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 Arguments
In their response dated 12/5/2025 the applicants amended the claim such that claims 1-12 are cancelled, claim 13 is amended to recite a composition, new claims 21-30 are present.
AS a result of the claim amendments, the anticipation rejections over Eason, Peng and Dong articles are overcome. The anticipation rejection over Adams is also withdrawn but will be restated in an obviousness rejection. The grounds of rejections are therefore completely changed.
With respect to obviousness rejection over Creutz in view of Peng or Dong are overcome.
Double Patenting rejection over US 18/628,803 is maintained. Applicants indicated that terminal disclaimer will be filed once claims are in condition for allowance.
Consequently, newly stated rejections of record are necessitated by the extensive amendment to the claims.
Claim Interpretation
Applicants amended instant claim 13 to contain polymer composition as follows:
PNG
media_image1.png
114
634
media_image1.png
Greyscale
Accordingly, instant claim 13 only defined triblock limiting it to PEG and PDMAEMA. Di block has not been defined, and it can be any diblock known in the art. The same interpretation will be given to new claim 21.
With respect to new claim 27, the applicants claim that the block copolymer has following formula:
PNG
media_image2.png
176
358
media_image2.png
Greyscale
The recited formula is not a block copolymer. It is PEG terminated with monooleyl functionality.
Claims 29 and 30 are composition claims which require the block polymers to be formed utilizing ATRP. Claims 29 and 30 are in product by process format wherein patentable weight is given to the product and not to the process by which is it made.
Instant claim 13 as amended is directed to a composition wherein the composition is an architectural coating. Since the claim are directed to a composition, the prior art of record has to be capable of forming a coating.
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.
Claim 13-30 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.
Instant claim 13 discloses following limitation:
PNG
media_image1.png
114
634
media_image1.png
Greyscale
Claim limits triblock polymer to PEG and PDMAEMA blocks, while diblock is not defined. Instant specification does not support the diblock of claim 13, because as claimed the diblock can be any polymer known in the art. Instant specification only enables use of diblock having units consisting of PEG and PDMAEMA. While claims will be read in the light of the specification, the specification cannot be read into the claims. To overcome this rejection the applicants can incorporate term “each” before the definition of the claims as it was done in the co-pending application.
Currently, all dependent claims which do not define the structure of the diblock will inherit the deficiency of claim 13.
Instant claim 27 discloses chemical structure of the block polymer as follows:
PNG
media_image2.png
176
358
media_image2.png
Greyscale
This compound is known as polyethylene glycol monooleate ether, which is well known as a surfactant. As such the compound of claim 27 is not a block polymer, since it comprises only one repeat unit which is polyethylene glycol having defined number n repeat units. Claim 27 also disclose number of m repeat units which do not correspond to any repeat unit within the claim. IT should be also noted that instant specification also identifies the above compound as a diblock, which is not correct. While examiner understands that applicants can be their own lexicographer, such is not appropriate when it violates already established naming convention of the existing compounds See page 30/46 if the instant specification. Good example of diblock is right below the compound depicted above, as it contains two repeat units.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) XXX is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Biggs (WO 2010/038046) translation will be attached.
With respect to claims 13 and 21, Biggs discloses composition for use in self-cleaning coating for various surfaces. Articles suitable as substrates include concrete, the composition can be utilized in paints in order to create low friction surface (P. 1 Background) coatings (page 1, last paragraphs, page 2). See also p. 20 paragraph 5 for the definition of substrates.
The polymers of Biggs are diblocks comprising hydrophobic block A and hydrophilic block B. Example of hydrophobic monomer include compound of Formula 2:
PNG
media_image3.png
234
198
media_image3.png
Greyscale
Example of hydrophilic monomer can include any monomer such as depicted starting page 16 of Biggs. Importantly the monomer has to be soluble in water.
The carrier for the polymer of Biggs can be water, organic solvent or mixture of water and organic solvent (page 9).
With respect to claims 14 and 16, the coatings or paint of Biggs is an aqueous coating or latex. Latex is especially taught because in the mixture of water and organic solvent Biggs utilizes additives such as surfactants.
