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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Senzaki et al. (US 2020/0017652).
Regarding claims 1-4, Senzaki et al. teaches a surface treatment liquid comprising a resin (A) (a polymer) and a solvent (S) (a solvent), wherein in at least one of the terminals of a main chain of the resin (A), a terminal group comprising a silanol group and/or a reactive silyl group having a group to generate a silanol group by hydrolysis is bonded (¶10). The solvent (S) may be water, an organic solvent, or an aqueous solution of an organic solvent, and suitable examples of the organic solvent include methanol, ethanol, n-propyl alcohol, and isopropyl alcohol (¶59). The terminal group bonded at the terminal of the main chain is a group represented by formula (A-I), –S—Ra1—SiRa2aRa33-a, wherein Ra1 represents a divalent hydrocarbon group having 1 or more and 20 or less carbon atoms, Ra2 represents a hydroxyl group, an alkoxy group having 1 or more and 4 or less carbon atoms, or a halogen atom, Ra3 represents a hydrocarbon group which may include a substituent and has 1 or more and 10 or less carbon atoms, and a represents 2 or 3 (¶44, 49). Suitable examples of the reactive silyl group are a trimethoxysilyl group and a triethoxysilyl group (¶48), and examples of the divalent hydrocarbon group serving as Ral include an alkylene group, an arylene group, and a group obtained by combining an alkylene group and an arylene group, an alkylene group being preferable (¶51 ). Therefore, Senzaki et al. teaches a polymer having, at a terminal of a main chain thereof, the structure *—X—A1 of Formula (1-1) of claim 1, wherein X is a sulfur atom (corresponds to the structure *—S—A1 of Formula (1-2) of claim 2), and wherein A1 is the group —Ra1—SiRa2aRa33-a (corresponds to the group *—RA—A2 of Formula (A-11) of claim 3 and of Formula (A-12) of claim 4, wherein RA is the divalent hydrocarbon group Ra1 and A2 is the reactive silyl group).
The instant specification does not provide a limiting definition of "a monovalent substituent having substrate adsorbability at a terminal." The instant specification states that the substituent (A1) is typically a group containing a functional group that is bonded to the metal, and that "this bond is a chemical bond, and examples thereof include a covalent bond, an ionic bond, and a coordination bond" (¶67 of the instant PG-PUB). This limitation is therefore given its broadest reasonable interpretation as a monovalent substituent that is capable of forming a chemical bond, including a covalent bond, with a surface of the base material. Senzaki et al. teaches that, because the terminal group including a silanol group and/or a reactive silyl group is bonded at a terminal of the main chain, the resin (A) reacts with the surface of the treatment target so as to form a covalent bond, and thus a coating is formed which is firmly bonded to the surface of the treatment target (¶43); that the resin (A) can be covalently bonded to the surface of the treatment target by the reactive silyl group of the terminal (¶14); and that the resin (A) is bonded by the reactive silyl group to a hydroxyl group on the surface of the treatment target (¶67). Therefore, the group —Ra1—Si—Ra2aRa33-a of Senzaki et al. corresponds to a monovalent substituent having substrate adsorbability at a terminal, and the reactive silyl group thereof corresponds to A2.
Senzaki et al. further teaches Examples 1-4, in which an N-substituted acrylamide monomer, a polymerization initiator, and (3-mercaptopropyl)trimethoxysilane for terminal-group introduction were added to water and subjected to radical polymerization, and the resulting resin liquids were thereafter diluted with water to obtain the surface treatment liquids (¶78, 79; Tables 1 and 2). Therefore, Senzaki et al. teaches a composition comprising a polymer having the structure —S—CH2CH2CH2—Si(OCH3)3 at a terminal of a main chain thereof, and a solvent.
The preamble of claim 1 recites that the composition is "for selectively modifying a base
material having a surface having two or more regions made of materials that are different from each other." This is a statement of the intended use of the claimed composition which does not result in a structural difference between the composition of claim 1 and the composition of Senzaki et al., as the body of the claim sets forth a structurally complete composition, namely a polymer and a solvent. 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. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). MPEP 2111.02 II.
Senzaki et al. does not explicitly teach that the group bonded at the terminal of the main chain has substrate adsorbability. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., substrate adsorbability, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot 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. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Starner et al. (US 2010/0041814). As a note, the phrase “which has” is interpreted as “comprising.” MPEP 2111.03 I.
Regarding claim 5, Starner et al. teaches terminally glycidated polyethers, polyesters, polyacrylates, polyamides, polyolefins, polydienes, and butadiene or butadiene/acrylonitrile copolymers, wherein the molecular weight of the modifying polymer is about 2000 daltons or above (¶15). The glycidyl terminated modifying polymer is prepared by reacting epichlorohydrin with a modifying polymer having at least two terminal proton donating functional groups so as to terminate the modifying polymer with at least two glycidyl ethers (¶11), the terminal proton donating functional groups being of the general formula R-X wherein X is —COOH, —OH, —SH, —C(O)SH, —C(S)SH, —NH(R), or —C(O)NH(R), where R is H or C1-4 alkyl (¶23). Such glycidyl functionalization is achieved by reacting epichlorohydrin onto terminal carboxylic acids, alcohols, thioacids, thiols, amines, or amides (¶23). The glycidyl terminated modifying polymer is of the general formula
PNG
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104
286
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Greyscale
wherein R1 comprises a polyether, polyester, polyacrylic, polyamide, polyolefin, polydiene, or polydiene/acrylonitrile copolymer, X is an ester, ether, amido or amino linkage, and n is 1-6 (claim 10). Therefore, Starner et al. teaches a polymer having, at a terminal of a main chain thereof, the structure *—X—B1 of Formula (2-1) of claim 5, wherein X is the oxygen atom of the ether linkage and B1 is a glycidyl group, that is, a monovalent substituent having an epoxy group at a terminal.
