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 .
Response to Amendment
Applicant’s amendment filed on May 22, 2026 has been entered. Claims 1 and 17 have been amended. Claims 15 and 16 have been cancelled. As such, Claims 1-14 and 17-20 are currently pending in the application, with Claims 19 and 20 withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14, 17, and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite that the non-fluorinated barrier coating comprises a self-crosslinking non-ionic acrylic binder in lines 6-7. Support for this limitation is not found in the Specification, as originally filed. Paragraph [0098], cited by the Applicant to support the new limitation, provides disclosure that the fabric may comprise at least one binder, wherein the binder can be a non-ionic binder, such as a self-crosslinking non-ionic binder. However, the cited disclosure is based upon the fabric comprising the binder, not the non-fluorinated barrier coating, as recited in Claim 1. The Specification does not discuss including a binder into the non-fluorinated barrier coating. As such, Claim 1 and its dependent claims contain new matter.
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 1-14, 17, and 18 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 1 has been amended to recite the non-fluorinated barrier coating comprises a cationic acrylic polymer comprising an alkyl silane methacrylate group in lines 6-7. The scope of this limitation is unclear. How does an acrylic polymer become cationic if it possesses silane groups? How does an acrylic polymer comprise a monomeric alkyl silane methacrylate group? If the silane methacrylate group were present prior to polymerization, wouldn’t it polymerize? How does it retain a monomeric structure if it is an acrylic polymer structure? The Specification does not disclose clarify the structure of this material, simply noting it as “Example A” without giving any clear chemical formula or structure. As such, the scope of Claims 1-14, 17, and 18 is unclear.
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.
Claims 1-7, 11-14, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2019/0256739 to Brown et al. (“Brown”) in view of International Patent Application Publication No. WO 2022/055874 to Sworen et al. (“Sworen”) and Japanese Patent Application Publication No. 2018-519430 to ワン・レイ (an English translation obtained from the PE2E database is referenced herein) (“the ‘430 Publication”).
With regard to Claim 1, Brown discloses a coating composition that comprises up to 100% of a non-fluorinated compound mixture that provides water and soil repellency upon application to the surface of a fibrous substrate. See, e.g., Abstract, paragraphs [0021], [0058], [0059], entire document. Brown discloses that the coating composition comprises a silicone polyether polymer containing cationic groups, such as ammonium or amine cations. Paragraph [0009]. However, Brown does not disclose that the silicone polyether polymer containing cationic groups comprises an alkyl silane methacrylate group. Sworen is also related to a treatment composition for a fibrous substrate comprising a non-fluorinated silicone polyether polymer that provides a water repellent barrier and oily stain release properties to the fibrous substrate. See, e.g., Abstract, paragraph [0005], entire document. Sworen discloses such silicone polyether polymers can be provided as part of a pendant end-group of a (meth)acrylic repeating unit to promote free radical polymerization. Paragraph [0011]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the silicone polyether polymer containing cationic groups disclosed by Brown with an alkyl silane methacrylate group in order to promote free radical polymerization, as shown to be known in the art by Sworen. Brown discloses that the coating composition can further include a hydrophobic surface effect agent in the form of a non-fluorinated nonionic acrylic polymer. Paragraph [0039]. However, Brown does not disclose that the nonionic acrylic polymer provides a self-crosslinking, binder feature. The ‘430 Publication is also related to barrier fabric materials. See, e.g., Abstract, entire document. The ‘430 Publication teaches that a self-crosslinking, nonionic acrylic binder is suitable for use in conjunction with fibrous substrates to provide improved bonding of the composite material. Page 3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a self-crosslinking, nonionic acrylic binder in the coating composition disclosed by Brown in order to provide improved bonding of the resulting barrier fabric composite, as shown to be known by the ‘430 Publication. With regard to Claim 2, Brown discloses that the treatment composition is applied by dipping into a bath, paragraphs [0061] and [0074], which would coat both surfaces of the fibrous substrate. With regard to Claims 3 and 11, Brown disclose that the treatment composition can include a hydrophobic surface effect agent blended therein that provides an anti-static feature. Paragraphs [0040] and [0061]. With regard to Claim 4, Brown discloses that the coating composition can be cured using UV radiation. Paragraph [0065]. With regard to Claim 5, Sworen discloses that the silicone polyether polymer can comprise a silicone acrylate. Paragraphs [0011] to [0017]. With regard to Claim 6, Sworen discloses that the silicone polyester polymer can comprise a repeating unit of formula (I):
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which satisfies the parameters of Applicant’s claimed formula (I) because X in Sworen is a C1-C4 alkylene group, R1 is a C1-C4 alkyl group, and because c and d in Sworen can both be equal to 0. Paragraph [0009]. As such, the scope of Applicant’s claimed formula (I) is readily envisaged by the disclosure of Sworen. Alternatively, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to selected c and d to both be 0 in the invention according to Sworen because Sworen discloses that such a structure is suitable for use in their invention, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claim 7, the epoxy oligomers or polymers are optional to Claim 5, and the combination of Brown with Sworen satisfies the limitation by disclosure of the silicone acrylate polymer. With regard to Claim 12, Brown does not disclose the basis weight of the fabric material to be coated. The ‘430 Publication teaches that such fabrics can possess two fine layers of nonwoven fabric having a total basis weight of 5 to 30 gsm, and can possess either one or two continuous layers of nonwoven fabric having a basis weight of 10 to 50 gsm each. Pages 2-3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the fibrous substrate disclosed by Brown with a basis weight in the range of 5 to 200 gsm, since such total weight amounts are well known as suitable in the barrier fabric field, as shown to be known by the ‘430 Publication. With regard to Claims 13 and 14, the ‘430 Publication teaches that a nonwoven fibrous substrate can be configured to have a layered combination of spunbond and meltblown fabric layers, such as SMS or SMMS configurations, and can further be configured to include melt film fibrillated fibers and/or submicron nonwoven fibers. Page 15. