DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-10 are currently pending. Claims 1-5 have been elected without traverse in the response filed on 10/10/2025. Claims 1-5 are currently under examination. This office action is the first office action on the merits of the claims.
Election/Restrictions
3. Applicant’s election without traverse of Group I claims 1-5 in the reply filed on 10/10/2025 is acknowledged.
Claims 6-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/10/2025.
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.
4. Claims 1-5 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.
Concerning claim 1 the claim recites “wherein the non-fluorine compound optionally further satisfies: at least one of:” and later in the claim recites “wherein the non-fluorine compound has a hexadecane (HD) contact angle of 30° or more at a measurement temperature of 25°C and/or is not soluble in corn oil at 25°C” which renders the claim indefinite as it is not clear if the contact angle or solubility in corn oil is counted among the optional limitations or not.
Concerning claim 3 the claim recites a “a group having a direct bond” which renders the claim indefinite as it is not clear what this means. Does the mean that R23 is a direct bond? Does this mean that it is literally any group having more than 1 atom as all chemical groups having 2 or more atoms would include a direct bond to an atom in the group?
Claim 2-5 are rejected as being dependent from a rejected base claim.
Claim Rejections - 35 USC § 102
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.
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.
5. Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weng 570 (CN 109206570; all citations refer to the english language machine translation unless otherwise stated).
Concerning claim 1 Weng 570 teaches an example of a polymer which is made using a monomer that is made by reacting an isocyanate with n-propylamine and tetra hydropyrrole at a 1:1 ratio to obtain acrylate monomers containing urea bond (paragraph 0355) and which have the structure of (original specification 0352)
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15 molar equivalents of these monomers are reacted with 1 molar equivalent of benzoyl peroxide and 1 molar equivalent of mercaptoacetic acid as a chain transfer agent to give a modified polyacrylate with carboxyl groups at one end of the polymer (paragraph 0355). This polymer would therefor have a 50 mol% of each of the indicated monomers 21a and 21b and would be a non fluorine polymer as no fluorine containing reactants are used.
It should be noted that monomer 21a corresponds to the monomer of claim 2 where Y is O X11 is a divalent hydrocarbon group having 2 carbon atoms X12 is a direct bond and R11 is a 3 carbon atom linear alkyl group. Also the monomer 21b corresponds to the monomer of claim 3 where R22 is H, Y21 is O R23 is a dialvent hydrogcabon group having 2 carbon atoms o is 1 R22 a group of
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which is a hydrophilic group and which is cable of undergoing reactions and so would also be considered to be a reactive group, and m is 1.
Weng 570 is silent as to the compound being an oil resistant agent, the half width of a peak at 2θ of 15 to 25°C of 2.0° or more at a measurement temperature of 25°C and as to the hexadecane contact angle or the solubility in corn oil at 25°C.
It should be noted that this compound of monomer 21a corresponds to the C3UreaA monomer indicated by applicants specification paragraph 0118. Applicants specification paragraph pg 74 Table 1 examples 6-8 indicates that C3UreaA polymers made from 100% , 80% or 50 % of C3UreaA with the rest of the polymer being hydroxybutyl acrylate each have 15-25° peak half widths of at least 6.1 ° and applicants specification pg 76 Table examples 6-8 indicate that each of these polymers did not dissolve in corn oil at 120°C and so would not dissolve in corn oil at the lower claimed temperature of 25°C. It should be noted that the polymers of C6ureaA polymers also meet both of these limitations, indicating that longer alkyl chains will maintain these properties.
As such since monomer 21a is present in an amount of 50 mol% and the similar monomer of 21b is also present in an amount of 50 mol% the use of these monomers as the only monomers of the polymer would result in the polymer having the crystallinity structure indicated by the half width and having the solvent interactions caused by the monomer chemistry to be an oil resistant agent ad to be not soluble in corn oil at 25°C as the polymer would consist of only monomers which meet the claimed limitations of the monomers of claims 2 and 3.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). . See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP 2112.V
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.I.
"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.
As such the polymer of Weng 570 teaches the claimed limitations.
6. Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weng 433 (CN 107556433 A; all citations refer to the English language machine translation unless otherwise stated.)
