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 § 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.
Claims 1-27 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.
Considering Claim 1: Claim 1 recites the limitation “An organic fine particle capable of being present on a substrate in a state of having a particle shape”. It is not clear if the clause “in a state of having a particle shape” refers to the substrate or the organic fine particle. As such, the claim is indefinite. For the purpose of further examination, the claim will be interpreted as referring to the organic fine particle and allow for substrates of different shapes.
Considering Claim 10: Claim 10 recites the limitation "the reactive/hydrophilic monomer", “the short-chain hydrocarbon-containing monomer” and “the (meth)acrylic monomer. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, the claim is being interpreted as depending from claim 8 to provide proper antecedent basis.
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.
Claims 1-11, 13-17, and 24-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (CN 107460733). Note: A machine translation provided by the applicant is being used for CN 107460733.
Considering Claims 1, 2, and 4-11: Wu et al. teaches an organic fine particle having a particle size of 250 nm to 350 nm (Fig. 4) that provides a hydrophobic property to a fabric substrate (¶0009). The particle is formed from styrene/a hydrophobic monomer having an ethylenically unsaturated double bond and a cyclic hydrocarbon group and a glass transition temperature of 100 ºC, N,N-methylenebisacrylamide/a crosslinkable monomer having at least two ethylenically unsaturated double bonds, and hydroxyethyl methacrylate/a reactive monomer having an ethylenically unsaturated double bond and a hydrophilic hydroxy group (Example 1).
Wu et al. is silent towards the slip resistance on the substrate. However, Wu et al. teaches the same monomers as the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Considering Claim 3: Wu et al. teaches the fine particle as providing a contact angle of 140 degrees (¶0052).
Considering claim 13: Wu et al. teaches the weight ratio of styrene to hydroxyethyl methacrylate as being 1.8:0.2 (Example 1), which provide a molar ratio of 1.7:0.15.
Considering Claims 14 and 15: Wu et al. teaches using the composition as on a textile surface (¶0031).
Considering Claims 16 and 17: Wu et al. teaches a composition comprising the crosslinked particles and water (¶0044), where the particles are present in an amount of less than 50% by weight.
Considering Claims 24-27: Wu et al. teaches applying the composition to a fabric (¶0046).
Claims 1-3, 5-14, and 16-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Madenokoji (JP 2009-191236). A machine translation provided by the applicant is being used for JP 2009-191236.
Considering Claim 1-3, 5-10, and 14: Madenokoji teaches a particle made prepared from a mixture comprising tert-butyl acrylate/a hydrophobic monomer with a glass transition temperature above 100 ºC, ethylene glycol dimethacrylate/a crosslinking agent, methyl methacrylate/a short chain hydrocarbon monomer, and butyl acrylate/a methacrylate monomer having a linear hydrocarbon group of 4 carbon atoms (¶0041).
The term “capable of being present on a substrate” is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Wu et al. is silent towards the slip resistance and contact angle on the substrate. However, Wu et al. teaches the same monomers as the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Considering Claim 11: Madenokoji teaches that the monomer can contain glycidyl methacrylate/an epoxy functional acrylate (¶0012).
Considering Claim 12: Madenokoji teaches a particle made prepared from a mixture comprising tert-butyl acrylate, ethylene glycol dimethacrylate, and methyl methacrylate. Monomer (IV) is optional in the claims.
Considering Claim 13: Madenokoji teaches an example where the methacrylic monomer (IV) is not present, i.e. is 0 parts by mol (¶0043).
Considering Claim 16-18: Madenokoji teaches the composition comprising the particles, water, and a surfactant (¶0041), where the particles are less than 50% by weight of the composition (¶0041).
Considering Claim 19-21: Madenokoji teaches mixing 140 parts of acrylic binder with 100 parts of the polymer particles (¶0051).
Considering Claim 22: Madenokoji teaches polymerizing the monomers in the presence of 1 g of surfactant and 220 g of monomer (¶0041).
Considering Claim 23: Madenokoji teaches mixing the dispersion with acrylic binder (¶0051).
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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Madenokoji (JP 2009-191236) as applied to claim 1 above.
Considering Claim 4: Madenokoji teaches the particle of claim 1 as shown above.
Madenokoji teaches the particle size as being greater than 300 nm (¶0013). This overlaps with the claimed range. In the case where the claimed ranges "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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have selected a particle size within the overlapping portion of the claimed range, and the motivation to do so would have been, as Madenokoji suggests, to allow for good coatability for the composition (¶0013).
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 1-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 4, 19-23, 28-33, 39, 40, and 42 of copending Application No. 18/206,699 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, 2, and 14: Claim 1 of Application ‘699 teaches a slip prevention organic fine particle for textiles capable of being present on a substrate in a state having a particle shape having a slip resistance of less than 8.0 mm.
Considering Claim 3: Claim 3 of Application ‘699 teaches the claimed properties.
Considering Claim 4: Claim 4 of Application ‘699 teaches the claimed particle size.
Considering Claim 5-10: Claim 1 of Application ‘699 teaches the claimed structure.
Considering Claims 11 and 12: Claims 39 and 40 of Application ‘699 teach the claimed monomers.
Considering Claim 13: Claim 42 of Application ‘699 teaches the claimed ratios of monomers.
Considering Claim 15 and 24-27: Claims 30-33 of Application ‘699 correspond to instant claims 15 and 24-27.
Considering Claims 16-21: Claims 16 and 19-23 of Application ‘699 correspond to instant claims 16-21.
Considering Claims 22 and 23: Claims 28 and 29 of Application ‘699 correspond to instant claims 22 and 23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/ Primary Examiner, Art Unit 1767
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