DETAILED ACTION
An Office Action was mailed 06/16/2025. Applicant filed a Response on 12/15/2025, amended claims 1, 3-5, 8, 11 and 15, and cancelled claim 14.
Claims 1, 3-13, 15 and 18-23 are pending.
Claims 1, 3-13 and 15 are rejected. Claims 18-23 are withdrawn from consideration.
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 Interpretation
Claims 1 and 15, and their respective dependent claims, have been interpreted and examined such that a non-ionic hydrophilic-modified polysiloxane having a hydrophilic-lipophilic balance (HLB) of 1-12 (claim 1) meets the requirement of a non-ionic hydrophilic-modified polysiloxane having a relative weight of hydrophilic moieties in the range 5-60 wt.% (claim 15), and vice versa. This is consistent with Applicant’s Remarks, page 6 filed 05/19/2025, and the specification at page 16, lines 5-7.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3, line 4, it is suggested the term “the composition” be amended to “the fouling release coating composition” in order to ensure proper antecedent basis in the claims.
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 (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 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 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.
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.
Claims 1, 3-8, 10-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Thorlaksen, WO 2013/000479A1 A1 (Thorlaksen).
A copy of Thorlaksen was provided with the IDS filed 10/17/2024.
Regarding claims 1 and 15, Thorlaksen teaches a cured paint, “fouling control” or “fouling release” composition comprising (i) a polysiloxane-based binder matrix having included as a part thereof hydrophilic oligomer/polymer moieties, and (ii) one or more biocides, wherein the matrix facilitates and controls the leaching of biocides (Thorlaksen; page 3, lines 18-24 and page 34, lines 12-17). More than 50% by weight of the binder matrix is represented by polysiloxane parts (Thorlaksen; page 4, lines 5-6 and 22-23; page 5, lines 21-26; and page 6, lines 11-21). The binder system forms a cured paint upon curing (Thorlaksen; page 8, lines 12-15).
The coating compositions comprise one or more “biocides,” meaning an active substance intended to destroy, deter, render harmless, prevent the action of, or otherwise control any harmful organism by chemical or biological means (i.e., an antifouling agent) (Thorlaksen; page 18, line 25-page 20, line 34).
The compositions may further comprise hydrophilic-modified polysiloxane oils, i.e., constituents which do not form covalent bonds to the polysiloxane-based binder matrix (Thorlaksen; page 22, lines 3-13). The polysiloxane oils are modified with non-ionic oligomeric or polymeric groups (i.e., non-ionic hydrophilic modified polysiloxanes) (Thorlaksen; page 22, lines 14-24). The hydrophilic-modified polysiloxane oils do not contain groups that can react with the binder or binder components or the crosslinker (if present), and are intended to be non-reactive (i.e., non-curable) (Thorlaksen; page 22, lines 3-13). Because curing/drying occurs at room temperature (Thorlaksen; page 14, lines 11-12; page 39, lines 17-22; page 40, lines 10-15), and because Thorlaksen teaches that the hydrophilic-modified polysiloxane oils are non-reactive, it is clear that the hydrophilic-modified polysiloxane oils of Thorlaksen are non-curable in a curing reaction of the binder at 0-40oC as claimed.
The hydrophilic-modified polysiloxane oils are included in the compositions in an amount of 0.01-20% by dry weight (Thorlaksen; page 26, lines 23-24). 0.01-20% by dry weight of hydrophilic-modified polysiloxane oils overlaps in scope with the claimed range of 10-30% by dry weight of non-ionic hydrophilic modified polysiloxanes.
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).
The relative weight of the hydrophilic moieties is 1% or more of the total weight, in particular 10% or more (e.g., 10-70%) of the total weight of the hydrophilic-modified polysiloxane oil (Thorlaksen; page 23, lines 5-8). 10-70% overlaps with the claimed relative weight of hydrophilic moieties of 5-60wt% (claim 15).
As explained above, Applicant’s specification at page 16, lines 5-7, states that “the wt% hydrophilic groups can be converted into HLB values, and vice-versa. An HLB value of 1-12 is equivalent to a wt% hydrophilic groups of 5-60 wt%, for example.” Therefore, the polysiloxane oil of Thorlaksen having a relative weight of the hydrophilic moieties of 10-70% clearly overlaps with the claimed hydrophilic-lipophilic balance (HLB) range of 1-12 (claim 1).
