DETAILED ACTION
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 (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 § 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 4 7 9, 11, and 16-19 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.
Regarding claim 2: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation that the amount of monomer (I) is 30-90%, and the claim also recites “preferably 40-85%, more preferably 50-80%” which are the narrower statements of the range/limitation (see lines 1-3).
Similarly, note that claim 2 also recites both a broad range and narrower ranges for the for the amount of monomer (II) (see lines 4-5). The claim is therefore considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 4: Claim 4 recites both a broad range and a narrow range for each of variables m, p, and q (see the last two lines). The claim is therefore considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims (MPEP § 2173.05(c)).
Regarding claim 7: Claim 7 recites both a broad range and a narrow range for the amounts of both monomer (I) and monomer (II). The claim is therefore considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims (MPEP § 2173.05(c)).
Regarding claim 9 and its dependent claims: The phrase "preferably the organic solvent is one or more of….ether" renders the claim indefinite because it is unclear whether the claim is intended to require that the solvent is chosen from the recited list, or if they are merely examples. See MPEP § 2173.05(d).
Claims 16-19 ultimately depend from claim 9 and do not correct this deficiency. The claims are therefore rejected per the same rationale as claim 9.
Regarding claim 11: The phrase "preferably the treatment comprises surface coating treatment or soaking treatment" renders the claim indefinite because it is unclear whether the claim is intended to require one of the recited steps, or if they are merely examples. See MPEP § 2173.05(d).
Regarding claim 16 and its dependent claim: The phrase "preferably the treatment comprises surface coating treatment or soaking treatment" renders the claim indefinite because it is unclear whether the claim is intended to require one of the recited steps, or if they are merely examples. See MPEP § 2173.05(d).
Claim 17 depends from claim 16 and does not correct this deficiency. The claim is therefore indefinite per the same rationale as claim 16.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 depends from claim 1 and states that Z in the formula of monomer (I) is chosen from specific formulae. Note that independent claim 1 states that Z meets the following formula wherein 1 ≤ a ≤ 200.
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As written in claim 1, the silicon atoms are only present in Z. Furthermore, as the maximum value of a is 200 and R3 is not a silicon-containing group, the maximum number of silicon atoms in the main chain of the structure of Z is 201. In contrast, claim 4 states that m in the recited formulae may be equal to 200; note that this results in structures wherein the number of silicon atoms in the main chain is 202. Claim 4 therefore broadens the scope of the claimed invention to include structures wherein the siloxane chain is longer than that allowed by the independent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-10, 14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogura et al, JP2002105434.
A machine translation of Ogura was used to prepare this Action.
Ogura discloses an aqueous treatment agent, wherein said treatment agent comprises a copolymer prepared from a silicone-containing macromonomer, an amine-containing monomer, and an anionic vinyl monomer (¶0006-0007).
Example 11 discloses a copolymer prepared from Silaplane FM-0711, dimethylaminoethyl methacrylate, methacrylic acid, and methoxy(ethyleneoxy) methacrylate (EO = 23) (¶0027; Table 1).
Regarding claimed monomer (I):As noted above, the copolymer of Example 11 comprises FM-0711, which is reported to have the structure shown below wherein h is 2, j is 11 R1 is methyl, R2 is propylene group, and R3 is a butyl group (abstract, ¶0023).
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Note that this corresponds to the claimed monomer (I) when R1 is a C1 alkyl (for claims 1, 3), X is X-1 (for claim 1), n is 3 (for claim 1), a is 12 (for claim 1), Y1 and Y2 are both C1 alkyls (for claim 1), and R3 is either a C1 alkyl or a C4 alkyl (for claims 1, 3). Monomer FM-0711 therefore corresponds to the claimed monomer (I) (for claim 1).
Regarding claimed monomer (II): As noted above, the copolymer of Example 1 comprises dimethylaminoethyl methacrylate, corresponding to claimed monomer (II) (for claims 1, 5) wherein R3 and R4 are each C1 alkyl (for claim 3).
Regarding the amounts of monomers (I) and (II): The copolymer of Example 11 comprises 40 wt% of FM-0711 (for claims 2, 7), 35 wt% dimethylaminoethyl methacrylate (for claims 2, 7), and the sum of the amounts of methacrylic acid and methoxyethyleneoxy methacrylate is 25 wt% (for claims 7) (Table 1).
Regarding the other monomers: As noted above, the copolymer of Example 1 comprises a total of 25 wt% (for claims 7, 8) methacrylic acid, corresponding to claimed monomer (IV) (for clams 6, 8), and methoxyethyleneoxy methacrylate. Additionally, the methoxyethyleneoxy methacrylate corresponds to monomer (III) when R1 is a C1 methyl, G is G-1, n is 0, R2 is a C2 alkylene, q is 23, and R3 is a C1 alkyl (for claims 6, 8).
Regarding claims 9-10: The prior art copolymer was prepared via polymerization of the monomers in the organic solvent ethanol, corresponding to claimed step (1) (for claim 10). The prior art further teaches precipitating the polymer to separate it from the solvent (i.e., removing the solvent) and making an aqueous composition (i.e., adding water), corresponding to claimed step (2) (for claim 10) (¶0029, 0031). Note that the obtained product comprises the prior art polymer and water (i.e., a solvent) and therefore corresponds to the claimed treatment agent (for claim 9).
Regarding claims 14, 16-18: The prior art treatment agent is applied to the surface (for claim 16) of a substrate such as cloth (0005), corresponding to the claimed fabric (for claims 17, 18, 14).
Claim(s) 1-3, 5-11, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terabayashi et al, JP2003034784.
A machine translation of Terabayashi was used to prepare this Action.
Terabayashi discloses a surface treating agent for conferring water repellancy (¶0001), wherein said copolymer comprises a silicone macromer (A), an amine containing monomer (B), and a carboxy-containing monomer (C) (¶0008).
Synthesis example 4 (¶0029) discloses the production of a copolymer via polymerization of a monomer mixture comprising commercial monomer Silaplane FM-0711, dimethylaminoethyl methacrylate, methacrylic acid, and lauryl methacrylate.
Regarding claimed monomer (I): As noted above, the copolymer of example 4 comprises FM-0711. This corresponds to the claimed monomer (I) (for claims 1, 3) as discussed in paragraph 23 of this Action.
Regarding claimed monomer (II): As noted above, the copolymer of example 4 comprises dimethylaminoethyl methacrylate, which corresponds to claimed monomer (II) (for claims 1, 3, 5) as discussed in paragraph 24 of this Action.
Regarding the amounts of monomers (I) and (II): The prior art copolymer comprises 40% by weight of FM-0711 and 20% by weight dimethylaminoethyl methacrylate (Table 1) (for claims 2, 7).
Regarding claims 6, 8: The copolymer of example 4 comprises 20 wt% (for claims 7, 8) of methacrylic acid, corresponding to claimed monomer (IV) (for claims 6, 8).
Regarding claim 9: The prior art discloses that the copolymer is dissolved in an organic solvent such as ethanol to form the treating agent (¶0025), corresponding to the claimed surface treatment agent.
Regarding claim 10: Polymerization of the monomers in example 4 was performed in ethanol, corresponding to claimed step (1). Note that claimed steps (2)-(4) are stated to be optional and therefore not required. The polymerization step in the prior art example therefore corresponds to the claimed process.
Regarding claims 11, 14-19: Terabayashi teaches that that the prior art treating agent is coated onto the surface (for claims 11, 16)of the substrate (0028). Terabayashi teaches that the prior art treating agent can be used on paper (for claims 14, 15, 17-19) (¶0001).
Claim(s) 1-3, 5-11, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jiang et al, CN115521403.
The examiner notes that Jiang et al, EP4600281, has been used as an equivalent English translation of CN115521403 for the preparation of this Action.
