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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 1/9/2026 is acknowledged. Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by JP 2020007681 to Nitta or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2020007681 to Nitta in view of USPAP 2020/0291257 to Yamaguchi and/or USPN 6,379,394 to Chilou.
Claim 1, Nitta discloses a water-repellent composition comprising: a hydrocarbon-based water-repellent resin having a hydrocarbon group having 5 to 40 carbon atoms; and a silica hydrophilic particle present in an amount of 1 to 15 wt% and having an average primary particle size of 10 to 15 nm and a M value of zero (see entire translation document including the abstract, components A and B, anti-slip agent, and Examples 19 and 20). Considering that Nitta discloses a substantially identical composition, including a substantially identical hydrophilic particle, the claimed properties appear to be inherent. In the event that it is shown that Nitta alone does not disclose the claimed embodiment with sufficient specificity, the invention is obvious because Yamaguchi and Chilou also disclose that the claimed constituents are known in the repellent art (see entire documents including [0042]-[0062], [0232]-[0245] and [0276]-[0299] of Yamaguchi and column 2, lines 26-31 and column 8, line 60 through column 9, line 4 of Chilou).
The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claim 2, the composition comprises at least one selected from the group consisting of an organic acid, a surfactant, and an organic solvent (see surfactant section).
Claims 3 and 9, an amount of the hydrophilic particle is 2% by weight or more and 12% by weight or less based on a total amount of the hydrocarbon-based water-repellent resin and the hydrophilic particle (see anti-slip agent section).
Claim 4, the hydrophilic particle has an average primary particle size of less than 40 nm (see Examples 19 and 20).
Claim 5, the hydrophilic particle is an inorganic particle (see anti-slip agent section and Examples 19 and 20).
Claims 6 and 9, the hydrophilic particle is at least one selected from the group consisting of silica and alumina (see anti-slip agent section and Examples 19 and 20).
Claim 7, the composition comprises at least one selected from the group consisting of silicone and wax (see B2 section and surface treating agent section).
Claim 8, the hydrocarbon-based water-repellent resin is a polymer having a repeating unit derived from a monomer represented by the claimed formula (see component A and component B sections).
Claim 9, the hydrocarbon-based water-repellent resin has an alkyl group having 10 to 30 carbon atoms (see component A and component B sections).
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by USPAP 2020/0291257 to Yamaguchi or, in the alternative, under 35 U.S.C. 103 as obvious over USPAP 2020/0291257 to Yamaguchi in view of JP 2020007681 to Nitta and/or USPN 6,379,394 to Chilou.
Claim 1, Yamaguchi discloses a water-repellent composition comprising: a hydrocarbon-based water-repellent resin having a hydrocarbon group having 5 to 40 carbon atoms; and a silica hydrophilic particle having an average particle size of 5 to 300 nm (see entire translation document including [0042]-[0062], [0237], [0242]-[0245] and [0276]-[0299]). Considering that Yamaguchi discloses a substantially identical composition, including a substantially identical hydrophilic particle, the claimed properties appear to be inherent. In the event that it is shown that Yamaguchi alone does not disclose the claimed embodiment with sufficient specificity, the invention is obvious because Nitta and Chilou also disclose that the claimed constituents are known in the repellent art (see entire documents including the abstract, components A and B, anti-slip agent, and Examples 19 and 20 of Nitta and column 2, lines 26-31 and column 8, line 60 through column 9, line 4 of Chilou).
The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claim 2, the composition comprises at least one selected from the group consisting of an organic acid, a surfactant, and an organic solvent [0229].
Claims 3 and 9, an amount of the hydrophilic particle is 2% by weight or more and 12% by weight or less based on a total amount of the hydrocarbon-based water-repellent resin and the hydrophilic particle ([0448]-[0450]).
Claim 4, the hydrophilic particle has an average primary particle size of less than 40 nm [0245].
Claim 5, the hydrophilic particle is an inorganic particle [0242].
Claims 6 and 9, the hydrophilic particle is at least one selected from the group consisting of silica and alumina [0242].
Claim 7, Yamaguchi does not appear to mention the composition comprising wax but Chilou discloses that it is known in the art to include wax to suppress foaming (column 8, lines 60-67). Therefore, it would have been obvious to one having ordinary skill in the art to include wax in the composition of Yamaguchi to suppress foaming.
Claims 8 and 9, the hydrocarbon-based water-repellent resin is a polymer having a repeating unit derived from a monomer represented by the claimed formula and comprising an alkyl group having 10 to 30 carbon ([0043]-[0062]). Plus, Nitto discloses that it is known in the art to use the claimed hydrocarbon-based water-repellent resin (see component A and component B sections). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the resin polymer from any suitable resin polymer material, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
Prosecution Insights