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the fibrous substrate disclosed by Brown with a layered configuration to include spunbond and meltblown layers, optionally including melt film fibrillated fibers and/or submicron nonwoven fibers, since layered configurations are well known as suitable in the barrier fabric field, as shown to be known by the ‘430 Publication. With regard to Claim 17, the ‘430 Publication discloses that the amount of binder (0.05 to 0.2%) relative to the amount of barrier material (0.1 to 0.35%) is about 33% to 36% following removal of the solvent. Page 3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a binder in an amount of 10% to 60% by dry weight in the coating composition disclosed by Brown in order to improve the ability of the coating to bond to the fibrous substrate, as shown to be known by the ‘430 Publication. With regard to Claim 18, even though Brown does not specifically disclose the property of one or more of an alcohol repellency rating of at least 5, a static decay of 0.01 to 0.5 seconds, a hydrohead of 60 mbar to 100 mbar, it is reasonable to presume that one or more of these properties is an inherent feature to the materials disclosed by the combination of Brown with Sworen and the ‘430 Application. Support for the presumption is found because the combination of references teaches using similar materials, i.e. a fibrous base substrate and a barrier coating, wherein the barrier coating comprises a cationic acrylic polymer comprising an alkyl silane methacrylate group and a self-crosslinking, nonionic acrylic binder, to provide a similar material, i.e., a fabric designed to act as a liquid barrier. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Brown in view Sworen and the ‘430 Publication, as applied to Claim 1 above, and further in view of U.S. Patent Application Publication No. 2022/0178078 to Crosetto (“Crosetto”).
With regard to Claims 8 and 9, the combination of Brown with Sworen and the ‘430 Publication does not disclose the coating contain a wax having an acid value from 10 mg to 220 mg and a retention aid comprising a nitrogen-containing polymer of formula (III). Crosetto is also related to treated articles that include fibers. See, e.g., Abstract, entire document. Crosetto discloses that fibers can be treated with a wax having an acid value from 10 mg to 220 mg and a retention aid comprising the nitrogen-containing polymer of formula (III). Paragraphs [0011] to [0018]. Crosetto teaches that materials can be used to improve barrier properties of a coating. Paragraph [0047]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to incorporate a wax having an acid value from 10 mg to 220 mg and a retention aid comprising the nitrogen-containing polymer of formula (III) into the coating composition disclosed by Brown, as combined with Sworen and the ‘430 Publication, in order to improve the barrier properties of the coating, as shown to be known in the art by Crosetto.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Brown in view Sworen and the ‘430 Publication, as applied to Claim 1 above, and further in view of U.S. Patent Application Publication No. 2009/0042468 to Suzuki et al. (“Suzuki”).
With regard to Claim 10, the combination of Brown with Sworen and the ‘430 Publication does not disclose the coating amount on the fibrous substrate. Suzuki is also related to liquid barrier coatings for use on a fibrous substrate. See, e.g., Abstract, entire document. Suzuki teaches that, for a composite fabric having a basis weight in the range of 20 gsm to 100 gsm, paragraphs [0173] and [0178], a suitable coating amount is 1 to 10 gsm. Paragraph [0186]. Suzuki discloses that the solid content of the coating is about 20% to 50%. See, e.g., paragraphs [0425], [0441], [0453], and [0490]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a dry coating amount in the range of 0.05 to 10% by weight of the fabric in the barrier fabric disclosed by the combination of Brown with Sworen and the ‘430 Publication because Suzuki teaches that such an amount is suitable for providing a barrier to liquid while not significantly interfering with the lightweighted nature of the fabric, itself. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
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 1-14, 17, and18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/517,058 (“the ‘058 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘058 Application also claims a fabric comprising a fibrous substrate having an outermost surface coated with a non-fluorinated barrier coating. The subject matter of the dependent claims also overlaps with the claimed silicone acrylate structures, epoxy silicone structures, and additional ingredients recited.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14, 17, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/610,740 (“the ‘740 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘740 Application also claims a fabric comprising a fibrous substrate having an outermost surface coated with a non-fluorinated barrier coating. The subject matter of the dependent claims also overlaps with the claimed silicone acrylate materials, epoxy silicone materials, and additional layers recited.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14, 17, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/085,021 (“the ‘021 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘021 Application also claims a fabric comprising a fibrous substrate having an outermost surface coated with a non-fluorinated barrier coating. The subject matter of the dependent claims also overlaps with the claimed silicone acrylate materials, epoxy silicone materials, and additional layers recited.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14, 17, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 19/243,179 (“the ‘179 Application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘179 Application also claims a fabric comprising a fibrous substrate having an outermost surface coated with a non-fluorinated coating that would function as a barrier material. The subject matter of the dependent claims also overlaps with the claimed silicone acrylate materials, epoxy silicone materials, and additional layers recited.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on the references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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