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 .
Information Disclosure Statement
The information disclosure statement (IDS) references have been considered except when a reference date was omitted and/or a reference was already listed on another IDS.
Election/Restrictions
Applicant's election with traverse of Group I and Species 1 in the reply filed on 7/15/2026 is acknowledged.
The species traversal is on the ground that the Office failed to provide any reason to support a conclusion that the species are patentably distinct. The examiner respectfully disagrees. To prove that restricted species are patentably different, an examiner must establish that the species are mutually exclusive, not obvious variants of each other, and that examining them together would impose a serious search or examination burden. In the current application, the claims to the different species recite the mutually exclusive characteristics of such species and a search for all the species would require an undue burden because of the different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries). In addition, these species are not obvious variants of each other based on the current record.
The invention traversal is on the ground that the examiner failed to provide any evidence that the Office Action provided examples can be used or made as the Office alleges. Applicant’s argument is not persuasive because according to the MPEP, although an examiner is required to provide an example showing that, for example the product as claimed can be used in a materially different process, the MPEP discloses that this example need not be documented. It is only if the applicant proves or argues convincingly that the examiner's suggested example is not workable or cannot be accomplished that the burden shifts back to the examiner to provide a different viable example or withdraw the restriction. The applicant failed to prove or argue convincingly that the examiner's suggested examples are not workable or cannot be accomplished. The applicant also asserts that the Office failed to provide sufficient reasons to support the assertion that some inventions are unrelated. The examiner respectfully disagrees. The Office Action clearly stated that the are unrelated as they have different designs, modes of operation, and effects. The applicant failed to show otherwise. The requirement is still deemed proper and is therefore made FINAL. Claims 8-15 are withdrawn from further consideration 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 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by JP-H07-3194 to Mise or, in the alternative, under 35 U.S.C. 103 as obvious over JP-H07-3194 to Mise in view of JP-H09-111185 to Okano.
Claim 1, Mise discloses an ABA triblock polymer, comprising an A block and a B block, wherein: the A block is a random polymer including a constituent unit derived from a reactive group-containing polymerizable monomer and a constituent unit derived from a hydrophobic group-containing polymerizable monomer, and the B block contains a divalent organopolysiloxane residue in a main chain (see entire document including Example 1). In the event that it is shown that the applied prior art does not disclose the claimed embodiment with sufficient specificity, the invention is obvious because the prior art specifically discloses the claimed constituents.
Specifically, Mise discloses an azo-group-containing polysiloxane compound (general formula [I]) copolymerized with a mixture of a polymerizable unsaturated acid monomer (a) and a polymerizable unsaturated monomer (b), and states that the polymerization reaction of the unsaturated monomer occurs from both extended molecular ends of the polysiloxane unit such that the constitutional unit is mainly A-B, A-B-A and/or -(A-B)n- based, i.e., vinyl (A) blocks grown from both ends of a polysiloxane (B) block, the claimed ABA architecture. Monomer (a) (e.g., (meth)acrylic acid, a carboxy/reactive-group monomer) and monomer (b) (e.g., methyl (meth)acrylate, butyl acrylate, lauryl/stearyl esters - hydrophobic-group monomers) are copolymerized together to form each A block as a random copolymer. Mise Example 1 [0049] reduces this to practice: 9.1 parts methacrylic acid (monomer (a)) is charged together with 33.9 parts methyl methacrylate, 29 parts butyl acrylate, and 13 parts 2-hydroxyethyl methacrylate (monomer (b)) and polymerized in the presence of the azo-polysiloxane compound of Production Example 1 (polydimethylsiloxane reacted with 4,4′-azobis(4-cyanopentanoic acid chloride)), whose central PDMS segment forms the B block’s divalent organopolysiloxane main chain.
Claim 2, the hydrophobic group is at least one group selected from the group consisting of a linear alkyl group having from 12 to 30 carbon atoms and a divalent organopolysiloxane residue [0006]. Mise’s monomer (b) list [0025] expressly includes lauryl (C12) and stearyl (C18) (meth)acrylate esters, both linear alkyl groups falling within the claimed 12–30 carbon range.
Claim 3, the reactive group is at least one selected from a reactive silyl group, an isocyanato group, a phosphoric acid ester group, a carboxy group, a carbodiimide group, an oxazoline group, and an epoxy group. Mise’s monomer (a) list at [0023] includes (meth)acrylic acid, maleic acid, fumaric acid, and itaconic acid, carboxy-group monomers, and separately identifies acid phosphooxyethyl (meth)acrylate, acid phosphooxypropyl (meth)acrylate [0024] as alternative monomer (a) choices, i.e., phosphoric acid ester monomers.
