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 .
This communication is responsive to the claim set filed 05/01/2026. Claims 1, 3, 6 and 18-28 are pending. Claims 18-28 are directed to the non-elected group and are withdrawn.
The 35 USC 112 (a) rejection is WITHDRAWN because the US patent publication para. [0103] discloses various proportions of PVAc of PVAc-PVDF blends.
Claims 1, 3 and 6 are rejected for the reasons set forth below.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/01/2026 has been entered.
Election/Restrictions
Newly submitted claims 18-28 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the originally elected invention is directed to a non-conductive material, while claims 18-28 are directed to a method of eliminating generation of electrostatic charge at source or preventing surface fouling from particle adhesion on an object. The originally elected invention and the newly submitted claims are distinct because the method can be applied by a materially different material from the originally elected invention, for example, a blend of polyvinyl acetate, polyacrylonitrile and solvent.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18-28 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Drawings
The drawings filed on 10/18/2023 are acceptable subject to correction of the informalities indicated below. In order to avoid abandonment of this application, correction is required in reply to the Office action. The correction will not be held in abeyance.
Fig. 5, Fig. 6 and Fig. 7 are objected because the legends and tables on the figures are illegible.
Fig. 11 is objected because legends under images are illegible.
Fig. 14 is objected because names of protein powders are illegible.
Fig. 17 is objected because legends are illegible.
Claim Interpretation
Preamble of Claim 1 recites intended uses
The claim 1 preamble recites “for applying a non-conductive coat to a surface to eliminate generation of electrostatic charge at source or to prevent fouling from particle adhesion to the surface” which describes the intended use rather than the structure of the apparatus. In other words, the limitations of “for applying a non-conductive coat to a surface to eliminate generation of electrostatic charge at source or to prevent fouling from particle adhesion to the surface” are not positively recited structures of claim 1 and they do not receive patentable weight (see MPEP 2111.02(II)).
Body of Claim 1 recites intended uses
Claim 1 recites:
“wherein a weight proportion of the first polymer and the second polymer is selected based on the surface that the non-conductive polymer material is to be applied to or another material that is to be in contact with the coated surface so that the coated surface resists charging against the another material.”
“a weight proportion of the first polymer and the second polymer” is directed to an intended use of the first polymer and the second polymer. The intended use is “the non-conductive polymer material is to be applied to (the surface) or another material that is to be in contact with the coated surface so that the coated surface resists charging against the another material.” The intended use limitations do not require steps to be performed or limit the claim to a particular structure. These limitations do not limit the scope of the instant claim and need not be taught by the prior art in order to read on the claims. See MPEP 2114 II.
Claim Rejections - 35 USC § 112
Claim 1, 3 and 6 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.
The term “resists charging” in claim 1 is a relative term which renders the claim indefinite. The term “resists charging ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear the degree of charging is resisted, not clear if 10%, 25%, 30%, 70%, or 100% of charging is resisted, thereby rendering the scope of Claim 1 being indefinite.
Claims 3 and 6 are rejected under 35 U.S.C. 112(b) for being dependent on Claim 1.
Claim Rejections - 35 USC § 102
Claims 1-3 and 6 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Krueger et al. (US4,615,848).
Attention is drawn to Example 3a. Krueger teaches a mixture of polyvinyl acetate and
polyvinylidene fluoride in dimethylformamide solvent. None of polyvinyl acetate, polyvinylidene fluoride and dimethylformamide is conductive, therefore, the mixture is non-conductive. The claimed weight ratio of the first polymer and the second polymer is directed to intended use, as such the claimed weight ratio do not limit the scope of the instant Claim 1.
Additionally, the proportion of polyvinyl acetate is 40% of the total weight of polyvinyl acetate and polyvinylidene fluoride. The proportion of polyvinyl acetate meets the proportion claimed in the dependent claim 3, therefore, the mixture of Example 3a is substantially identical to the non-conductive polymer material of the instant Claim 1, as such the mixture of Example 3a is to be applied to or another material that is to be in contact with the coated surface so that the coated surface resists charging against the another material. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim Rejections - 35 USC § 103
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Seiichi et al. (JP2002088346 A).
Seiichi teaches a permanent antistatic agent composition comprising a permanent antistatic agent wherein the permanent antistatic agent comprises a polyether containing a fluoroalkyl group (ab.). Seiichi further teaches the permanent antistatic agent composition comprising resins other than the fluoro-polyether, the resins can be polyvinyl acetate and polyvinylidene fluoride ([0018-0019]. Seiichi furthermore teaches the permanent antistatic agent composition comprising a liquid medium which can be dimethyl sulfoxide ([0023]). Therefore, Seiichi teaches a permanent antistatic agent composition comprising fluoro-polyether, polyvinyl acetate, polyvinylidene fluoride and dimethyl sulfoxide. Seiichi concerns to make a permanent antistatic agent composition, therefore, the weight proportion of polyvinyl acetate and polyvinylidene fluoride is selected so as to when the composition coats a surface, the coated surface resists charging against another material.
Claims 1, 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et
al. (US20160355675 Al) in view of Kolpikov et al. (RU2020144132-A), and as evidenced by Liang (CN1725547).
