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 .
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 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.
Claims 1, 3-5, 7, 11-15, 17, 20-25, 27-30 are pending. Applicant’s previous election of Group I, claims 1, 3-5, 7, 11-15, 17, 20-21, 27-30 still applies and claims 22-25 remain withdrawn.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/21/25 has been entered.
Claim Rejections - 35 USC § 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 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.
If 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 3-5, 7, 11-15, 17, 20-21, 27-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olsen et al. (U.S. 2016/0083592) in view of Okazaki (U.S. 2018/0163056), in view of Sloot (U.S. 2019/0112502) with evidence from the RN 41556-26-7 and RN 122586-52-1 NPL documents (previously cited).
Regarding claims 1, 3-5, 7, 11-15, 17, 20-21, 27-30, Olsen teaches a method of forming a fouling control coating (paint, [0012]) on a substrate (e.g., ship hull, [0246], intended for immersion as claimed, though this is merely an intended use and is not given patentable weighht) comprising forming an optional epoxy primer layer (as in claim 14), followed by a first siloxane liquid coating (corresponding to the claimed tie coat layer), followed by a second siloxane liquid coating (corresponding to the claimed fouling release coating), wherein the second siloxane coating may include an overlapping amount (as in claim 30) of condensation curable (i.e., crosslinkable) polysiloxane based binder with an overlapping amount of polysiloxane parts ([0039]-[0041]) as well as (optional) epoxy functional polymers ([0024]-[0025], disclosing a combination of epoxy functional polysiloxanes and condensation curable polysiloxanes), as well as hydrolyzable silane compounds ([0028]), as well as polyoxyalkylene modified hydrophilic silicone oils ([0065]-[0079], having a MW overlapping claim 17) and optional additive and pigments/fillers ([0057], [0063]), with amounts of binder, modified polysiloxane oils, additives and pigments/filler overlapping the amounts in claims 27-28 and with no required biocide as in claim 29 (biocide is optional, [0011]). The above description of the second siloxane coating also corresponds to the composition of the first siloxane coating, which functions as a “tie layer” in that it ties (i.e., bonds) the second siloxane layer to the underlying substrate ([0183], [0190], [0257]-[0259]). Based on the citations above for the second siloxane coating, the first siloxane coating would also have these aspects, which overlap claims 11-13 and 20.
Olsen does not disclose the claimed hindered amine compounds but each of Okazaki and Sloot render obvious such compounds as explained below.
Okazaki is also directed to antifouling compositions that include siloxanes (see abstract) and teaches that such hindered amine compounds are obvious to use in an amount overlapping claims 15 and 28 in Olsen in order to improve weather resistance ([1548], [1571], teaching Tinuvin 123 and 292, [1572]), with the disclosed Tinuvin compounds having the claimed structure and liquid properties of claims 3-5, 7, and 21 as evidenced by the NPL documents. It would thus have been obvious to have included such compounds in the first and second siloxane coats of Olsen in order to improve weather resistance for both layers.
Sloot is also directed to antifouling compositions that include siloxanes (see abstract, [0003]) and teaches that such hindered amine compounds are obvious to use in Olsen in order to improve light stability ([0097]-[0098] teaching Tinuvin 292), with the disclosed Tinuvin compound having the claimed structure and liquid properties of claims 3-5, 7, and 21 as evidenced by the NPL documents. The amounts recited claims 15 and 28 are obvious in view of Sloot based on the compounds having an art-recognized effect (light stability) such that the amount of such compounds would be obvious to adjust, including to values within the claimed range, as part of the optimization of such light stability. It would thus have been obvious to have included such compounds in the first and second siloxane coats of Olsen in order to improve weather resistance for both layers.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that there are documents showing that HALS would not be obvious to use with polysiloxanes. The Das reference cited by Applicant supposedly shows that HALS have no UV stabilizing effect on polysiloxane based coatings. However, the composition of the Das reference seems to use silicone oil and/or polydimethylsiloxane, without any organic polymer parts (contrary to the present claims and the cited art, which are based on silicone polymers with significant organic polymer portions, which is relevant as discussed below). Also, Table 4 cited by Applicant seems to show improvement from the use of HALS, so it is unclear why this reference is cited since it does not appear to be relevant (in terms of the type of composition) and seems to show the opposite of what Applicant seeks to prove (improvement from HALS). If Applicant is arguing that HALS were known to protect organic compounds, this would only serve to support the argument below that the organic portion of the compositions of the prior art and the claims would make the inclusion of HALS obvious (assuming, arguendo, that HALS have no effect of siloxane bonds).