With respect to claim 17, the composition of Biggs is stored at room temperatures.
With respect to claim 20, the concentration of the diblock in the solvent is at least 1 part diblock and 10 parts of solvent (page 20).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-20, 23-26, 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 2005/0106117).
With respect to claim 13-16 and 23, Adams discloses composition for self-care products. The products include hair spray which form thin coating on the surface of the hair to create “hairnet” for lack of better description that prevents movement of the hair and keeps them in place. The hairspray is therefore capable of forming coating that will adhere to surfaces such as architectural surfaces. Adams clearly discloses that the compositions therein have film forming property, which is required by all coatings and paints.
The polymers of Adams include triblocks having following structure:
PNG
media_image4.png
214
608
media_image4.png
Greyscale
Which is a triblock of PSMAEMA:PEG:PDMAEMA.
With respect to claims 14-16, Adams teaches that the carrier or diluent is selected based on the intended use of the composition. The diluents include water, alcohol and cyclomethicone which is a silicon based oil [0090-0092]. Carriers further include mixture of water and alcohols as well as hydrocarbons, acetone and the like. This includes water in oil emulsions [0097]. While term “paint” is not utilized, because the claims are directed to a composition and not the product, the composition is capable of being used as a paint due to its film forming property.
With respect to claim 17, the composition of Adams is kept at room temperature.
With respect to claim 18, while the pH of the formulation is not explicitly taught, the formulations of Adams are aqueous with ethanol is slightly above 7, because pH of ethanol is 7.3.
With respect to claim 19, while not explicitly taught the addition of sodium benzoate to the aqueous composition raises the pH to around 8.0 because sodium benzoate is a strong base so water solution will hydrolyze it creating OH-. The pH will increase with increasing amount of sodium benzoate making it suitable for coatings in aerosol formation for spraying.
With respect to claim 20, the polymer is utilized as a thickener in an amount of 0.01-10 wt.% which meets claimed range. The range was calculated based on solids content of applicant’s table 5 (Standard formulation) where the content of triblock is 3.85 % based on the content of solids.
With respect to claims 23, Adams teaches triblock of PDMAEMA-PEG-PDMAEMA that meets the formula of claim 28 [0140]. PEG has 5-500 repeat units [0064].
With respect to claim 24-26, while the ratio of the blocks has not been explicitly recited such can be inferred from the examples. In example 2, PEG has molecular weight of 5,500. PDMAEMA is the PDMAEMA from example in [0148] having molecular weight of 5000, as such the ratio of the blocks is approximately 1:1:1.
With respect to claims 29 and 30, the claims are directed to a composition wherein the block copolymer is formed using ATRP. Claims 29 and 30 are product by process claims wherein patentable weight is given to product and not to the process by which is it made. Having said that, Adams utilizes ATRP to polymers the block polymers.
Claims 18, 19, 21, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 2005/0106117) as applied to claims 13-20, 23-26, 29-30 above, and further in view of Biggs (WO 2010/038046) as evidenced by Cruetz and Dong article.
Discussion of Adams from paragraph 1 of this office action is incorporated here by reference.
The teachings of Adams are directed to coatings formed triblock polymer based on DAEMDA and PEG. However Adams does not show that diblocks can also be utilized to form a coating.
Biggs discloses AB block polymer, which are diblocks and form coatings. Biggs defines AB diblocks as regular diblock or triblocks (page 19, 2nd paragraph). It is also preferred that the polymers be diblocks having AB configuration of triblocks having ABA configuration (Page 19, 4th paragraph),
With respect to claims 21, the monomers of Biggs are selected so that one block is hydrophilic and second hydrophobic to impart self-cleaning to the polymer. Block A being hydrophobic block, and block B being hydrophilic block. The block polymers are incorporated into a solvent system, which include water, organic solvent as well as combination of water and organic solvent (aqueous) (Page 9). One condition is that hydrophilic block has to be soluble in water.