Claim 4, the reactive group is a reactive silyl group. Mise teaches that the A block is built from a reactive-group monomer (a), but Mise’s own disclosed and exemplified monomer (a) choices are carboxylic-acid-type, not silyl. Okano (see entire document), in the same silicone-modified-acrylic antifouling/anti-fingerprint coating field, teaches that a vinyl group-containing alkoxysilane, specifically methacryloxypropyltrimethoxysilane [0022], is a standard comonomer (used at 0.5–20 wt%) for the same general class of silicone-acrylic copolymer, and reduces this to practice in Example 1 [0036] (5.0 parts 3-methacryloxypropyltrimethoxysilane copolymerized with methacrylate esters). A person of ordinary skill would have been motivated to substitute Okano’s art-recognized reactive-silyl monomer for Mise’s carboxylic-acid-type monomer (a) as the simple substitution of one known reactive-group monomer for another in the same field, with predictable results (a condensation-reactive handle for substrate adhesion).
Claim 5, the B block has a structure represented by the Formula (B1). Mise’s general formula [I] defines R1 as lower alkyl or nitrile group and A as -O- or -NH- linking the polysiloxane segment to the azo/acid-derived residue. Production Example 1 [0045] reduces this to the specific reagent 4,4′-azobis(4-cyanopentanoic acid chloride) reacted with amino-terminated polydimethylsiloxane; on thermal decomposition this leaves, at each polysiloxane terminus, an amide linking group (corresponding to claimed R11) to a carbon bearing a methyl group (R12, a hydrocarbon group) and a cyano group (X1, an electron-withdrawing group), with vinyl polymerization initiating from that carbon. This matches Formula (B1).
Claim 6, a mass ratio of a content of the A block with respect to a content of the B block is from 0.4 to 9. Mise Example 1 [0049] charges 15 parts of the azo-polysiloxane compound (B-block-forming) against a combined 85 parts of monomer (a) and monomer (b) (A-block-forming), an A:B mass ratio of approximately 5.7.
Claim 7, a mass ratio of a content of the constituent unit derived from a hydrophobic group-containing polymerizable monomer with respect to a content of the constituent unit derived from a reactive group-containing polymerizable monomer in the A block is from 5 to 20. In Example 1 [0049] the hydrophobic group monomers methyl methacrylate (33.9 parts) and butyl acrylate (29 parts) total 62.9 parts against 9.1 parts of the reactive-group monomer methacrylic acid, a ratio of approximately 6.9.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by USPN 5,200,436 to Kumar or, in the alternative, under 35 U.S.C. 103 as obvious over USPN 5,200,436 to Kumar in view of JP-H07-3194 to Mise and/or JP-H09-111185 to Okano.
Claim 1, Kumar discloses an ABA triblock polymer, comprising an A block and a B block, wherein: the A block is a random polymer including a constituent unit derived from a reactive group-containing polymerizable monomer and a constituent unit derived from a hydrophobic group-containing polymerizable monomer, and the B block contains a divalent organopolysiloxane residue in a main chain (see entire document including column 5, lines 5-9, column 7, lines 62-68, column 8, line 64 through column 9, line 24, column 18, lines 1-4, column 19, lines 64-67, column 23, lines 27-36, column 25, lines 29-37, column 26, lines 6-30, column 28, line 60 through column 29, line 47 and column 30, lines 4-6). In the event that it is shown that the applied prior art does not disclose the claimed embodiment with sufficient specificity, the invention is obvious because the prior art specifically discloses the claimed constituents.
Kumar discloses siloxane iniferter compounds, difunctional PDMS chains that, on UV exposure, generate a live radical at each terminus from which vinyl monomer is grown outward, producing an A-B-A (vinyl–siloxane–vinyl) triblock architecture (col. 5, ll. 5–9; col. 7, ll. 62–68; col. 18, ll. 1–4). Kumar states that “Examples 7 and 8 are representative of the photopolymerized, siloxane-acrylic block copolymers of the invention having triblock architecture. The end blocks are firmer… The siloxane mid[block]…” (col. 25, ll. 29–37), and describes the “macro siloxane-diiniferter compound” used to form these ABA copolymers (col. 23, ll. 27–36). Example 8 (col. 26, ll. 6–30), captioned “(MA/AA)x-b-PDMS-b-(MA/AA)x,” charges 5 g of a 3,000-MW macro siloxane-diiniferter with 7.25 g methyl acrylate (a hydrophobic-group monomer) and 3.25 g acrylic acid (a carboxy/reactive-group monomer) together in one pot, producing a random A-block copolymer flanking a PDMS B block confirmed independently by Kumar’s own claim 8 (col. 30, ll. 4–6): “The block copolymer of claim 1 wherein A comprises a copolymer block which consists essentially of methyl acrylate and acrylic acid.” Kumar’s claim 1 (col. 28, l. 60–col. 29, l. 47) recites the overall block copolymer architecture.