Zhang discloses a polymer material for eliminate charging on solid surfaces due to contact electrification ([0003]) wherein the polymer material comprises at least a first polymer and a second polymer, wherein the first polymer having a first rating on a triboelectric series and the second polymer having a second rating on a triboelectric series that is more negative than the first rating (claim l); and wherein the polymer material is non-conductive ([0052]). Zhang further teaches the first polymer includes polyvinyl acetate (claim 6). Zhang furthermore teaches the polymer material is prepared by mixing the first polymer and second polymer with its solvent in preparing ([0062]).
Moreover, Zhang teaches the second polymer includes polyacrylonitrile, polyethylene, polyvinyl chloride and the like ([0013]). The difference between Zhang and instant claims is that Zhang
does not explicitly teach that the second polymer is polyvinylidene fluoride.
However, Kolpikov teaches that polyvinylidene fluoride along with polyacrylonitrile,
polyethylene, polyvinyl chloride each being a compound of the negative end of the triboelectric series
(claim 2).
One ordinary skilled artisan in the field would have been motivated before the effective filing
date of instant application to use polyvinylidene fluoride as the second polymer of the non-conductive
polymer material of Zhang to obtain a modified polymer material because Kolpikov teaches polyvinylidene fluoride belonging to the same category of the triboelectric series as the second polymers disclosed by Zhang.
Moreover, Zhang teaches that the polymer material may contain the first polymer 15 to 85 wt.% ([0050]), overlapping with the claimed 40 to 85 wt.%.
Liang teaches a coating for electrode prepared by mixing a polymer and solvent and removing the solvent thereafter (claim 2),Liang exemplifies that the polymer is polyvinylidene fluoride and solvent is dimethylformamide (Example 3). Therefore, Liang provides evidence that dimethylformamide is a solvent for polyvinylidene fluoride, consequently, the modified polymer material can be prepared by mixing polyvinyl acetate, polyvinylidene fluoride and dimethylformamide.
Response to Arguments
Applicant’s arguments on the 35 USC 112 (a) rejection dated 12/04/2025 is moot because the rejection is withdrawn.
Applicant’s arguments on Krueger.
Applicant’s argument: Krueger discloses that the film formed by the PVAC and PVDF mixture is casted on aluminum foil. Based on results on stainless steel, non-charging effect is observed when the mixture contains about 75% of PVAC while the mixture of Krueger contains 40% of PVAC.
Examiner’s answer: firstly, aluminum foil is not stainless steel. Applicant did not provide evidence that if the mixture is applied to aluminum foil , non-charging effect needs the mixture contains about 75% of PVAC; secondly, the instant claim 1 broadly claims “applying a non-conductive coat to “a surface,” the instant claim 1 does not claim “a surface” being stainless steel. Therefore, “a surface” can be a surface of any material. The instant specification provides stainless steel surface needs PVAC being about 75 wt.% of the blend of PVAC and PVDF. Applicant has not provided the evidence that 40% of PVAC of a PVAC-PVDF mixture does not has an anti-charging effect when the mixture is applied to any material other than stainless steel.
Applicant’s argument: The process in Krueger is highly specific and requires heating the film to
high temperature of 220°C followed by rapid quenching in ice water, In contrast, the
presently claimed invention requires only at most moderate heat to remove the solvent and without requiring quenching or poling. Hence, the process in Krueger leads to a coating that is structurally different from the presently claimed invention and the characteristics of resisting charging against a contacting material cannot be said to be inherent.
Examiner’s answer: the argument is not persuasive because:
Firstly, the body of the instant claim 1 is not directed to a dried coating of the first polymer (PVAC) and the second polymer (PVDF), instead, the body of the instant claim 1 is directed to a composition comprising the PVAC and the PVDF and a solvent. Therefore, the claimed non-conductive polymer material is an intermediate composition of the dried coating of PVAC and PVDF. The mixture of PVAC and PVDF in dimethylformamide taught by Krueger is substantially identical to the claimed non-conductive polymer material. The intended use clauses in the preamble and claim body do not limit the scope of the instant claim 1. Therefore, the mixture taught by Krueger meets the scope of the instant Claim 1.
Secondly, Applicant states that the process of Krueger prevent crystallization (p9 last paragraph). An amorphous material inclines to resist contact charging.
Thirdly, even if the dried coating taught by Krueger could enable subsequent poling to create a piezoelectric effect, these needs using a strong electric effect to generate an electrical charge while the instant non-conductive polymer material is intended for resisting contact charging.
17. Applicant’s arguments on Zhang in view of Kolpikov
Applicant argued that Zhang does not disclose or suggest PVDF as the second polymer and Kolpikov does not identify specifically PVDF from among the other materials on the negative end of the triboelectric series to be compatible with PVAC in a fully dissolved physical blend suitable for coating a surface to eliminate generation of charge at source or fouling. The Applicant looked into the difference of each individual references from the instant application. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See MPEP § 2145(IV)." The reasons for combining of Zhang and Kolpikov have been discussed above. Additionally, Zhang teaches the polymers of the negative side of the triboelectric series being includes polyacrylonitrile, polyethylene, polyvinyl chloride and Kolpikov teaches that polyvinylidene fluoride along with polyacrylonitrile, polyethylene, polyvinyl chloride each being a compound of the negative end of the triboelectric series. Therefore, Kolpikov teaches that polyvinylidene fluoride is interchangeable with polyacrylonitrile, polyethylene, or polyvinyl chloride for applications using a compound of the negative end of the triboelectric series.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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