Hydrophobic block A comprises compound of formula B (Page 10):
PNG
media_image5.png
186
166
media_image5.png
Greyscale
With preferred compound alkylaminoalkyl acrylates and methacrylates (page 16 bottom of paragraph 4) having formula 2 (pages 10-11):
Wherein R1 is hydrogen or methyl, R2 is hydrogen, n is an integer and R2 and R3 are methyl. The integer n is defined as being in a range of 1 to 5 encompassing group having 2 carbon atoms (ethyl).
PNG
media_image3.png
234
198
media_image3.png
Greyscale
Formula 2 of Biggs encompasses DMAEMA of Adams and its homolog is used in examples.
Hydrophilic block of Biggs can be selected from many (see page 17), and include compounds such as polyethylene oxide which also meets structurally the limitation of PEG. Biggs also specifically discloses glycols in generic manner.
With respect to claim 22, the ratio of monomer making the AB structure of the diblock of Biggs is as follows (bottom of page 15):
Units A are utilized in amount of 5-100
Units B are utilized in amount of 15-300
The content of units A and B overlaps with the content units of Adams in a triblock and with the content of units of the instant invention. Consequently the ratios of the A and B units such 1:1 is encompassed by the range disclosed in Biggs, which is the same ratio as that of encompassed by Adams.
With respect to claims 18 and 19, if the applicants do not agree with examiner’s interpretation of the pH, Biggs teaches the polymers disclosed there in as well as polymers of Adams are stimuli-responsive polymers which respond to small changed in environment such as pH. In order to be utilized in coatings and surface treatments the stimuli responsive polymers because of that feature (p. 7, 1st full paragraph).
Biggs further teaches that properties of these polymers can be tuned using pH to influence size of the micelles and adhesion to the surface (page 23). Consequently the pH of the polymer of Adams have to be within the same as those of instant invention in order to ensure the adhesion of the polymer to the surface to be coated.
While the hydrophilic block of Biggs may be selected from many, ethylene oxides and glycols are clearly named as suitable monomers and therefore they are envisaged by Biggs. The important aspect of this reference, is that if the compound of Adams is a diblock or triblock, it will still form a film. Biggs equates the two as functional equivalent on page 19 where AB block copolymer can be equally diblock or triblock to be capable of forming coating composition.
As such it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, to utilize polymer of Adams as either diblock or triblock and still obtain instant invention. This is because both diblock and triblock polymers having DMAEMA and PEG as block will be capable of forming a coating on architectural surface.
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 13-26 and 29-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-28 of copending Application No. 17/628,803 (803) Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 12 and 13 of ‘803 discloses block and triblock polymers of instant claims 13, 14 and 16 and compositions which utilize the polymer include carrier which is aqueous or latex.
Claims 15 of ‘803 are directed at coatings comprising the polymer which coatings are oil based, which includes architectural coatings which meet claims 15 of the instant invention.
Claim 17 of ‘803 discloses the same temperature range as instant claim 17.
Claims 18-19 of ‘802 disclose the same pH range as instant claims 18 and 19.
Claim 20 of ‘803 discloses the same concentration of the block copolymer as instant claim 20.
Claims 21 and 22 of ‘803 disclose structural limitation of the diblock having are exactly the same structure each block utilized in the same ratio as that of the instant claims 21 and 22.
Claims 23 and 24 of ‘803 disclose triblock having the same chemical structure and each block is utilized in a range that falls within the claimed content of instant claims 23 and 24.
Claims 25 and 26 of ‘803 disclose molecular weight of PEG and PDMAEMA that are within the range of the instant claims 25 and 26.
Claims 29 and 30 are directed to composition of claim 13 which recite process by which the block polymers are made. Since patentable weight is given to the product, the product is encompassed by claims 14 and 15 of the co-pending application ‘803.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 28 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 28 is directed to a block polymer having following structure:
PNG
media_image6.png
234
428
media_image6.png
Greyscale
The prior art of record did not result in a diblock polymer having claimed structure. While PEG moooleyl ether compounds are known as surfactants, there was no art which would disclose its polymerization with acrylate and DMAEMA to form claimed diblock.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 January 15, 2026