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 .
Applicant's submission filed on 5/4/26 has been entered. Claims 30, 32-34, and 39-42 are pending examination, claims 1-29, 31, and 35-38 were canceled, and claims 43-48 are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 30, 32-34, and 39-42 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Step b) of Claim 30 has been amended to recite: “to obtain a fabric comprising a bonding layer, wherein step (b) further comprises a maturation step of 16H to 18H at 50% relative humidity”. The closest basis for such an amendment appears to stem from original claim 31 and [0029] of Applicant’s original disclosure. But, both of which describe the “maturing” as applied to “the material obtained in step d)”, wherein step d) is directed to impregnation with hydrophobic / omniphobic sol-gel formulation, not the material of step a). The examiner further notes various embodiments of examples 5-6 further have only described such a maturing step as occurring following step d), not step a). Therefore the original disclosure does not adequately support performing the maturing step as part of step b).
The other dependent claims do not cure the defects of the claims from which they depend.
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 30, 32-34, and 39-42 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 30 now recites the limitation "wherein said at least one step of impregnation is performed in at least two successive cycles and includes performing a squeezing step under pressure following impregnation;” which renders the claim indefinite with respect to the intended scope. First, claim 30 prior has only recited “at least one cycle of impregnation”, not “at least one step”. For purposes of examination the latter is interpreted as at least inclusive of referencing the former. Second, it is indefinite by the phrasing as to the particular steps that are required and the particular sequence; for example is the claim intending to require at least one repetition of impregnation and upon conclusion of all impregnation the squeezing step is performed (so something like: impregnation – impregnation – squeeze), or is the intention that squeezing follows each and every performed impregnation so a step with two impregnations (so something like: impregnation – squeeze – impregnation – squeeze); or is the intention something different entirely? For purposes of examination this limitation will be interpreted as at least inclusive of any such scenario.
The other dependent claims do not cure the defects of the claims from which they depend.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 30, 34, and 39-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Curran et al (US 2017/0314189; hereafter Curran) in view of Chang et al (WO 02/02862; hereafter Chang), and Curran et al (US 2014/0342098; hereafter Curran098).
Claim 30: Curran teaches a process for coating a fabric (see, for example, abstract, [0003], [0011-0014)) said process comprising the following steps:
a) at least one cycle of impregnating the fabric with a first sol-gel bonding formulation comprising a first precursor of TEOS or TMOS (as base chemical reagent) and a second precursor of GPTMOS or GPTEOS (as bonding agent) (See, for example, [0027],[0030] and [0075-0076] (where particular combinations of the two are used)), said sol-gel bonding formulation comprising and stabilized by acid (such HCl) and being free of polycarboxylic acid (see, for example, abstract, [0006], [0043], [0046], “first stage” in examples, claim 1);
Curran further teaches wherein steps a) and / or c) comprises a squeezing step under pressure after the or each impregnation cycle (see, for example, [0043]. [0045]; wherein treatment is taught to be performed by padding which by design involves application of pressure, as the method proceeds for a finite duration, the claimed at least two successive cycles of “impregnation” can be interpreted as occurring at least at the front end of the padding process (first impregnation at some finite duration prior to the second) and the squeezing under pressure step as occurring at least following the total “impregnation” duration.). Alternatively, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at least two successive cycles of impregnation and squeezing since such repetition would predictably provide for an augmentation of the degree of impregnation and greater control of material applied to the textile, and since repetition of a taught step is an obvious outcome (It is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.)
b) at least one cycle of drying the impregnated fabric obtained in step a (see, for example, [0043], examples, claim 1);
c) at least one cycle of impregnating the dried fabric obtained in step b) with a hydrophobic sol-gel formulation comprising acid, (See, for example, [0038-40], [0045-46] “second stage” in various examples),
d) at least one cycle of drying the impregnated fabric obtained in step c) to obtain hydrophobic fabric (see, for example, abstract, [0007], [0043], examples).