The next reference cited by Applicant (Carter) supposedly shows that HALS cause “amine poisoning” of the cure catalyst. However, no specific catalyst is mentioned, or even a genus of catalyst besides “cure catalysts.” Also, catalysts are optional in both the prior art and the claimed coating composition, since condensation curing will occur in ambient conditions without a catalyst. This aspect of Carter is therefore not persuasive.
Applicant then argues that Carter shows that non-oxidative processes are the “predominant” source of degradation of siloxanes. However, this does not make them the only source of degradation (i.e., does not preclude other forms of degradation that may be prevented by HALS). Furthermore, the cyclo-reversion process cited in the reference appears to refer to the polysiloxane chain specifically, whereas (as noted above and below) the claims and the prior art include silicones that have organic polymer side chains.
Applicant then argues against the Examiner’s previous arguments (that silicones are not shown to be UV immune, merely UV resistant, and that Applicant’s arguments related to UV resistance are related to silicones without organic groups). Applicant cites the performance properties document previously provided to show that resistance is equivalent to immunity. The relevant portion is reproduced below.
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However, this cited paragraph lacks any evidentiary support and includes language that is both absolute and vague. It states that UV rays “can’t break down” (absolute) silicones but refers to “UV-resistant properties” (vague, implying resistance instead of immunity). It also says that silicones “won’t deteriorate” (absolute) during “long” exposure to sunlight (vague, without any indication as to what qualifies as deterioration, what level of exposure is considered equivalent to “sunlight” and how “long” the exposure was conducted in arriving at these conclusions). Indeed, it does not appear that any evaluation or experimentation was performed at all and instead this reference appears to be conclusory. Even taking the cited reference at face value, it refers only to siloxane bonds, not silicones with organic polymer chains.
Applicant then argues that the Examiner’s remarks related to silicones with organic polymer chains vs just siloxane polymers is based on hindsight. However, this arguement was made by the Examiner to refute Applicant’s evidence that the silicones in the prior art cannot benefit from HALS antioxidant/stabilizing effects, because the evidence is related to a different type of siloxane than is used in the prior art. The argument was not presented as a motivation for an obvious modification of the prior art (all modifications/motivations in the rejection are provided by the art itself). Therefore “hindsight” is inapplicable. In other words, the examiner is only referring to silicones with organic polymer chains because these are the materials used in the present claims and in the prior art, while Applicant’s cited evidence of silicone’s supposedly inherent UV resistance/immunity is based on the siloxane polymer chain (and ignores the organic polymer chains in the silicone polymers of the claims and the prior art). Therefore, it is presented as a counter-argument to Applicant’s cited evidence (showing that the cited evidence does not properly characterize the claimed invention or that of the prior art) and is not based on “hindsight”.
Applicant then argues that there is no evidence showing that silicones with polyoxyalkylene groups would suffer from UV degradation (and thus would benefit from HALS additives). However, this simply ignores the secondary references cited in the rejection, which are each based on silicone resins with polyoxyalkylene groups, and each show that HALS were expected to help with degradation of the compositions that include such silicone resins. Furthermore, Applicant’s remarks related to the Das reference imply that Applicant is arguing that HALS additives are typically used to protect organic polymer chains, not siloxane polymer chains (which would imply that the polyoxyalkylene groups, a type of organic polymer chain, would benefit). Likewise, the declaration implies it is “conventionally understood” that HALS benefit organic polymer chains, which would similarly support the same conclusion (see below). In any case, the secondary references do not need to explicitly link the HALS benefits to the polyoxyalkylene groups of the silicone polymer (since the benefits are generally applied to the overall composition, which is sufficient motivation to try them in the composition of Olsen). The Examiner’s argument related to the polyoxyalkylene groups in the claims and in the prior art is only made to show that Applicant’s evidence is not related to the same type of siloxane polymer as in the claims and in the prior art.
This shows that even if Applicant’s various cited documents show that siloxane bonds (i.e., Si-O-Si) are immune from UV degradation (arguendo), it still does not invalidate the benefits provided by the secondary references because those benefits can still be attributed to the stabilization/protection of the polyoxyalkylene groups in the silicone resins of the prior art or the other organic compounds of the prior art.
Applicant also dismissed the reference in the previous office action to other ingredients within the scope of the present claims and Olsen that are completely organic (i.e., not siloxane based at all). Applicant argues that such ingredients are not required in the claims. This is irrelevant. The optional inclusion of such non-siloxane ingredients in the present claim scope completely invalidates Applicant’s arguments there would be no reason to include HALS because they (supposedly) only protect organic compounds, because HALS would still be obvious to protect the other non-siloxane based ingredients in the composition. Furthermore, as explained above, because the silicones in the claims and in Olsen include substantial organic polymer chains, those chains would likewise be vulnerable to UV degradation and therefore would make obvious the inclusion of HALS in the composition (even if only to protect those polyoxyalkylene chains).
