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 .
Election/Restrictions
Applicant’s election without traverse of Group I, corresponding to Claims 1-18, in the reply filed on December 22, 2025 is acknowledged. Claims 19 and 20 are withdrawn from consideration.
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 1-5, 7, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Patent Application Publication No. WO 2022/055874 to Sworen et al. (“Sworen”).
With regard to Claim 1, Sworen discloses 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 that “[t]he treatment compositions provide a balance of hydrophobic properties and oleophobic properties without the use of fluorine.” Paragraph [0008]. Sworen discloses that the treatment composition is applied to an outer surface of the fibrous substrate. Paragraphs [0004], [0008], and [0039]. With regard to Claim 2, Sworen discloses that the treatment composition is applied by dipping into a bath, paragraphs [0036] and [0051], which would coat both surfaces of the fibrous substrate. With regard to Claims 3 and 11, Sworen disclose that the treatment composition can include a hydrophobic surface effect agent blended therein that provides an anti-static feature. Paragraph [0024]. With regard to Claim 4, Sworen discloses that the silicone polyether polymer can be cured using UV radiation. Paragraph [0039]. 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 7, the epoxy oligomers or polymers are optional to Claim 5, and Sworen satisfies the limitation by disclosure of the silicone acrylate polymer.
Claims 1, 4, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Patent Application Publication No. WO 2022/148932 to Maliverney et al. (the English equivalent U.S. Patent Application Publication No. 2024/0117198 is referred to herein) (“Maliverney”).
With regard to Claim 1, Maliverney discloses a photo-curable silicone composition comprising a release control additive to provide a water barrier coating. See, e.g., Abstract, paragraph [0244], entire document. Maliverney teaches that the coating can be used on the surface of a fibrous substrate. Paragraphs [0243] and [0244]. Maliverney does not require the presence of fluorine atoms in the coating composition. Paragraphs [0085] to [0105]. With regard to Claim 4, Maliverney discloses that the silicone composition is cured using radiation. Paragraph [0026]. With regard to Claim 5, Maliverney discloses that the silicone composition can comprise acrylate. Paragraphs [0054] to [0055]. With regard to Claim 7, the epoxy oligomers or polymers are optional to Claim 5, and Maliverney satisfies the limitation by disclosure of the silicone acrylate polymer.
Claim Rejections - 35 USC §§ 102/103
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 6 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sworen.
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 18, even though Sworen 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 Sworen. Support for the presumption is found because Sworen teaches using similar materials, i.e. a fibrous base substrate and a barrier coating, wherein the barrier coating a silicone based polymer made functional by acrylate groups, 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).
Claim Rejections - 35 USC § 103
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Sworen in view of U.S. Patent Application Publication No. 2022/0178078 to Crosetto (“Crosetto”).
With regard to Claims 8 and 9, Sworen 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 Sworen 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 Sworen in view of U.S. Patent Application Publication No. 2009/0042468 to Suzuki et al. (“Suzuki”).
With regard to Claim 10, Sworen 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 Sworen 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).
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sworen in view of 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 12, Sworen does not disclose the basis weight of the fabric material to be coated. The ‘430 Publication also relates to barrier fabrics designed to lessen the amount of fluorochemical materials used on the fabric. See, e.g., Abstract, entire document. 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 Sworen 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 Sworen 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 Claims 15 to 17, the ‘430 Publication further discloses that the barrier coating can further include a binder, such as acrylic, styrene butadiene rubber, vinyl copolymer, vinyl acetate, ethylene vinyl acetate, polyvinyl chloride, or polyurethane to improve the ability of the coating to bond to the fibrous substrate. Page 3. 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. Id. 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 Sworen in order to improve the ability of the coating to bond to the fibrous substrate, as shown to be known by the ‘430 Publication.
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 1-18 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 1-18 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 1-18 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 1-18 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.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789