Curran teaches wherein the sol-gel bonding formulation and hydrophobic sol-gel formulation comprises acid (see, for example, examples; wherein the former is prepared under acidic conditions, further to pH, further with HCl; and the latter preparation and mixing thereof is taught to proceed under acidic condition, further pH<1, and further HCl). Curran does not explicitly teach wherein the acid for each of these formulations is sulfamic acid. Chang teaches a method of textile treatment (See, for example, abstract, pg 6 lines 1-12). Chang further teaches wherein the treatment composition comprises at least organosilicon compounds to impart soil, and further water repellency (See, for example, abstract, pg 23 line 13-pg 24 line 30). Chang similarly uses acid to enhance mixing and maximized exhaustion of the treatment materials to the fibrous substrate, and notes that sulfamic acid is such an acid to predictably perform this purpose, while providing additional benefits of being inexpensive and a strong acid (see, for example, pg 6 lines 1-5). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated sulfamic acid as the acid in each of the formulations since it is inexpensive, is strong, and would predictably achieve the intended purpose of enhance mixing and maximizing exhaustion of the treatment materials to the fibrous substrate.
Curran in view of Chang teach the method above including wherein Curran has further taught preparing samples for multiple coatings and testing of resulting properties of its treated textiles (See, for example, [0048-53, and examples), but they do not explicitly teach wherein at least one drying cycle b) includes maturing the material obtained in step a) at a relative humidity of 50% for 16H to 18H. Curran098 teaches a method of coating a fabric with a waterproof coating (See, for example, abstract). Curran098 further teaches wherein humidity influences the curing behavior of the treatment formulations; as well as teach of storage of materials both before and after coating under conditions of 25+/- 10oC, and 50% relative humidity for assimilation and between coating operations (See, for example, [0043-44], [0049], [0063], [0065], [0067]). Curran098 additionally teaches wherein prior to application of hydrophobic sol, the bonding sol treated sample should be held at conditions of 25+/- 10oC, and 50% relative humidity for at least 30 minutes and separately for 18hrs to allow for a consistent basis for comparison testing between the various treated samples (See, for example, [0063], [0070]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated wherein at least one drying cycle b) includes a maturing step at at least 30 minutes at 50% relative humidity since storage and drying under such conditions is known and predictable in the prior art to achieve the intended waterproof coated textile sample, and / or for 18 hr since such conditions would account for moisture content deviations by providing a consistent basis for comparison between treated samples and/ or untreated samples and/ or to counter deviations in the surrounding environment. Additionally / alternatively although “at least 30 minutes” is not explicitly 16-18hrs, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated such a duration since 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, 191USPQ 90 (CCPA 1976).
Claim 34: Curran further teaches wherein each of the impregnation steps is independently performed by padding or spraying (See, for example, [0043], [0045]).
Claim 39: Curran further teaches wherein the sol-gel bonding formulation is free of zirconium alkoxide and/or sodium hypophosphite (see, for example, examples).
Claim 40: As presently presented, the limitations of claim 40 only conditionally limit claim 30, as it only further limits one of two alternatively recited sol-gel formulations. Thus the reliance upon and teaching of Curran to the hydrophobic sol-gel formulation species would satisfy the present claim scope of claim 40 which only further limits the alternative omniphobic sol-gel formulation.
Claim 41: Curran further teaches wherein the hydrophobic sol-gel formulation comprises at least one silylated precursor chosen from, n-octadecyltriethoxysilane (ODTEOS) (triethoxyoctadecylsilane), n-decyltriethoxysilane (DTEOS) (triethoxydecylsilane) and dodecyltriethoxysilane (DDTEOS) (triethoxydodecylsilane), or a mixture of one or more of these precursors with tetraethoxysilane (TEOS) (tetraethyl orthosilicate) (See, for example, [0027-28] and examples).
Claim 42: Curran further teaches . wherein the sol-gel bonding, and/or hydrophobic formulation is an aqueous formulation and optionally further methanol (see, for example, [0035-40], examples).
