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 .
Status of Application
Claims 1, 3, 4, 6-8, 10-13 and 19-28 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 7/23/2026 have been fully considered but they are not persuasive. Applicant argues that Williams does not teach an acrylic acid plasma polymerization film as claimed. However, the Examiner disagrees and notes that Williams polymerizes the ethyl acrylate as noted in Table 2 in their system and correlates the rate of polymerization with amount of monomer absorbed on the electrode surface (see Table 2 and 1st column on page 771) by using the experimental procedure outlined in the 1st column on page 770 that forms a polymer on the electrode as a film with a defined thickness. Therefore, using the experimental procedure outlined to provide the values in Table 2 yields a plasma polymerized ethyl acrylate film on the electrodes in the glow discharge apparatus. Therefore, the Examiner maintains that Williams teaches a plasma polymerized poly(ethyl acrylate) film.
Applicant argues that neither Williams or Cantini teach the peak intensity, wave number at peak top and compositional requirements as claimed. However, Williams and Cantini teach an identical plasma polymerized film of an ethyl acrylate monomer which is comparable to the plasma polymerized film of ethyl acrylate disclosed in Applicant’s Table 1. As the polymers are identical and all prepared by plasma polymerization, the resultant properties of films of those polymers must also be identical. Therefore, the Examiner maintains that the peak intensity, wave numbers and compositional requirements are inherent. Applicant has not provided evidence as to why the same polymer prepared from the same monomer by plasma polymerization would be expected to have different properties. Thus, the rejections of record are maintained.
With respect to the newly added claims, as noted above, the Examiner contends that Cantini and Williams’ poly(ethyl acrylate) plasma polymerized films will be identical to the claimed plasma polymerized films of claims 19-28 and will have the same properties. Therefore, these newly added claims are also rejected over Cantini and Williams as presented below.
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.
1. Claim(s) 1, 3, 4, 6-8, 10-13 and 19-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams et al. (“Polymerization in a Glow Discharge”).
I. Regarding claims 1, 3, 4, 6-8 and 10-13, Williams teaches an ethyl acrylate polymerized film (Table 2) which is prepared by plasma discharge between two electrodes (Figure 1 and pages 769-770). Williams teaches the film can have a thickness of 1 micron (1000 nm, see Williams at top of second column on page 771). Further, Williams teaches an essentially identical film to that claimed (see above), and prepared under similar plasma polymerization conditions between two electrodes using an identical monomer to that disclosed in Applicant’s specification (see Williams at Table 2 and Applicant’s specification at Table 1 and 0061-0064). Since Williams teaches an identical polymerized ethyl acrylate film prepared by plasma processing. The Examiner notes that this will inherently have identical properties to the claimed film and will have a carbon content, oxygen content and hydrogen content which fall within the claimed ranges. Additionally, As William’s film is prepared from the same monomer and conducted in an essentially identical plasma process to provide the same polymerized ethyl acrylate film as disclosed in Applicant’s specification, the Examiner notes that this plasma polymerized acrylic acid film will be identical to that claimed and will inherently result in the film having the infrared spectra with peak locations and intensity ratios as claimed in claims 1, 3, 4 and 6-8, (as evidenced in Applicant’s Table 1), the claimed transmittance and the film will inherently include an aldehyde, ester or ketone (as evidence note Applicant’s specification at 0034 which notes that these functional groups end up incorporated in films prepared by the plasma polymerization process of acrylic acids from the carbonyl groups of the monomer). Therefore, Williams anticipates claims 1, 3, 4, 6-8 and 10-13.
