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 .
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) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oda (JP 2019-196446). As the JP reference is not in English, citations are made to the attached translation.
Oda teaches an example where a polymer of isobutyl methacrylate and monomer A1 (¶ 64-77) where monomer A1 has the structure
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92
328
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where R1 is CH3, x is 0, R2 is butyl and Y1 is
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82
278
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(Table 1, ¶ 56). This corresponds the claimed formula (1) of monomer (a) when R1 is methyl, x is 0, Y1 is claimed formula (3), and R2 is butyl.
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588
1063
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Oda does not provide an example where claimed R2 is an alkyl having 12-24 carbon atoms. However, Ota teaches R2 can have 1-18 carbon atoms (¶ 16) and that examples of alkyl groups include dodecyl and stearyl groups (¶ 16) which meet the claimed range of 12-24 carbon atoms.
Oda teaches a genus of methyl, ethyl, propyl, isopropyl, n-butyl, iso-butyl, tert-butyl, n-hexyl, n-octyl, 2-ethylhexyl, decyl, dodecyl, and stearyl groups. This is a finite genus of 13 species. A genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. See MPEP 2105, In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
Oda teaches an example which uses 70.8 g isobutyl methacrylate and 258.3 g of a 50% solution of monomer A1 (¶67). This gives a ratio of monomer A1 of 129.15 g to 35.4 g of isobutyl methacrylate, a ratio of about 78:22 which falls in the mass ratio range of claim 1. Additionally, Oda teaches the molar ratio of monomer A is 10-100 mol% (¶22-23) which overlaps the claimed mass ratio.
Oda does not explicitly recite the polymer is for a water repellant. However, this is a statement of intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this case, the only structural feature of the claimed polymer is the claimed monomer (a) and amount, which are met by Oda. Therefore, Oda is capable of performing the claimed intended uses recited in the claims.
Regarding claim 2, the monomer isobutyl methacrylate meets claimed formula (6) when R3 is methyl, Z is an oxygen atom, n is 1, and R4 is a C4 hydrocarbon group (isobutyl).
Regarding claim 3, Oda teaches the formed copolymer is present in a dihydroterpineol solution (¶65-70) which meets the limitation ‘liquid medium’.
Oda teaches using the polymers in a paste with a solvent (¶52-53) which are then printed onto a sheet (¶ 54) which corresponds to the claimed product on which the polymer is adhered recited in claims 4 and 6.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oda (JP 2019-196446). As the JP reference is not in English, citations are made to the attached translation.
Oda teaches an example where a polymer of isobutyl methacrylate and monomer A1 (¶ 64-77) where monomer A1 has the structure
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92
328
media_image1.png
Greyscale
where R1 is CH3, x is 0, R2 is butyl and Y1 is
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82
278
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Greyscale
(Table 1, ¶ 56). This corresponds the claimed formula (1) of monomer (a) when R1 is methyl, x is 0, Y1 is claimed formula (3), and R2 is butyl.
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588
1063
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Oda does not provide an example where claimed R2 is an alkyl having 12-24 carbon atoms. However, Ota teaches R2 can have 1-18 carbon atoms (¶ 16) and that examples of alkyl groups include dodecyl and stearyl groups (¶ 16) which meet the claimed range of 12-24 carbon atoms.
Oda teaches an example which uses 70.8 g isobutyl methacrylate and 258.3 g of a 50% solution of monomer A1 (¶67). This gives a ratio of monomer A1 of 129.15 g to 35.4 g of isobutyl methacrylate, a ratio of about 78:22 which falls in the mass ratio range of claim 1. Additionally, Oda teaches the molar ratio of monomer A is 10-100 mol% (¶22-23) which overlaps the claimed mass ratio.
The range of carbon atoms and amounts used in Oda overlap the claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Oda suggests the range of carbon atoms and amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Oda. See MPEP 2123.
Oda does not explicitly recite the polymer is for a water repellant. However, this is a statement of intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In this case, the only structural feature of the claimed polymer is the claimed monomer (a) and amount, which are met by Oda. Therefore, Oda is capable of performing the claimed intended uses recited in the claims.
Regarding claim 2, the monomer isobutyl methacrylate meets claimed formula (6) when R3 is methyl, Z is an oxygen atom, n is 1, and R4 is a C4 hydrocarbon group (isobutyl).
Regarding claim 3, Oda teaches the formed copolymer is present in a dihydroterpineol solution (¶65-70) which meets the limitation ‘liquid medium’.
Oda teaches using the polymers in a paste with a solvent (¶52-53) which are then printed onto a sheet (¶ 54) which corresponds to the claimed product on which the polymer is adhered recited in claims 4 and 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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