Claim(s) 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Curran in view of Chang and Curran098 as applied to claim 30 above, and further in view of Gresham (US 3,734,687; hereafter Gresham).
Claim 32: Curran in view of Chang and Curran098 teach the method of claim 30 (above) including wherein Curran had taught treatment with acidic repellant compositions followed by drying (See, for example, examples XVI-XX) , but it does not explicitly teach the process further comprises: e) washing the impregnated fabric obtained in step d) with a neutralizing aqueous solution. f) drying the material obtained in step e). Gresham teaches a method of coating a fabric (See, for example, abstract). Gresham further teaches wherein textile treatment with such acidic compositions can result in residual acidic material thereon, and wherein the treated and dried textiles should desirably be washed in a mildly alkaline aqueous solution to remove residual acidic material and then dried (See, for example, col 3 lines 43-62). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated e) washing the impregnated fabric obtained in step d) with a neutralizing aqueous solution and f) drying the material obtained in step e) since such steps are conventionally known in the textile treatment art to predictably remove residual acidic material.
Claim 33: Curran098 further teaches wherein prior to testing , treated and untreated sample should be held at room temperature conditions of 25+/- 10oC, and 50% relative humidity for 18 hrs to allow for a consistent basis for comparison between the treated samples. (See, for example, [0043-44], [0049], [0063], [0065], [0067]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated wherein at least one drying cycle is followed by a step f′) of maturing the material obtained in step f) by storage at room temperature under a humid atmosphere with a relative humidity of 50% for 18hrs since storage and drying under such conditions is known and predictable in the prior art to achieve the intended waterproof coated textile sample, and / or since such conditions would account for moisture content deviations by providing a consistent basis for comparison between treated samples and/ or untreated samples and/ or to counter deviations in the surrounding environment.
Response to Arguments
Applicant’s amendments, filed 5/4/26, with respect to the previously applied 35 USC 103 rejections over Hennige in view of Chang have been fully considered and are persuasive as neither suitably taught wherein said at least one step of impregnation is performed in at least two successive cycles and includes performing a squeezing step under pressure following impregnation; therefore this rejection has been withdrawn.
Applicant's remaining arguments filed 5/4/26 have been fully considered but they are not persuasive.
Applicant’s arguments (section “1.” pg 10) that Curran and Chang do not teach the newly added limitations directed to the maturation step are unconvincing in view of newly-incorporated Curran098 as discussed in the rejections above.
In response to applicant's arguments (section “1.” pg 10) against the references individually (Curran does not teach sulfamic acid), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is over a combination of references, not Curran alone; therefore Curran is not solely responsible for teaching sulfamic acid. As described previously and herein, combined secondary reference Chang has taught the argued sulfamic acid.