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).
The hydrophilic-modified polysiloxane oils have a preferred number average molecular weight (Mn) of 500-50,000g/mol, which overlaps with the claimed Mn range of 500-18,000g/mol (Thorlaksen; page 23, lines 9-11).
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).
Given that Thorlaksen discloses foul control coatings that overlap the presently claimed fouling release coating compositions, including those including those comprising a curable polysiloxane based binder comprising at least 50 wt% polysiloxane parts; an antifouling agent; and 10-20% by dry weight of a non-ionic hydrophilic-modified polysiloxane having a relative weight of hydrophilic moieties in the range of 5-60% (corresponding to the HLBs of claim 1), and an Mn of 500-18,000 g/mol, wherein said non-ionic hydrophilic modified polysiloxane is non-curable during a curing reaction of the curable polysiloxane based binder at room temperature, it therefore would have been obvious to one of ordinary skill in the art to use such fouling release coatings, which are both disclosed by Thorlaksen and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 3, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The polysiloxane-based binder matrix constitutes at least 40% by dry weight, in particular 50-90% by dry weight, of the cured paint coat (i.e., total dry weight of the composition) (Thorlaksen; page 6, lines 7-10). This particular range is equivalent to the claimed more preferred range of 50-90 dry wt%.
Regarding claim 4, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The biocide (i.e., antifouling agent) constitutes 0.1-15% by dry weight, in particular 1-6% by dry weight, of the coating composition (Thorlaksen; page 21, lines 1-2). This preferred range falls completely within the claimed range of 1-15% by dry weight.
Regarding claim 5, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above, wherein the hydrophilic-modified polysiloxane oils are included in the compositions in an amount of 0.01-20% by dry weight of the coating composition (Thorlaksen; page 26, lines 23-24). 0.01-20% by dry weight overlaps in scope with the claimed 11-29% by dry weight of non-ionic hydrophilic-modified polysiloxane, based on the total dry weight of the fouling release composition.
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).
Regarding claim 6, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. In a particularly preferred embodiment, the biocide is an organic biocide such as zinc pyrithione or copper pyrithione (Thorlaksen; page 20, lines 21-23). Thorlaksen further exemplifies coatings comprising copper pyrithione, such as Top coat compositions C, D, P and Q (Thorlaksen; see Top coat compositions C and D on page 43, and P and Q on page 47).
Regarding claim 7, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The hydrophilic-modified polysiloxane oils have a preferred number average molecular weight (Mn) of 500-50,000g/mol (Thorlaksen; page 23, lines 9-11). This range overlaps in scope with the claimed Mn range of 500-18,000g/mol.
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).
Regarding claim 8, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The hydrophilic-modified polysiloxane oils have a viscosity in the range of 10-20,000mPa.s, in particular 40-5,000mPa.s (Thorlaksen; page 23, lines 12-14). This range overlaps with the claimed ranges of 20-4,000mPa.s and 30-3,000mPa.s.
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).
Regarding claim 10, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The relative weight of the hydrophilic moieties is 1% or more of the total weight, in particular 10% or more (e.g., 10-70%) of the total weight of the hydrophilic-modified polysiloxane oil (Thorlaksen; page 23, lines 5-8). As explained above, Applicant’s specification at page 16, lines 5-7, states that “the wt% hydrophilic groups can be converted into HLB values, and vice-versa. An HLB value of 1-12 is equivalent to a wt% hydrophilic groups of 5-60 wt%, for example.” Therefore, the polysiloxane oil of Thorlaksen having a relative weight of the hydrophilic moieties of 10-70% clearly overlaps with the claimed hydrophilic-lipophilic balance (HLB) range of 1-10.
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).
Regarding claim 11, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. In one embodiment, the binder includes a diorganopolysiloxane of general formula (1):
PNG
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400
808
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Greyscale
(Thorlaksen; page 10, lines 6-16). The compounds of formula (1) overlap in scope with those of formula (D1) as claimed. See also the exemplified compositions such as Top coat compositions C, D, P and Q which contain silanol-terminated polydimethylsiloxane ((Thorlaksen; see Top coat compositions C, D, P and Q on pages 43 and 47-48). Silanol-terminated polydimethylsiloxane is a compound of formula (D1) as claimed wherein R1=hydroxyl and R2-4=methyl, wherein x+y is at least 5 (i.e., a+b is at least 5 in the above compound of formula (1)).