Applicant then argues that the “immersed in water” limitation means that UV rays would not even reach the coating (with supporting evidence regarding UV rays and water penetration). However, this is an immaterial intended use. Even if the use was given weight, it does not require that the coating is only even immersed in water, or that it is only ever completely immersed in water. A coating applied to, e.g., a ships hull is not necessarily completely immersed in water when the ship is in the water, and also, ships are taken out of the water for maintenance, and would be out of the water during initial manufacture. This line of argument is also not persuasive.
Applicant then argues that Okazaki does not contain a polysiloxane binder because it is only at up to 5wt% relative to the I and II ingredients (which Applicant asserts to be the binder). However, the use of polysiloxanes with polyoxyalkylene groups in Okazaki makes it analogous to Olsen, even if the amount was significantly different. Also, the amount is no so different because the 5wt% amount cited by Applicant (the examiner is unclear what this number is based on) does not represent the teachings of Olsen. In [1524], Olsen teaches that the IV compound (the polysiloxanes with polyoxyalkylene groups) may be included at up to 50wt% relative to the total amount of I and II compounds. Applicant also argues that Okazaki does not disclose a combination of tie coat and top coat and does not disclose marine purposes. However, this is piecemeal analysis and the similarities between Olsen and Okazaki make the references more than sufficiently analogous to each other and to the present claimed invention.
With respect to the Sloot reference, Applicant argues that the examples are based on non-condensation curable polysiloxanes. There is no evidence to support this, but even if it was the case, the reference is still more than sufficiently analogous to each other and to the present claimed invention based on the inclusion of polysiloxanes with polyoxyalkylene groups for antifouling coatings (as with Okazaki). The polysiloxanes referenced by Applicant are also only used in the examples and the reference is not limited to those particular polysiloxanes.
Applicant then cites a portion of Sloot that shows HALS do not improve antifouling properties. This may be the basis for unexpected results (in which case the claims are not remotely commensurate in scope with the present examples) but is immaterial in arguing that HALS would not be expected to provide light stability (which is explicitly taught by Sloot).
The provided declaration largely mirrors the above arguments. The declaration states that Okazaki would not be considered in formulating polysiloxane based binder coatings because the amount of polysiloxane in the composition is too low (this appears to be based on an improperly narrow interpretation of the amount of siloxane components in Okazaki, as explained above). However, this is based on piecemeal analysis and an improperly narrow view of evaluating whether a secondary reference is analogous to the primary reference and the present claims. The declaration also states that the HALS in Okazaki are being added to protect the organic binder as would be “conventionally understood.” There is no evidence to support this characterization of Okazaki, however, even if HALS are “conventionally understood” to protect organic polymer chains (as implied in the declaration) this would still provide a motivation to include them in Olsen due to the non-siloxane/organic ingredients permissible in Olsen and in the present claims and/or due to the organic polyoxyalkylene groups in the siloxane polymer of Olsen and the present claims.
Regarding Sloot, the declaration improperly limits the reference to the examples and also seeks to ignore ingredients mentioned by Sloot if they are not required (all of which is improper analysis as a matter of law).
In summation, there is ample evidence to support the obviousness of adding HALS to the composition of Olsen. Each of Okazaki and Sloot are more than sufficiently analogous to Olsen and the present claims, and each of them provide an explicit motivation for including HALS in such compositions as Olsen and the present claims in order to provide the widely known benefits associated with HALS (i.e., UV degradation protection and UV stability) as being applicable to siloxane based compositions. The evidence provided by Applicant, at best (arguendo), possibly would be sufficient to establish the non-obviousness of including HALS in a purely siloxane based composition. However, as acknowledged in the declaration, such HALS compounds are “conventionally understood” to protect organic compounds. Therefore, the general benefits provided by Okazaki and Sloot for including HALS in a siloxane based composition would still be obvious even if only to protect the organic parts of the composition (the non-siloxane organic ingredients and/or the organic segments of the siloxane polymer). Thus, even in the best light (arguendo), Applicant’s evidence does not contradict or invalidate the explicit suggestion provided by Okazaki and Sloot regarding HALS. Further to the summation, the “immersed in water” line of argument is similarly not-persuasive as explained above. Therefore, it appears that Applicant’s line of argument would be persuasive as an unexpected result (i.e., based on unexpected improvement in anti-fouling properties due to HALS compounds), however, the claims are not commensurate in scope with this type of argument because the claims recite a composition with ingredients and amounts that are significantly broader than the examples.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787