Claim 2, Kumar’s disclosed monomer list (col. 9, ll. 3–11) does not include a C12+ alkyl ester or a polysiloxane-residue monomer. Okano (see entire document) is in the same silicone-acrylic antifouling coating field and teaches ([0022] and [0024]) that both long-chain (meth)acrylate esters (“lauryl methacrylate… stearyl methacrylate”) and a divalent organopolysiloxane-residue monomer (“vinyl dimethyl polysiloxane having both ends or one end” / “methacryloxypropyl dimethyl polysiloxane having both ends or one end”) are art-recognized comonomer choices for imparting water/oil repellency in the same class of silicone-acrylic surface-treatment copolymer. A person of ordinary skill seeking to enhance the antifouling performance of Kumar’s ABA copolymer would have been motivated to select one of Okano’s disclosed hydrophobic comonomers for Kumar’s hydrophobic A-block component, with a reasonable expectation of success.
Claim 3, the reactive group is at least one selected from a reactive silyl group, an isocyanato group, a phosphoric acid ester group, a carboxy group, a carbodiimide group, an oxazoline group, and an epoxy group (column 9, lines 3-13 and column 30, lines 4-6). Kumar’s monomer list (col. 9, ll. 3–13) includes acrylic acid, and Kumar’s own claim 8 (col. 30, ll. 4–6) confirms that the A block “consists essentially of methyl acrylate and acrylic acid” - acrylic acid supplying a carboxy group, one of claim 3’s seven enumerated reactive-group options
Claim 4, Kumar’s A-block reactive monomer is carboxylic-acid-based (col. 9, ll. 3–13; col. 30, ll. 4–6), not silyl-based. Okano teaches [0022], in the identical silicone-acrylic coating field, that a “vinyl group-containing alkoxysilane” - specifically methacryloxypropyltrimethoxysilane - is an art-recognized, interchangeable reactive comonomer, reduced to practice at 5.0 parts in Okano’s Example 1 [0036]. Substituting Okano’s reactive-silyl monomer for Kumar’s carboxylic-acid-type reactive monomer is the substitution of one known element for another to achieve the predictable result of substrate adhesion via a different, but art-recognized, condensation chemistry, and would have been obvious to a person of ordinary skill in the art.
Claim 5, Kumar’s ABA architecture is formed via a difunctional photoiniferter linkage (col. 18, ll. 1–4; col. 19, ll. 64–67) that Kumar does not describe in the specific divalent-linking-group / hydrocarbon-group / electron-withdrawing-group terms of Formula (B1). Mise (see entire document), however, discloses that the identical general class of siloxane-centered ABA block copolymer can be built via an azo/cyano-terminated macroinitiator route reduced to practice in Production Example 1 [0045] using 4,4′-azobis(4-cyanopentanoic acid chloride) reacted with amino-terminated PDMS — which does produce, at each terminus, the claimed amide-linked (R11), methyl-substituted (R12), cyano-bearing (X1) junction. A person of ordinary skill practicing Kumar’s ABA architecture using a known, interchangeable siloxane-macroinitiator chemistry would have been motivated to adopt Mise’s azo/cyano route, arriving at the Formula (B1) structure with a reasonable expectation of success.
Claim 6, a mass ratio of a content of the A block with respect to a content of the B block is from 0.4 to 9 (column 8, line 64 through column 9, line 2 and column 26, lines 6-30). Kumar teaches that “the weight ratio of vinyl polymer block to siloxane polymer block of the copolymer… ranges from about 80:20 to 50:50, most preferably 70:30 to 60:40” (col. 8, l. 64–col. 9, l. 2) — an A:B ratio of about 1.0 to 4.0, most preferably about 1.5 to 2.33, within the claimed 0.4–9 range. Example 8’s specific charge (col. 26, ll. 6–30: 10.5 g combined monomer against 5 g siloxane diiniferter) computes to an A:B ratio of about 2.1, likewise within range.
Claim 7, Kumar’s Example 8 hydrophobic:reactive ratio (col. 26, ll. 6–30: 7.25 g methyl acrylate : 3.25 g acrylic acid ≈ 2.2) falls below the claimed 5–20 range. This ratio is a result-effective variable controlling coating properties. Mise Example 1 [0049] demonstrates that a ratio within the claimed range (≈6.9) is an operable choice for the same general class of siloxane-centered ABA/AB coating copolymer; routine optimization of Kumar’s analogous ratio into the range Mise demonstrates to be operable would have been obvious to a person of ordinary skill in the art.
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.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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