Regarding claim 12, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The compositions may also contain a catalyst, a solvent, and pigments and fillers as claimed (Thorlaksen; page 21, lines 12-13; page 29, lines 18-19; page 30, lines 26-27).
Regarding claim 13, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The hydrophilic-modified polysiloxane oils preferably include polyether-modified (e.g., polyoxyalkylene-modified) polysiloxanes as claimed (Thorlaksen; page 22, lines 14-22).
Given that Thorlaksen discloses hydrophilic-modified polysiloxanes that overlap the presently claimed non-ionic hydrophilic-modified polysiloxanes, including wherein the polysiloxane is polyether-modified, it therefore would be obvious to one of ordinary skill in the art to use a polyether-modified non-ionic polysiloxane, which is both disclosed by Thorlaksen and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Thorlaksen, WO 2013/000479A1 A1 (Thorlaksen) as applied to claim 1 above, taken in view of evidence by Reusch, “Molecular Weight of Polymers” (Reusch).
Regarding claim 9, Thorlaksen is relied upon as teaching the limitations of claim 1 as discussed above. The new fouling control containing comprises a binder matrix which facilitates and controls the leaching of biocides (Thorlaksen; page 3, lines 18-24). The hydrophilic-modified polysiloxane oils have a preferred number average molecular weight (Mn) of 500-50,000g/mol (Thorlaksen; page 23, lines 9-11).
Thorlaksen does not explicitly teach wherein the non-ionic hydrophilic-modified polysiloxane has a weight average molecular weight (Mw) of 2,000-45,000g/mol. However, as is evidenced by Reusch, because polymers are not composed of identical molecules, both Mn and Mw are typically used to define the molecular weight of polymers, wherein the Mw is always higher than Mn, and wherein Mn and Mw are result-effective variables both dependent upon molecular weight Mi (Reusch, page 1).
It is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the number average, and hence weight average molecular weights of the hydrophilic-modified polysiloxane oils of Thorlaksen, including over the presently claimed, in order to optimize the ability of the binder matrix to facilitate and control the leaching of biocides.
Response to Arguments
1) Applicant’s amendments filed 12/15/2025 have overcome the claim objections previously of record, except with regard to claim 3 which remains as set forth above.
2) Applicant’s amendments filed 12/15/2025 have overcome 35 USC 112 rejections previously of record.
3) Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive for the following reasons.
Regarding the 35 USC 103 rejection over Thorlaksen, Applicant first argues:
“In the present application, it is demonstrated that the presence of a non-reactive non- ionic hydrophilic modified polysiloxane from 10% to 30% by dry weight produces unique and unexpected results…. The formulations in Table 5 are designed to show the advantages of using more than 10 wt% of the non-reactive non-ionic hydrophilic-modified polysiloxane….
Applicant has unexpectedly discovered that by incorporating from 10% to 30% by weight of the non-ionic hydrophilic modified silicone oils with specific parameters (molecular weight and HLB), it is possible to obtain fouling release formulations containing antifouling agents that have low VOC, good application properties (viscosity), good film homogeneity, and improved antifouling properties (see page 2, lines 25- 29). This feature of the present invention was not recognized or appreciated by Thorlaksen.”
Remarks, pages 8-9.
While Inventive Examples 1 and 2 of Table 5 of the specification may show improved “Raft results (Singapore 26 wk)” as compared to Comparative Examples 2 and 5, these results are not sufficient to show unexpected criticality of the claimed non-ionic hydrophilic-modified polysiloxane dry weight range for the following reasons.
Inventive Examples 1 and 2 use: a) a single curable polysiloxane based binder (α,ω-hydroxypolydimethylsiloxane) in specific amounts; b) a single antifouling agent (copper pyrithione) in a single amount, and c) a single non-ionic hydrophilic-modified polysiloxane (modified with a polyethylene glycol) having a specific Mn (9242), Mw (19712), HLB (4.8) and Wt% hydrophilic group (24%), in specific amounts;
while the claims allow for: 1) any curable polysiloxane based binder in any amount, 2) any antifouling agent in any amount, and 3) any non-ionic hydrophilic-modified polysiloxane having any hydrophilic-lipophilic balance (HLB) ranging from 1-12 or any weight percent of hydrophilic moieties ranging from 5-60 wt%; any Mn ranging from 500-18,000 g/mol or any Mw ranging from 1,000-50,000 g/mol; and which may be present in any amount ranging from 10-30% by dry weight.
For these reasons, the data is not commensurate in scope with the claims.
Further, the data does not show using the upper and lower end of the claimed range for the dry weight, Mn, Mw, and HLB/weight percent of hydrophilic moieties of the non-ionic hydrophilic-modified polysiloxane.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
It is further noted that the data does not appear to provide the weight percent of polysiloxane parts of the curable polysiloxane based binder. Therefore, it is unclear if the working examples in the data fall within the scope of the claims.
Lastly, Comparative Examples 3 and 4 show improved results with respect to homogeneity as compared to Inventive Examples 1 and 2 (emphasis added). The “Raft results” for Comparative Examples 3 and 4 is recorded as “n/a”. A result of “n/a” is not one of the defined ratings (see specification at page 35, lines 4-6 and Table 2). Therefore, it is unclear if Inventive Examples 1 and 2 actually have improved results over Comparative Examples 3 and 4.
4) Applicant further argues:
“There is also no teaching or suggestion in the prior art that the specific ranges for the HLB and molecular weight of the hydrophilic-modified polysiloxane can influence the homogeneity and/or antifouling properties of the coating….
In the present application, it is demonstrated that the use of a the non-ionic hydrophilic- modified polysiloxane having a HLB greater than 12 negatively affects the homogeneity and antifouling performance. Moreover, compositions using a non-ionic hydrophilic-modified polysiloxane having a number average molecular weight over 18,000 g/mol exhibit poor antifouling performance….
Inventive Examples 3-6 show that there are several possible non-reactive non-ionic hydrophilic modified polysiloxane oils that exhibit good antifouling performance while maintaining a good film adhesion at a high oil amount of 16 wt.% (by dry weight).”
Remarks, pages 9-10.
Regarding Inventive Examples 3-6 and Comparative Example 6-10 in Table 6 on pages 37-38 of Applicant’s specification, these results are not deemed persuasive to show that the claimed Mn or Mw, and HLB or relative weight of hydrophilic moieties of the non-ionic hydrophilic-modified polysiloxane, have unexpected and improved results over the prior art for the following reasons.
The claims allow for any curable polysiloxane based binder in any amount, while Inventive Examples 3-6 all contain the same, single curable polysiloxane in the amount of 57.4% by weight (see specification, page 36, Table 4 and pages 37-38, Table 6). Further, as mentioned above, the data does not provide the weight percent of polysiloxane parts of the curable polysiloxane based binder. Therefore, it is unclear if the working examples in the data fall within the scope of the claims.
The claims allow for any antifouling agent in any amount, while Inventive Examples 3-6 all comprise the antifouling agent copper pyrithione in an amount of 5.5% by weight (see specification, page 36, Table 4 and pages 37-38, Table 6).
The claims allow for a non-ionic hydrophilic-modified polysiloxane having any structure, but only compare non-ionic hydrophilic-modified polysiloxanes having a polyethylene glycol hydrophilic group. While four non-ionic hydrophilic-modified polysiloxanes of the invention were compared (#’s 3, 4, 6, and 7), these a non-ionic hydrophilic-modified polysiloxanes had specific Mn’s of 9709, 15025, 7656 and 4300 respectively; specific Mw’s of 19848, 39796, 15934 and 5963; specific HLB’s of 5.7, 5.7, 3.9 and 3.3 respectively; and specific Wt% of hydrophilic groups of 28.5, 28.5, 19.5 and 16.6 respectively; wherein the non-ionic hydrophilic-modified polysiloxane is present in a specific dry content of 16 weight% (see specification, page 36, Table 4 and pages 37-38, Table 6).
However, the claims allow for non-ionic hydrophilic-modified polysiloxanes having any hydrophilic-lipophilic balance (HLB) ranging from 1-12 or any weight percent of hydrophilic moieties ranging from 5-60 wt%; any Mn ranging from 500-18,000 g/mol or any Mw ranging from 1,000-50,000 g/mol; and which may be present in any amount ranging from 10-30% by dry weight.