With respect to Applicant’ arguments (section “2.” pg 10-13, and particularly relevant to “commensurability achieved” section) directed to unexpected results particularly pertaining to the amended content of 16H-18H maturation at 50% RH, the examiner asserts that per MPEP 716.02(d); “the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." As noted in the 35 USC 112 (a) rejection above, the particular timing of performing the claimed maturation does not appear to align with the original disclosure, nor the argued exemplary embodiments (such as P(13)f-P(17)f). None of the exemplary embodiments appear to perform the maturation process between the two impregnation steps (a) and (c), but rather appear to perform it following the omniphobic/ hydrophobic impregnation (c) and drying (d). Additionally the maturation is particularly performed at room temperature, the presently claimed range fails to recite any temperature. Further, as presently presented, claim 30 requires at least a fabric, “a sol-gel bonding formulation” with one of TEOS / TMOS and GPTMOS / GPTEOS, sulfamic acid, and is free of polycarboxylic acid, and an onmiphobic or hydrophobic sol-gel formulation, and undergoing preparation, impregnation and drying steps as claimed and unconfined by duration, temperature, pressure, force, atmosphere, speed, etc. Whereas the “unexpected” exemplary embodiments (which applicant appears to narrow to “P(13)F through P(17)F” appear directed to a specific solgel bonding formulation chemistry (Sol 6)acc of TEOS with GPTEOS, ethanol and water prepared at a particular ratio, and conditions, the second impregnation is only of omniphobic formulations (sol 3 /5/8)omni prepared with EtOH, 17FTEOS, and HCL or sulfamic acid prepared at particular ratios, and conditions. The textiles only being cotton or kermal/ lenzing 50/50 of particular chemistries, structures, and densities. There is no adequate basis for reasonably concluding that the great number and variety of essentially infinite combinations of chemistries of compositions / materials / conditions included in the claims would behave in the same manner as the limited and specific combinations tested (MPEP 716.02(d)). In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Particularly with respect to argued “success zone”, “functional cliff” refer to the above with respect to non-commensurate in scope. Additionally the examiner notes that P18F and P19F each appear to have been performed with the argued sulfamic acid and had their omniphobic sol matured at 16-18H at 50% relative humidity just like samples P13F – P17F; however they did not apparently achieve the same result, thus not supportive of Applicant’s claims to unexpected results.
With respect to “evidence of procedural criticality (P(9)f)” applicant asserts that it “utilizes the correct chemistry but replaces the maturation step…” The examiner disagrees and notes that P(9)F is taught to use Sol 3 acc which corresponds to a sol without acid, therefore it is not the “correct chemistry”. The examiner again notes that P18F and P19F each appear to have been performed with the “correct chemistry” of sulfamic acid and had their omniphobic sol matured at the “correct” 16-18H at 50% relative humidity conditions as samples P13F – P17F; however they did not apparently achieve the same result, thus not supportive of Applicant’s claims to unexpected results.
With respect to “Chemical Criticality (Example 1)” the embodiments therein appear to only compare sols stabilized with sulfamic acid vs sols without any acid. Curran has taught its sol formulations possess an acid, therefore applicants comparison of sulfamic acid sols outperforming sols without any acid at all are not adequately comparative and are not convincing.
With respect to “Structural Verification”, the Applicant only appears to provide a visualization of the preferred embodiment. Then argues that “Mineral acids (like HCL in Curran) lead to rapid gelling that prevent the formation of this durable architecture, a fact that would be immediate apparent upon SEM inspection”. The examiner does not accept Applicant’s statement and asserts that arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). As SEM images of such an alternative HCl system have not similarly been provided by Applicant, there is insufficient evidence to provide a suitable comparison, and thus the argument is not convincing.
In response to applicant's arguments (pg 12) that Chang “fails to teach or suggest the acid’s function as a kinetic stabilizer for sol-monomers to prevent premature condensation”, and that Chang does not explicitly teach it to “solve the specific problem of industrial -scale pot life stability” the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation is found in the references themselves as Chang has demonstrated that sulfamic acid is inexpensive, strong, and predictably achieves both enhanced mixing and maximizing exhaustion of the treatment materials to the fibrous substrate. The examiner additionally notes that per MPEP 2131.02 II.: “A reasonable expectation of success exists from choosing the specific taught species from explicitly taught lists. Further when the species is clearly named, the species claim is anticipated (rendered obvious) no matter how many other species are additionally named. Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). And, where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967). As Chang has explicitly taught sulfamic acid as a suitable acid the Examiner maintains that reliance upon said sulfamic acid is apt.
With respect to Applicant’s arguments (pg 12-13) directed at Curran089, the examiner notes the above response to various claims of unexpected results. With respect to “metrology vs synthesis” the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally as described in the rejection above, Curran’089 not only has taught such humidity treatment prior to testing but further has explicitly taught it between impregnations.
Applicant’s arguments with respect to Shah and Hennige have been considered but are moot because the present grounds of rejection do not rely on either of these references 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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/ Primary Examiner, Art Unit 1712
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