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 67-73, 83-88, 90-102 are pending.
Response to Amendment
Applicant’s amendment of 08/06/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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) 67-73, 83-88, 90-102 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 67-73, 83-88, 90-102, 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 68-69, 84-85, 89, 91-92, 98-99. No other monomers or unclaimed ingredients are required in the reaction mixture (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 70, 86, 93, 100, and consistent with the consisting of limitation of claims 90 and 97.
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 71, 87, 94, 101 (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 67, 72, 73, 83, 88, 90, 95-97, 102, 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.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
The previous 112 rejections are withdrawn due to Applicant’s amendment.
Applicant also requests clarification regarding the paragraph or page citations in the rejection and the Examiner confirms that the rejection properly makes page citations because that was the easiest way to cite to the machine translation that the Examiner was able to obtain at the time of writing the rejection (the paragraph numbers in the machine translation were not formatted properly in the machine translation obtained by the Examiner and included with the last office action). To maintain consistency of the record for this final rejection, the page number citations are maintained.
Applicant argues against the rejection based on Ayano on the grounds that Ayano requires that the copolymer is dissolved in the aqueous solution, and that crosslinking should be prevented until the composition is applied to the final substrate, such that making the copolymer into particles would not be obvious (from Yamauchi) because such particles would either dissolve or cause premature crosslinking. This is not persuasive.
First, Ayano already discloses that the copolymer may form a stable emulsion and may be formed by emulsion polymerization (Applicant argues that this is merely one option from amongst a list, but the list is not nearly as long as would make the emulsion embodiment non-obvious). While Applicant appears to focus on the solution polymerization embodiment (even if in the examples, Ayano is not limited to this embodiment), the emulsion polymerization (and the resulting emulsion) would already necessarily result in a dispersed copolymer phase (i.e., particles) in Ayano and Yamauchi is therefore merely cited for the desired size of such particles/disperse phase in the emulsion already taught by Ayano.
Second, and more to the point, the fact that Ayano discloses an emulsion shows that particles are not outside the scope of the Ayano (contrary to Applicant’s remarks). Applicant appears to argue that the prevention of crosslinking requires that the copolymer is dissolved, but Ayano explicitly teaches that the copolymer may be in an emulsion which makes sense in the context of discussion a “stable” formulation (i.e., a stable emulsion that does not separate) and also shows that particles do not and would not result in premature crosslinking.
This is contrary to Applicant’s remarks that “the concentration of particles would result in premature crosslinking.” There is nothing about forming a stable aqueous emulsion of a copolymer (i.e., an emulsion of copolymer particles), as taught by Ayano, that requires a certain concentration, let alone a concentration that results in crosslinking. Modifying Ayano based on Yamauchi to provide a certain size of copolymer particles in the emulsion (not for forming an emulsion in general, since that it already taught by Ayano) also does not require a particular concentration, let alone one that would result in premature crosslinking. As discussed in Ayano, the crosslinking of the copolymer occurs when the formulation is applied to a substrate and the medium (water) evaporates causing the copolymer to crosslink and form a coating. Nothing about an emulsion polymerized copolymer negates or precludes this mechanism (i.e., a stable emulsion could similarly be formed, coated onto a substrate, and then crosslinked by drying, as confirmed by Ayano disclosing that the formulation may be an emulsion).
It is unclear if Applicant is conflating the formation of the copolymer with the crosslinking of the copolymer after being applied to the substrate. It is clear from the prior art that such copolymer particles can be formed into an emulsion and still be un-crosslinked (such that they may later be crosslinked after application onto the substrate). This is clear from Ayano disclosing that the copolymer (which is later crosslinked after coating onto the substrate) maybe formed by emulsion polymerization. Ayano would not suggest emulsion polymerization of the monomers if doing so would make them crosslink prematurely within the formulation.
Applicant then argues that the copolymer must remain soluble and not precipitate in Ayano. Again, this appears to be referring to only the solution polymerization embodiment of Ayano and ignores the emulsion polymerization. Furthermore, an emulsion would not be considered the precipitation that Ayano is discussing in the cited portion. The emulsion is a stable dispersion of the copolymer in the aqueous medium, and would only “precipitate” if the stability of the emulsion was compromised and the two phases of the emulsion separate (which would break the emulsion). This is also consistent with Ayano disclosing that the copolymer may be in an emulsion and may be formed by emulsion polymerization.
Applicant argues that Yamauchi does not provide a reason for preferring the disclosed particle size, but the preference alone is sufficient motivation given that Ayano already discloses that the copolymer may be an emulsion and Yamauchi provides that size as being suitable (even preferred) for forming a copolymer emulsion that is used in the same way as sought by Ayano (i.e., an emulsion for making fabrics water repellent and stain resistant).
Applicant argues that Ayano only discloses surfactant as optional but this is sufficient to render obvious the claimed inclusion of surfactant in the dependent claims.
Applicant argues that there is no indication that the optimization of the amount of monomers would result in the particular claimed monomers and the inclusion of surfactant. However, the optimization rationale was only used for the amount of monomers (and it is a proper rationale based on art-recognized effects ascribed to each monomer). The type of monomers and inclusion of surfactant is disclosed by Ayano via overlapping chemical structure and explicit disclosure, respectively (i.e., not “optimization”). It is maintained that Ayano in view of Yamauchi render obvious the type and amount of ingredients that would inherently have the claimed properties.
Applicant then argues that Ayano teaches away from precluding the B monomer on the grounds that doing so results in stickiness, however, Ayano does not indicate that the stickiness is a completely undesirable outcome and clearly indicates that the B monomer “may” be included (i.e., is optional, see page 9) such that whatever level of stickiness may result from omitting the B monomer is clearly within the scope of Ayano because the B monomer is explicitly disclosed as optional.
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 extension fee 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 date of this final action.
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.
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, 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).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights