DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 4/6/26, claims 8-15 are currently pending in the application.
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 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (WO 2019/163570 A1).
The present application is entitled to a filing date of 9/27/2019. The WIPO reference has a publication date of 8/29/2019, and qualifies as prior art under 102(a)(1).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
At the outset, it is noted that the WIPO publication is relied upon for date purposes, and US 11,970,651 B2 document is relied upon as its English equivalent in the rejections set forth below.
Regarding claims 8, 10-14, Takahashi teaches a water- and oil repellent surface treatment agent for textile products and nonwoven fabrics (Ab, col. 1, lines 14-21), comprising a water- and oil repellent polymer having a repeat unit of (A2) a fluorine-free monomer in an amount of 30 to 100 wt.%, such as monomers of formula:
CH2 ═C(—X)—C(═O)—Y—Rn,
wherein X may be a hydrogen atom or a monovalent organic group, R is a hydrocarbon group having 7 to 40 carbon atoms, n is an integer of 1 to 3, and Y may be —O—(CH 2)m—NH—C(═O)—, —O—(CH2)m—O—C(═O)—NH—, —O—(CH2)m—NH—C(═O)—O—, —O—(CH2)m—NH—C(═O)—NH— wherein m is an integer of 1 to 5. Disclosed examples of A2 include the following that read on the claimed formula (col. 3, line 30-col. 5, line 42):
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.
Disclosed water- and oil repellent polymer may be a block polymer (col. 8, lines 31-34), and may further have repeating units that are fluorine-free, of (A3) in an amount of 2 to 68 wt.% (e.g., vinyl chloride or hydroxyethyl (meth)acrylate, capable of providing for (B2) in claim 10), and/or of (A4) in an amount of 50 wt.% or less, said wt.% being based on the total weight of polymer (col. 5, line 57-col. 6, line 32).
Takahashi is silent on a fibrous substrate treated with a composition comprising a block copolymer as claimed in a single embodiment as claimed.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching on suitable fluorine-free monomers and amounts thereof for preparing a water- and oil repellent polymer, which may be a block polymer, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention to provide for a fibrous substrate treated with a composition comprising any water- and oil repellent polymer within the scope of Takahashi, including those of the claimed invention. For instance, in a block copolymer of (A2) of above formula (mol. wt. 411.6, 98 wt.% ), and hydroxyethyl methacrylate as (A3) (mol. wt. 130.14, 2 wt.%), the calculated mol% of (A2) is 93.93 mol%.
Regarding claim 9, Takahashi teaches a treatment agent comprising (A) a water- and oil repellent polymer (A) and a liquid medium (C) (col. 8, lines 1-9), wherein the liquid medium may be water, an organic medium or a mixture thereof, for applying to a cloth (col. 7, line 45-col. 8, line 9, col. 23, lines 50-55).
Regarding claim 15, it is noted that the claim is drawn to a recitation “copolymer is produced by a method” is a product-by-process limitation, and the claimed product is obviated by Takahashi for reasons presented in the preceding paragraphs. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(I).
Claims 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2018101730 A1, of record), in view of Biggs et al. (US 2011/0257289 A1).
At the outset, it is noted that the WIPO publication is relied upon for date purposes, while US Pat. 11,155,666 B2 is relied upon as its English equivalent in the rejection below.
Regarding claims 8-12, 14, Park teaches block copolymers comprising a polymer segment A having a unit represented by Formula 1 below as the main constituent, in an amount of 60% by wt.% to 100 wt.% (col. 2, line 38-col. 3, line 55, ref. claim 1):
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Disclosed Formula 1 encompasses units obtainable from claimed monomer (a2), i.e., Q1 may be single bond, X1 may be -NH-C1-4 alkylene-C(=O)-O- and Y1 may be a hydrocarbon with 12 to 20 carbon atoms, or alternatively, Q1 may be -O- C1-4 alkylene-, X1 may be -NH-C1-4 alkylene-C(=O)-O, a urethane linker or a urea linker, and Y1 may be a hydrocarbon with 12 to 30 carbon atoms. Additionally, working Preparation Example 1 is directed to compound A shown below, for providing the unit of segment A:
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Disclosed unit of Formula A is obtainable from a compound (a2), i.e., in the claimed formula, R32=a monovalent organic group=methyl, Y31= -NH-, Z31=divalent hydrocarbon with 1 carbon atom, Y32=-C(=O)-O-, R31=hydrocarbon having 12 carbon atoms, and n=1.
Park teaches that the polymer segment B may be a polyalkyl (meth)acrylate segment, such as polymethyl methacrylate (col. 4, lines 40-59) (reads segment (B), segment (B2) of claim 2).
Park teaches diblock type copolymers, and that when the block copolymer comprises at least the polymer segments A and B, the ratio of the polymer segment A in the block copolymer may be in a range of 10 mol% to 90 mol% (col. 4, lines 40-46, col. 6, lines 58-62).
Park further teaches a coating liquid (reads on surface treating agent) in which the block copolymer is diluted in an appropriate solvent for forming a layer of the block copolymer on a substrate. Disclosed solvents include organic solvents (col. 8, lines 9-17, Example 1).
Park teaches block copolymers capable of forming periodically arranged structures by a self-assembly phenomenon (col. 1, lines 13-25), and Park’s block copolymers may be used to form films useful in a variety of applications (col. 7, lines 61-63).
Park is silent on a fibrous substrate treated with a block copolymer comprising a segment (A) comprising a repeating unit of claimed (a2) as claimed, and a method of producing a treated substrate as in claim 9.
As stated in paragraph 9 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
The secondary reference to Biggs teaches compositions comprising a AB block copolymer in surface coatings (Ab). Biggs’ copolymers self-assemble into aggregate structures providing various functional benefits [0002]. For instance, the copolymers contribute controlled wetting characteristics that are useful in applications involving textile treatment, such as waterproofing of clothes and fabrics, such as for low friction surfaces in swimsuits etc. [0003]. Biggs’ diblock copolymers include a hydrophobic block which may be formed from an alkyl (meth) acrylate ester monomer, e.g., monomers having C12-18 alkyl chains which overlap in scope with monomers suitable for forming Park’s segment A.
Given the teaching in Park on suitable block copolymers and the mol% of polymer segment A in the block copolymer for forming coatings, e.g., solvent-based, wherein the block copolymers are capable of self-assembly phenomenon in films and useful in a variety of applications, the teaching in Biggs on compositions comprising diblock polymers capable of self-assembling for use in textile treatments for providing low friction surfaces, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize Park’s compositions of overlapping scope for treating textile surfaces. A skilled artisan would be motivated to combine the teachings of Biggs’ on suitability of diblock copolymer-based compositions for treating textiles with the teachings of Park, based on market forces since Biggs demonstrates new marketable applications for self-assembling block copolymers that were not previously contemplated by Park (see MPEP 2141, III. Section F).
Regarding claim 13, Park teaches polymethyl methacrylate as polymer segment B (reads on segment (B2)) (col. 4, lines 40-59). The corresponding monomer, i.e. methyl methacrylate, reads on the claimed formula, i.e., in the claimed formula, R52=a monovalent organic group=methyl, Y51=-O-, and R51= hydrocarbon having 1 carbon atom (col. 4, lines 49-49).
Regarding claim 15, the combination of Park and Biggs obviates the substrate as claimed. Additionally, the discussion on product-by-process claims from paragraph 12 above is incorporated herein by reference.
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 8-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-20 of U.S. Patent No. 11,970,651 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the surface treatment agent may include a water- and oil repellent polymer, comprising a repeat unit (A2) in 30 to 100 mol% in a liquid medium (patent claim 1), including monomers (A2) as in patent claim 8 that fall within the scope of the claimed formula, or including a further fluorine-free monomer (A3) in an amount of 2 to 68 wt.% (patent claim 15).
Patent claims are silent on a fibrous substrate treated a surface treatment agent comprising a block copolymer, said block segment comprising a repeating unit of claimed formula in claimed amount, in a single embodiment as claimed.
As stated in paragraph 9 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
It is noted that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). To that end, the patent disclosure teaches that the water- and oil repellent polymer may be a block polymer (col. 8, lines 31-34), may further have repeating units that are fluorine-free, of (A3) in an amount of 2 to 68 wt.%, such as those of vinyl chloride or hydroxyethyl (meth)acrylate, the latter capable of providing for (B2) in instant claim 10, (col. 5, line 57-col. 6, line 32), and the use of water- and oil repellent surface treatment agent for treating textile products and nonwoven fabrics (Ab, col. 1, lines 14-21). Incorporating the calculation from paragraph 10 above, it would have been obvious to one of ordinary skill in the art to provide for a fibrous substrate treated with a treating agent comprising a water- and oil repellent block copolymer, including those within the scope of the claimed invention (obviates claims 8, 10-14).
Regarding claims 9 and 15, the discussion from claims 11 and 12 above are incorporated herein by reference.
Response to Arguments
In view of the amendment dated 4/6/26, the rejections of record are withdrawn and new grounds of rejections are presented above. Applicant’s arguments on the rejections of record and the applied art have been duly considered but are moot because the new ground of rejection does not rely on any reference 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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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