II. Regarding claims 19-28, it is noted that the claims are product-by-process claims. "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"). In this case, Williams teaches an ethyl acrylate polymerized film that is polymerized by plasma barrier discharge between two electrodes (see above). Williams teaches an identical plasma polymerized film made from ethyl acrylate by a similar plasma polymerization process using a barrier discharge between two electrodes having a thickness of 1 micron (see above and see Applicant’s Table 1 and 0061-0064). Williams’ plasma polymerized film will be identical to a plasma polymerized film prepared by mixing plasma generated through a plasma injection hole as claimed in claim 19. As Williams’ film is prepared from the same monomer and conducted in a plasma process to provide the same polymerized ethyl acrylate film as disclosed in Applicant’s specification, the Examiner notes that this will inherently result in the film having the claimed compositional amounts of carbon, oxygen and hydrogen, and infrared spectra with peak locations and intensity ratios as claimed in claims 19-24 (as evidenced in Applicant’s Table 1), the claimed transmittance and the film will inherently include an aldehyde, ester or ketone (as evidence note Applicant’s specification at 0034 which notes that these functional groups end up incorporated in films prepared by the plasma polymerization process of acrylic acids from the carbonyl groups of the monomer). Therefore, Williams anticipates claims 19-28
2. Claim(s) 1, 3, 4, 6-8, 10-13 and 19-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cantini et al. (“Controlled wettability, same chemistry: biological activity of plasma-polymerized coatings”).
I. Regarding claims 1, 3, 4, 6-8 and 10-13, Cantini teaches an ethyl acrylate polymerized film (abstract) which is prepared by plasma using argon as a carrier gas (Figure 1b). Cantini teaches the film can have a thickness in the range as claimed (Figure 1c). Further, Cantini teaches an essentially identical film to that claimed (see above), and prepared under similar plasma polymerization conditions using an identical monomer and carrier gas to that disclosed in Applicant’s specification (see Cantini at Figure 1b and Applicant’s specification at Table 1 and 0061-0064). Cantini teaches an identical polymerized ethyl acrylate film prepared by plasma processing; therefore, the Examiner notes that this will inherently have identical properties to the claimed film and will have a carbon content, oxygen content and hydrogen content which fall within the claimed ranges. Additionally, Cantini teaches an identical plasma polymerized film made from ethyl acrylate by a similar plasma polymerization process using an identical monomer and carrier gas to that disclosed by Applicant (see above and see Applicant’s Table 1 and 0061-0064). As Cantini’s film is prepared from the same monomer and conducted in an essentially identical plasma process to provide the same polymerized ethyl acrylate film, the Examiner notes that this will inherently result in the film having the infrared spectra with peak locations and intensity ratios as claimed in claims 1, 3, 4 and 6-8 (as evidenced in Applicant’s Table 1), the claimed transmittance and the film will inherently include an aldehyde, ester or ketone (as evidence note Applicant’s specification at 0034 which notes that these functional groups end up incorporated in films prepared by the plasma polymerization process of acrylic acids from the carbonyl groups of the monomer). Therefore, Cantini anticipates claims 1, 3, 4, 6-8 and 10-13.
II. Regarding claims 19-28, it is noted that the claims are product-by-process claims. "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"). In this case, Cantini an identical polymerized ethyl acrylate film prepared by plasma processing have a thickness in the range as claimed (see above). Cantini’s plasma polymerized film will be identical to a plasma polymerized film prepared by mixing plasma generated through a plasma injection hole as claimed in claim 19. As Cantini’s film is prepared from the same monomer and conducted in a plasma process to provide the same polymerized ethyl acrylate film as disclosed in Applicant’s specification, the Examiner notes that this will inherently result in the film having the same compositional content of carbon, hydrogen, and oxygen, and infrared spectra with peak locations and intensity ratios as claimed in claims 19-24 (as evidenced in Applicant’s Table 1), the claimed transmittance and the film will inherently include an aldehyde, ester or ketone (as evidence note Applicant’s specification at 0034 which notes that these functional groups end up incorporated in films prepared by the plasma polymerization process of acrylic acids from the carbonyl groups of the monomer). Therefore, Cantini anticipates claims 19-28
Conclusion
Claims 1, 3, 4, 6-8, 10-13 and 19-28 are pending.
Claims 1, 3, 4, 6-8, 10-13 and 19-28 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ROBERT S WALTERS JR/
August 2, 2026Primary Examiner, Art Unit 1717
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