¶0349), wherein said composition comprises a fluorine containing polymer and a curable silicone-containing polymer (abstract). Said fluorine-containing polymer has a perfluoropolyether-containing structure (¶0013-0016). Said silicone-containing polymer may correspond to either of the following formulae (0033-0037, 0286--0296) and has a molecular weight of 500 to 20000 (for claim 14) (¶0296).
PNG
media_image2.png
273
577
media_image2.png
Greyscale
Variables R11, R12, R13, R14, R15, R16, R17, R20, R21, R22, R23, R24 and R25 can be C1 to C10 alkyl groups (¶0287-0288), and n4 and n5 are 1 to 500 (¶0295). Further note that R18 is a divalent organic group (¶0292) and X1 may be hydrogen or a methyl group (¶0294); the terminal group R18-OC(O)CX1=CH2 therefore corresponds to claimed structure R27-R28 wherein R27 is the divalent organic group made up to -R18-O- and R28 is -CO-CH=CH2 or -CO-C(CH3)=CH2 (for claims 12, 13). The first siloxane structure therefore corresponds to the required formula when R25 is an alkyl and R26 is R27-R28 (for claim 12) and the second siloxane structure corresponds to the claimed formula when R25 and R26 are both R27-R28 (for claim 13).
Yoshida teaches that inclusion of the siloxane polymer with the fluorine-containing polymer results in a final surface treatment agent that confers improved surface slip properties and friction durability in addition to the water/oil repellency and antifouling properties conferred by the fluorine-containing polymer.
Shibutani and Yoshida are both directed towards the same field of endeavor-i.e., the development of surface treatment agents comprising a perfluoropolyether compound which are used in devices such as mobile phones. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to modify the composition of Shibutani by adding the siloxane polymer taught by Yoshida, with the reasonable expectation of obtaining a final composition that would provide improved surface slip properties and friction durability in addition to water/oil repellency and antifouling properties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhang et al, published in Macromolecules vol. 50, discloses the production of a perfluoropolyether-containing compound having the structure shown below (Figure 1).
PNG
media_image8.png
180
352
media_image8.png
Greyscale
Zhang discloses the compound shown above as a contrast agent for MRI. Zhang does not disclose combining the compound shown above with a siloxane polymer, or its use as a surface treatment agent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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 Riviere 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.
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.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights