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 1-8, 13, 15, 22-23, 31, 33-34, 37-38, 40, 42, 54 are pending.
Election/Restrictions
Applicant's election with traverse of Group I and the following species, claims 1-6, 8, 15, in the reply filed on 04/15/26 is acknowledged. The traversal is on the ground(s) that the reference cited in the 371 restriction did not have “the intention of creating a structure with boronic acid groups attached to cellulose” but the reference teaches all of the claimed subject matter via overlapping materials compared to the present claim 1 and it is maintained that the previously cited reference has teachings sufficient to render obvious claim 1 (with claim 1 being even more obvious in view of the references cited below).
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The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 7 (non-elected siloxane), 13 (non-elected cellulose material) and 22-23, 31, 33-34, 37-38, 40, 42, 54 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/15/26.
Claim Objection
Claim 8 recites a compound set forth in the specification. Where possible, claims are to be complete in themselves (See MPEP 2173.05(s)). It would appear remedial to recite the formula for compound 3 from Scheme 1 in [0029]-[0030] of the present PGPub.
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) 1-6, 8, 15, is/are rejected under 35 U.S.C. 103 as being unpatentable over Macphail (Controlling silicone-saccharide interfaces: greening silicones, 2017, provided by Applicant) in view of Carrillo (U.S. 2008/0209645).
Regarding claims 1-6, 8, 15, Macphail disclose that cellulose surfaces (e.g., “wood,” see introduction, page 4373, “modified cellulose,” Fig. 1) may be made hydrophobic (among other beneficial properties) by being treated with a silicone treatment and discloses that boronic acids efficiently bind to saccharides (see introduction) and further teaches that styryl-boronic acid (4 vinyl phenyl boronic acid) may be combined with SiH containing silicone oils (as in the elected species) to create such a treatment for bonding the silicone onto the cellulose (see results, page 4374, Fig. 2 and 3, disclosing the same Si-H pendant group containing poly methylhydro-dimethyl-siloxane and 4 vinyl phenyl boronic acid reactants as in Scheme 1 and claims 2-6 and 8, also see Fig. 5C, page 4376, and the conclusion in pages 4378-4379), with the tartrate protected group being removed in order to bond with the saccharide/cellulose such that the protective group in Macphail is not a patentable distinction with respect to the present claims because the particular reactants (i.e., whether they are protected during the reaction or not) is a product by process limitation that does not affect the final boronic acid siloxane polymer (once the protected groups are removed in Macphail) or the final cellulose containing article having the boronic acid siloxane polymer bonded thereto. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
In light of the overlap between the claimed article and that disclosed by Macphail, it would have been obvious to one of ordinary skill in the art to use a cellulose article treated with boronic acid siloxane that is both disclosed by Macphail and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Macphail does not disclose that the article is a garment. However, Carrillo is also directed to saccharide (e.g., cellulose/cotton, [0101], [0122], [0163]) articles treated with siloxane polymers for hydrophobic (amongst other) benefits and also teaches that boronic acid may be used as a crosslinker and also teaches that such a material may be useful for clothing/garments (as in the elected species and claim 15, see abstract, [0081]-[0085]) such that it would have been obvious to have used the technique of Macphail (i.e., treating cellulose with boronic acid siloxane) for the benefits disclosed by Maphail and Carrillo (e.g., hydrophobicity) to make a garment hydrophobic as taught by Carrillo (i.e., in order to apply the hydrophobic treatment to as many cellulose based articles that would benefit from such hydrophobicity).
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
Prosecution Insights