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, 4, 5, 7, 11-14, 17, 20-25, 27-30 are pending. Applicant’s previous election of Group I, claims 1, 4-5, 7, 11-14, 17, 20-21, 27-30 still applies and claims 22-25 remain withdrawn.
Response to Amendment
Applicant’s amendment of 05/14/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 21 is/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 pre-AIA the applicant regards as the invention.
Claim 21 recites a formula that is broader than claim 1 and therefore the scope of claim 21 is unclear.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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, 4-5, 7, 11-14, 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, 4-5, 7, 11-14, 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 weight) 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 claim 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 4-5, 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 4-5, 7, and 21 as evidenced by the NPL documents. The amounts recited claim 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 which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues, with supporting evidence, that the tested hindered amine compounds represent a broader scope of tested embodiments than was first apparent, such that the claims are commensurate in scope for unexpected results. This may be so for the type of the hindered amine compound in the fouling release layer, however there are still aspects of the claimed composition that are not commensurate in scope with the data of record. For example, the amount of the hindered amine compound is still much broader than the amounts used in the examples. Furthermore, only claim 28 recites the amounts of other ingredients and even those ranges of claim 28 are still far broader (non-commensurate) in comparison with the examples. Additionally, for achieving the unexpected results, the hydrophilic modified silicone oil is also indicated as a particularly significant ingredient and yet it is still recited in broad terms relative to the examples (merely required to have some polyoxyalkylene and be a silicone oil, thus still allowing for any overall MW, with the range of claim 17 being far broader than the examples, and allowing for any ratio of polyoxyalkylene to silicone repeating units, and any types of oxyalkylene units and any types of R groups on the silicone oil).
Additionally, the examples and comparative examples all show improved antifouling properties from the combination of hindered amine and hydrophilic modified silicone oil in compositions that lack a biocide compared to compositions with just hydrophilic modified silicone oil or hindered amine, and also lacking a biocide. Therefore, the examples and comparative examples appear to show improved antifouling properties for biocide-free compositions without any evidence showing that there would still be an improvement if similar comparisons were made for biocide containing compositions (i.e., it is unclear if the already improved antifouling properties of a biocide containing composition can be further improved by the combination of hindered amine and hydrophilic modified silicone oil, compared to a biocide containing composition with just hindered amine or hydrophilic modified silicone oil). Thus, it appears that the claims would also have to preclude biocide (like in claim 29) to be commensurate in scope (unless additional data or evidence is provided to show unexpected results even for biocide containing compositions).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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
Prosecution Insights