Concerning claim 1-2, 4 Weng 433 teaches a polymer which is made from 100 molar equivalents of n-butyl acrylate 10 molar equivalents of acrylate monomer 15a 90 molar equivalents of urea containing acrylate monomer 10b, 3 molar equivalents of crosslinking agent 1,10 decandiol diacrylate which was then polymerized and foamed to produce an acrylic foam (paragraph 0267).
The monomer 10b has a structure of (original Chinese document paragraph 0230)
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And the monomer 15a has a structure of (original Chinese document paragraph 0262)
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It should be noted that monomer 10b corresponds to the monomer of claim 2 where Y is O X11 is a divalent hydrocarbon group having 2 carbon atoms X12 is a direct bond and R11 is a 3 carbon atom linear alkyl group. This monomer is present in an amount of 44.33 mol% of the polymer based on the total amount of the monomers. The 1,10 decandiol diacrylate monomer in the polymer structure corresponds to the claimed crosslinkable monomer of claim 4 when p is 2 R52 is hydrogen Y 51 is O and R51 is a divalent hydrocarbon group having 10 carbon atoms.
It should be noted that this compound of monomer 10b corresponds to the C3UreaA monomer indicated by applicants specification paragraph 0118. It should be noted that applicants specification paragraph pg 74 Table 1 examples 6-8 indicates that C3UreaA polymers made from 100% , 80% or 50 % of C3UreaA with the rest of the polymer being hydroxybutyl acrylate each have 15-25° peak half widths of at least 6.1 ° and applicants specification pg 76 Table examples 6-8 indicate that each of these polymers did not dissolve in corn oil at 120°C and so would not dissolve in corn oil at the lower claimed temperature of 25°C. It should be noted that the polymers of C18ureaA polymers also has a peak half width of 43-3.8 and is indicated to have a contact angle with hexadecane at 25°C of above 40° indicating that groups having larger number of carbon atoms and which are more hydrophobic will maintain the claimed properties.
It should be noted that the fact that the use of 3 molar equivalents of a crosslinking agent and the fact that the final product is an acrylic foam would indicate that the polymerized product would not be soluble in corn oil as it would have a crosslinked network structure that is incapable of being soluble, and as such can also be considered to be an oil resistant agent.
Weng 433 is silent as to the half width of a peak at 2θ of 15 to 25°C of 2.0° or more at a measurement temperature of 25°C.
However given that the half width peak is a measurement of the crystalline structure of the polymer and that the polymer include 44.33 mol% of a monomer which corresponds to the C3UreaA monomer of applicants specification which gives half width peaks at least 6.1 ° when at 50 mol%, the polymer of Weng 433 would form crystal structures from the same monomer and so would have similar half width peaks.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). . See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP 2112.V
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.I.
"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.
As such the polymer of Weng 433 teaches the claimed limitations.
Concerning claim 3 Weng 433 teaches the oil resistant agent according to claim 1 as is stated above. Weng 433 teaches that the polymer includes a monomer having a structure of (original Chinese document paragraph 0262)
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This monomer has the claimed structure where R22 is H Y21 is O R23 is a divalent hydrocarbon group having 2 carbon atoms and R21 is a group of
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Which would be a reactive group as the NH of the amide group would be capable of undergoing reactions as would the aromatic rings particularly reactions such as hydrogenation.
As such Weng 433 teaches a reactive monomer having the claimed structure and so teaches the claimed limitation.
Concerning claim 5 Weng 433 teaches the oil resistant agent according to claim 1 as is stated above. Weng 433 teaches that the polymer includes a monomer of 1,10 decandiol diacrylate (paragraph 0267) which is a crosslinking agent.
It should be note that the claim as is currently drafted does not require that the crosslinking agent be separate from the claimed polymer.
Alternatively Weng 433 further teaches that the polymer is made by adding the monomer solution to a calcium chloride solution and then reacting at 85°C for 10 hours (paragraph 0267). The calcium chloride which would be a part of the final acrylic foam can also be considered to be a crosslinking agent as the multivalent calcium ion can cause ionic crosslinking.
As such Weng 433 teaches the claimed limitation.
Conclusion
7. Claims 1-5 are rejected. No claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763