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 .
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 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.
Claims 58-64, 66-73, 75-89 are pending.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/31/26 has been entered.
Claim Rejections - 35 USC § 112(a)/first paragraph
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.
Claim(s) 58-64, 66, 68, 75-82, 84, 89 is/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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 58 and 76 each recite a hydroxyl pendant group covalently bonded to the backbone via a linking group, which is broader than the original disclosure because the original disclosure only provides hydroxyl pendant groups having a linking group as an R group of a silicon based pendant group (see, e.g., [0009] of the present PGPub) whereas the claims allow for a non-silicon based hydroxyl pendant groups connected via a linking group. There is support for hydroxyl “crosslinkable pendant” groups in [0067] of the present PGPub (i.e., without being part of a silicon pendant group), but these “crosslinkable pendant” groups are not disclosed as being connected to the backbone via a linking group as recited in claims 58 and 76 (claims 67 and 83, merely recite a hydroxyl pendant group, which is supported by the hydroxyl “crosslinkable pendant” groups in [0067] of the present PGPub, because claims 67 and 83 do not require that the hydroxyl pendant group is attached to the backbone via a linking group).
Claims 59, 66, 68, 75, 77, 82, 84, and 89 each recite a hydroxyethyl methacrylate monomer. As explained above, there is no support for a hydroxyethyl pendant group (crosslinking or otherwise) that is connected to the methacrylate backbone via an ethyl linking group unless the hydroxyl group is connected via a silicon atom (see, e.g., [0009] of the present PGPub).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same new matter issue(s) via their dependency.
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 58-64, 66-73, 75-89 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ayano (JP 2004-231758, provided by Applicant, see machine translation) in view of Yamauchi (U.S. 5,852,095).
Regarding claims 58-64, 66-73, 75-89, Ayano teaches an aqueous emulsion/dispersion coating for fabrics (page 18, page 20, disclosing organic solvents as well as water, page 21, disclosing surfactant, as in claims 67 and 83) to make the fabric water repellent and stain resistant, wherein the coating includes a copolymer formed by emulsion polymerization (page 13, inherently at a time and temperature to cause emulsion polymerization, as claimed) of triethoxysilyl propyl methacrylate (A) monomer (page 7, formula I, when R1 is methyl, R2 is C3 alkylene, and R3, R4, and R5 are each C2 alkoxy groups), tris(trimethylsiloxy)silyl propyl methacrylate (C) monomer (page 10, formula III, when R8 is methyl, R9 is C3 alkylene, X is formula IV, and R10 is each methyl), and hydroxyethyl methacrylate hydrophilic monomer (pages 12-13), as in claims 59-60, 66, 68-69, 75, 77-78, 82, 84-85, and 89. No other monomers are required (the (B) and (D) monomers are optional) and the ratio of tris(trialkylsiloxy)silane to alkoxysilane monomers is greater than 1 (pages 8-11) as in claims 62, 70, 80, and 86.
Ayano also discloses that each of the above monomers provides an effect on the composition (i.e., crosslinking and water repellent/antifouling for the A monomer, page 8, water repellency, smoothness, finish, and flaking suppression for the C monomer, page 11, and stable solubility for the hydrophilic monomer, page 12) such that the amount of these monomers would have been obvious to adjust, including to the values disclosed in the present specification, as part of optimizing these respective art-recognized result effective variables in the final copolymer of the composition.
The claim limitation regarding the emulsion/dispersion including polymer particles of a certain size is not disclosed in Ayano, however, Yamauchi is also directed to an aqueous emulsion for making fabrics water repellent and stain resistant (see abstract) based on a polymer with an acrylate backbone and silane pendant groups (col. 7, line 60-col. 8, line 20) and teaches that a suitable emulsion of such a polymer for application onto fabrics would have an emulsified polymer particle size of 10-1000nm, overlapping claims 61, 66, 71, 75, 79, 82, 87 and 89, (col. 13, lines 45-60) such that it would have been obvious to have used such a particle size in Ayano because Yamauchi teaches that such a particle size makes the polymer particles in the emulsion suitable for a coating for fabrics (as sought by Ayano).
Modified Yamauchi does not disclose the properties of claims 58, 63, 64, 67, 72, 73, 76, 81, 83, and 88, however, as explained above, modified Yamauchi renders obvious an emulsion/dispersion composition with a copolymer of overlapping particle size and overlapping type and amount of monomers compared to the present disclosure, such that these overlapping embodiment of modified Yamauchi would inherently have the same properties (as claimed) as the overlapped embodiments of the present disclosure.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787