Example 1 (¶0085-0086) discloses the production of a copolymer from a monomer composition comprising monomer Si-B3, dimethylaminopropyl methacrylamide (DN), and 2-hydroxyethyl methacrylate (HEMA).
Regarding monomer (I): Monomer Si-B3 has the structure shown below (Table 1).
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Note that this corresponds to claimed monomer (I) (for claim 1) wherein R1 is a C1 alkyl group (i.e., methyl) (for claims 1, 3), X is X-1 (for claim 1), n is 3 (for claim 1), a is 1 (for claims 1, 3), Y1 and Y2 are both the silicon-containing group (for claim 1), b is 0 (for claims 1, 3), each R8 is a C1 alkyl group (for claims 1, 3), and each R3 is a C1 alkyl group (for claims 1, 3).
Regarding monomer (II): As noted above, the prior art copolymer comprises dimethylaminopropyl methacrylamide (¶0085; Table 1), corresponding to claimed monomer (II) (for claims 1, 5) wherein R3 and R4 are both C1 alkyl groups (for claim 3).
Regarding the amounts of monomers (I) and (II): The prior art monomer mixture comprises 76 g SI-B3, 25 g dimethylaminopropyl methacrylamide, and 8 parts 2-hydroxyethyl methacrylate. It is therefore calculated that the copolymer comprises about 69.7% Si-B3 (for claims 2, 7) and about 22.9% dimethylaminopropyl methacrylamide (for claims 2, 7).
Regarding claim 4: Example 5 (0099, Table 3) discloses a copolymer made via substantially the same process as Example 1 using monomer Si-B2 in lieu of Si-B3
Regarding claims 6, 8: The prior art copolymer comprises 2-hydroxyethyl methacrylate, corresponding to claimed monomer (III) (for claims 6, 8). Based on the amounts of each monomer (see the previous paragraph), the amount of 2-hydroxyethyl methacrylate is about 7.3% (for claims 7, 8).
Regarding claim 9: The copolymer produced in example 1 is made into an aqueous dispersion (¶0086), corresponding to the claimed treatment agent comprising the polymer and a solvent which is water.
Regarding claim 10: Example 1 discloses a process wherein the monomers are polymerized in the solvent methyl ethyl ketone, corresponding to step (1); followed by addition of water and removal of the methyl ethyl ketone, corresponding to claimed step (2).
Regarding claims 11, 14-19: Jiang teaches that the product of example 1 was applied to the surface (for claims 11, 16) of paper (for claims 14, 15, 17-19) as a treating agent (for claims 11, 16).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim Rejections - 35 USC § 103
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 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ogura et al, JP2002105434.
The disclosure of Ogura is discussed earlier in this Action, incorporated here by reference. Briefly, Ogura discloses a surface treatment agent comprising a silicone-containing macromonomer, an amine-containing monomer, and an anionic vinyl monomer (¶0006-0007), wherein said silicone-containing macromonomer has the structure shown below, corresponding to monomer (I).
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Note that R3 in the structure above may be a C1 to 30 aliphatic group; note that this reads on a C1 alkyl (i.e., a methyl group) (¶0014), corresponding to claimed monomer (I) when Z is claimed structure i-1 (for claim 4).
Ogura does not specifically disclose the production of a copolymer wherein the silicone-containing macromonomer has a silicone moiety satisfying one of the recited structures.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). As taught by Ogura, silicone-containing macromonomers having the required structure were known in the art to be suitable monomers for use in the production of the coating agent of JP2002105434. Barring a showing of evidence demonstrating unexpected results, it therefor would have been obvious before the effective filing date to prepare a copolymer comprising a silicone-containing macromonomer having the required structure, with the reasonable expectation of obtaining a final copolymer that could be used as a surface treatment agent as taught by Ogura.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Terabayashi et al, JP2003034784.
As discussed earlier in this Action, incorporated here by reference, Terabayashi discloses a surface treating agent for conferring water repellancy (¶0001), wherein said copolymer comprises a silicone macromer (A), an amine containing monomer (B), and a carboxy-containing monomer (C) (¶0008).
Said silicone macromomer (A) has the formula shown below, wherein R3 may be a C1 to C30 aliphatic group (¶0012); note that this reads on a C1 alkyl (i.e., methyl group) corresponding to claimed monomer (I) when Z is claimed structure i-1 (for claim 4).
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Terabayashi does not specifically disclose the production of a copolymer wherein the silicone-containing macromonomer has a silicone moiety satisfying one of the recited structures.
As taught by Terabayashi, silicone-containing macromonomers having the required structure were known in the art to be suitable monomers for use in the production of the copolymer of JP2003034784. Barring a showing of evidence demonstrating unexpected results, it therefor would have been obvious before the effective filing date to prepare a copolymer comprising a silicone-containing macromonomer having the required structure, with the reasonable expectation of obtaining a final copolymer that could be used as a surface treatment agent as taught by Terabayashi; see Sinclair & Carroll Co. v. Interchemical Corp. cited earlier in this Action.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al, CN115521403
As discussed earlier in this Action, Jiang discloses a copolymer used as a paper treating agent, wherein said copolymer comprises a silicone-containing macromonomer. Said silicon-containing macromonomer has the structure CH2=C(R1)-X-B-Z1 wherein R1 is hydrogen or C1 to C20 alkyl, X can be -C(O)-O-, B is a C1 to C2 alkylene, and Z1 is a siloxane group (¶0007). Further note that Jiang teaches that Z1 may have the structure shown below (0025), corresponding to claimed structure ii-1 (for claim 4)
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Jiang does not specifically disclose the production of a copolymer wherein the silicone-containing macromonomer has a silicone moiety satisfying one of the recited structures.
As taught by Jiang, silicone-containing macromonomers having the required structure were known in the art to be suitable monomers for use in the production of the prior art copolymer. Barring a showing of evidence demonstrating unexpected results, it therefor would have been obvious before the effective filing date to prepare a copolymer comprising a silicone-containing macromonomer having the required structure, with the reasonable expectation of obtaining a final copolymer that could be used as a surface treatment agent as taught by Jiang; see Sinclair & Carroll Co. v. Interchemical Corp. cited earlier in this Action.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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 1-11 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-9, 11-13, 15, and 16 of copending Application No. 19/117,526 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claim 1 recites an organosilicon polymer (for claim 1) comprising monomers (I) and (II).
Regarding monomer (I): Monomer (I) of the copending claim has the formula CH2=C(R1)-X-B-Z1,wherein R1 can be hydrogen (for claim 1), the combination of -X-B- can be -C(O)-O-B with B being a X1-C20 alkylene, corresponding to X-1 (for claim 1), and Z1 having the same structure as claimed variable Z. Monomer (I) of the copending claims therefore corresponds to claimed monomer (I) (for claim 1).
Regarding monomer (II): Monomer (II) of the copending claims has the formula CH2=C(R1)-C(O)-NR2-B-NR3R4. Note that the substructure -C(O)-NR2-B- corresponds to claimed P-2. Monomer (II) of the copending claims therefore corresponds to claimed monomer (II) wherein R1 and R2 can be hydrogen or C1-C20 alkyl, n is 1-20, and R3 and R4 can be hydrogen (for claim 1).
Regarding claims 2-11 and 14-19: Copending claims 4-9, 11-13, 15, and 16 recite limitations that overlap the claimed inventions.
It is clear that all the elements of the instant claims are found in the copending claims. The difference between the instant claims and the copending claims lies in the fact that the copending claim includes the additional element of silicon monomer I-2 and is thus much more specific. Thus the invention of the copending claims is in effect a “species” of the “generic” invention of the instant claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the instant claims are anticipated by the copending claims, they are not patentably distinct from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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