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 . Claims 1-9 are currently pending in the application.
Claim Objection
Claim 7 is objected to because of the following:
Given that claim 6 is drawn to a method of producing the surface treatment agent according to claim 1, the claim language must be amended to recite “the acrylic monomer having a long chain hydrocarbon group (a2)” in both steps, so to refer back to the monomer (a2) in claim 1 and to improve clarity.
Appropriate correction and/or clarification is required.
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.
Claims 1-9 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 recites the following wherein clause:
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Likewise, the wherein clause in claim 6 is as follows:
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Claims 1 and 6 are indefinite. Noting that the block segment (A) in claim 1 is open ended to monomer(s) other than the acrylic monomer having a long-chain hydrocarbon group (a2), it is not clear if the molar ratio of the block segment (A), i.e., of all monomer units in segment (A) combined, is 30 mol% or more, based on the repeating units of the copolymer, or if the molar ratio of each monomer unit in segment (A) (when formed from multiple monomers) is 30 mol% or more. For e.g., in a block copolymer comprising a segment (A) formed from monomer (A1) and monomer (A2), it is not clear if the combined molar ratio of (A1) +(A2) is 30 mol% or more, or if the molar ratio of (A1) is 30 mol% or more, and the molar ratio of (A2) is 30 mol% or more, based on the total repeating units of the copolymer. Claim 6 lacks clarity for similar reasons, at least for mol% ranges towards the lower limit. Claims 2-5, 7-9 are subsumed by rejected base claim 1, and are therefore included in this rejection.
For the purpose of examination, Examiner interprets claim 1 as being open to both interpretations, i.e., the molar ratio of all units in claimed segment (A) combined is 30 mol% or more, based on the repeating units of the copolymer, or alternatively, the molar ratio of each monomer unit in segment (A) (when formed from multiple monomers) is 30 mol% or more, based on the repeating units of the copolymer. Likewise, claim 6 is interpreted as including 35 mol% or more of total monomer units in segment (A), or including 35 mol% of each monomer unit in segment (A), when including two different monomer units in segment (A).
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2018101730 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 1-4, 6, 8 and 9, 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 that 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 is silent with regard to a water-repellent block copolymer comprising a segment (A) comprising a repeating unit of claimed (a2) at claimed mol% ratio in one single embodiment as claimed (claim 1-3), or a method of producing a treated substrate of claim 9, or a substrate of claim 8.
At the outset, it is noted 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 in Park on diblock copolymers, the teaching on the mol% ratio of segment A in the block copolymer and monomer units therein, and the teaching on polymethyl methacrylate segment as segment B, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a coating comprising a solvent and a fluorine-free block copolymer comprising a segment (A) and segment B within the scope of Park, including those of the claimed invention. Thus, Park obviates the compositional limitations as set forth in the body of claims 1-3, a method of producing a treated substrate of claim 9, and a substrate of claim 8.
Additionally, given the teaching on units comprising a long chain alkyl group for segment A, i.e., hydrophobic group, which may be in the predominant amount, and the teaching on polymethyl methacrylate segment as segment B, i.e., units comprising only a nonpolar methyl group, a skilled artisan would reasonably expect a diblock copolymer of segment (A) at, for e.g., 30-99 mol% and segment B of polymethyl methacrylate to be water-repellent as claimed, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 5, Park teaches polymethyl methacrylate as polymer segment B (reads on segment (B2)). 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 7, disclosed Example 1 is drawn to a diblock copolymer. For reasons as stated above, it would have been within the level of ordinary skill in the art to prepare a coating comprising a diblock copolymer comprising a segment (A) and a segment (B2) of polymethyl methacrylate within the scope of the claimed invention by polymerizing either of the two segments in the first step as in the claimed invention. As such, selection of any order of performing process steps is obvious in the absence of new or unexpected results. See, for example, In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); MPEP 2144.04.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Li et al. (CN106833251 A, machine translation)
Li teaches a fluoride-free hydrophobic coating comprising a long side chain polyacrylate segmented polymer, preparable from a long chain acrylic monomer and a functional acrylate monomer. Disclosed functional polyacrylate block copolymer of Example 1 is formed from octadecyl methacrylate (0.05 mol), methyl methacrylate (0.01 mol) and N,N-dimemthylaminoethyl methacrylate (0.0268 mol), and has the following structure:
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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