The instant specification defines the term "main chain" as "the longest atomic chain of the polymer" (¶54 of the instant PG-PUB). Starner et al. teaches Example 8, in which a polypropylene glycol having a functionality of a diol and a molecular weight of 4000 (Polyglycol 4000) was reacted with epichlorohydrin in the presence of a Lewis acid catalyst and thereafter dehydrochlorinated with sodium hydroxide, in accordance with the procedure of Example 5, to give a glycidated adduct having a viscosity of 912 cP at 25 °C and an epoxy equivalent weight of 2608 grams/equivalent (¶48, 49; Table 2). The polypropylene glycol of Example 8 is a diol, and the longest atomic chain thereof therefore terminates at each of the two glycidated ends. Accordingly, Starner et al. teaches a polymer, namely a polypropylene glycol having a molecular weight of 4000, which has at each terminal of a main chain thereof the structure —O—CH2—(oxiranyl), which is the structure of Formula (2-1) of claim 5 wherein X is an oxygen atom and B1 is a glycidyl group having an epoxy group at a terminal.
Claim 5 is rejected under 35 U.S.C. 102(a)(l) as being anticipated by Dacko et al. (WO
2020/006188). As a note, the phrase “which has” is interpreted as “comprising.” MPEP 2111.03 I.
Regarding claim 5, Dacko et al. teaches an epoxy-functional polymer which comprises a polyepoxide, wherein the polyepoxide comprises a polyglycidyl ether of a polyphenol, such as bisphenol A, and wherein such polyepoxides are produced by etherification of a polyphenol with an epichlorohydrin in the presence of an alkali (¶21). Dacko et al. further teaches that the epoxy functional polymer may comprise a polymeric backbone comprising a polyepoxide that has been chain extended by reaction with a compound having at least two functional groups reactive with epoxy groups, such as diols, diphenols, dicarboxylic acids, dithiols, and/or diamines, and that the epoxide functional groups from the polyepoxide are present in a stoichiometric excess such that the resulting polymer comprises at least one terminal epoxide functional group (¶22). As a nonlimiting example of a polymer having terminal groups and pendant groups, Dacko et al. teaches the epoxy-functional polymer resulting from the reaction of an excess of diglycidyl ether of bisphenol A with bisphenol A, and teaches that the resulting polymer has at least one terminal epoxide group (assuming at least one end of the polymeric chain terminates with diglycidyl ether of bisphenol A) and at least one pendant hydroxyl group (¶19). Dacko et al. additionally teaches that the phosphated epoxy resin may further comprise other terminal functional groups including an epoxide functional group (¶17). Because the polyepoxide is a polyglycidyl ether of a polyphenol produced by etherification of the polyphenol with epichlorohydrin, the terminal glycidyl group is bonded to the polymeric backbone through the oxygen atom of the resulting ether linkage. Therefore, Dacko et al. teaches a polymer having, at a terminal of a main chain thereof, the structure *—X—B1 of Formula (2-1) of claim 5, wherein X is an oxygen atom and B1 is a glycidyl group, that is, a monovalent substituent having an epoxy group at a terminal.
Dacko et al. defines the term "terminal" with respect to a functional group of a polymer as "a functional group that is not pendant to the polymeric backbone of the polymer and forms a terminus of the polymeric chain," and defines the term "pendant" as "a functional group of a polymer that is present as a side group to the polymeric backbone and does not form a terminus of the polymeric chain" (¶18). The instant specification defines the term "main chain" as "the longest atomic chain of the polymer" (¶54 of the instant PG-PUB). The terminal epoxide group of Dacko et al. therefore forms a terminus of the polymeric chain and is located at a terminal of a main chain, as distinguished from the pendant hydroxyl groups of the same polymer, which Dacko et al. expressly identifies as not forming a terminus of the polymeric chain (¶18, 19). Dacko et al. additionally teaches a phosphated epoxy resin comprising at least one terminal group comprising a phosphorous atom covalently bonded to the resin by a phosphoester linkage (¶3, 12; claim 1), wherein the term "phosphoester linkage" refers to "a covalent bond between a carbon atom and an oxygen of a phosphoester group," and wherein the term "phosphoester group" refers to "an oxygen atom covalently bonded to an alkyl radical or an aryl radical, wherein the oxygen atom is also covalently bonded to a phosphorous atom that is bonded to an additional oxygen atom by a double bond" (¶l4). This terminal group may comprise phosphate, organophosphate, phosphonate, organophosphonate, phosphinate, or organophosphinate (¶15), and is produced by the reaction of a phosphorous acid, which may comprise a phosphoric acid, with a terminal epoxide group of an epoxy-functional polymer (¶25). Non-limiting examples of the phosphoric acid include 100 percent orthophosphoric acid, superphosphoric acid, diphosphoric acid, and triphosphoric acid (¶26). Therefore, Dacko et al. also teaches a polymer having, at a terminal of a main chain thereof, the structure *—X—B1 of Formula (2-1) of claim 5, wherein X is the oxygen atom of the phosphoester linkage that is covalently bonded to a carbon atom of the polymer, and B1 is the phosphorous-containing group, that is, a monovalent substituent having a phosphoric acid group or a phosphoric acid ester group at a terminal.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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