Further, the data does not show using the upper and lower end of the claimed range for the dry weight, Mn, Mw, and HLB/weight percent of hydrophilic moieties of the non-ionic hydrophilic-modified polysiloxane.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
5) Applicant next argues:
“With regard to Thorlaksen, the Examiner refers to the Top Coat Composition F and Top Coat Composition L. It is clear from the tables on pages 45 and 47, however, that neither of these examples contain non-reactive hydrophilic modified polysiloxane.”
Remarks, page 10.
Examiner agrees that these examples do not include a non-ionic hydrophilic-modified polysiloxane as presently claimed (emphasis added), i.e., wherein the non-ionic hydrophilic-modified polysiloxane is non-curable during a curing reaction of the curable polysiloxane based binder at 0oC to 40oC. In light of the amendments to the claims, reference to these Examples has been removed from the rejection.
6) Applicant further argues:
“The Examiner acknowledges that Thorlaksen does not specifically disclose the HLB/relative weight of hydrophilic moieties of the binders.”
Remarks, page 11.
Examiner respectfully disagrees, as stated on page 12 of the Office Action mailed 06/16/2025, “Although Thorlaksen does not specifically disclose the HLB/relative weight of hydrophilic moieties, or Mn of the exemplified hydrophilic-modified polysiloxanes,” i.e., the binders of Top Coat Compositions F, L and P (emphasis added).
However, as explained in the above rejection at page 6, Thorlaksen teaches that the relative weight of the hydrophilic moieties is 1% or more of the total weight, in particular 10% or more (e.g., 10-70%) of the total weight of the hydrophilic-modified polysiloxane oil (Thorlaksen; page 23, lines 5-8). Further because, the wt% hydrophilic groups can be converted into HLB values, and vice-versa (specification at page 16, lines 5-7), Thorlaksen teaches polysiloxane oils having a relative weight of the hydrophilic moieties and HLB’s overlapping the claimed ranges.
7). Applicant further argues:
“In fact, the only examples in Thorlaksen that contain non-ionic hydrophilic-modified polysiloxanes that are non-reactive are Examples C, D and Q. However, the amount of non- reactive hydrophilic-modified polysiloxane in these examples is 2.6% and 3.9% by dry weight for Examples C/D and Q, respectively. These values are much lower than the claimed range recited in claims 1 and 15. Referring to page 36 of Thorlaksen, the non-reactive hydrophilic modified polysiloxane used in these Examples is presumably DC190. However, there is no indication of the properties of this material, such as HLB, percent of hydrophilic moieties, and the Mn.”
Remarks, page 11.
Examiner respectfully traverses because Thorlaksen is not limited to the exemplified embodiments. Because Thorlaksen teaches hydrophilic-modified polysiloxane oils in which the relative weight of the hydrophilic moieties ranges from 1-90%, most preferably 10-70% of the total weight of the hydrophilic-modified oil, which has a Mn in the range of 100-100,000g/mol, more preferably 500-50,000 g/mol (Thorlaksen; page 23, lines 5-11), and is present in an amount ranging from 0.01-20% by dry weight (Thorlaksen; page 28, line 23-24), all of which overlap in scope with the claimed ranges, the Examiner maintains that Thorlaksen teaches the claimed invention. See also pages 5-7 of the above rejection.
8). Applicant argues:
“In the present invention it has been discovered that by choosing a high content of non- reactive non-ionic hydrophilic-modified polysiloxane with specific parameters as recited in the present claims (e.g., molecular weight and HLB), it is possible to obtain fouling release formulations containing biocides such as copper pyrithione that have low VOC, ideal viscosity, good application properties, acceptable film adhesion and homogeneity, and improved antifouling properties. Since this is not taught or hinted at in Thorlaksen, the present claims would not have been obvious.”
Remarks, page 11.
Examiner respectfully disagrees that the evidence of record shows improvements over Thorlaksen for the reasons set forth in items #3 and #4 above. Thorlaksen teaches viscosities to enable easy application (page 31, lines 18-20), improved antifouling properties (page 35, lines 17-22) and good adhesion (see Examples). Thorlaksen further exemplifies improved results with respect to “Performance on raft in Singapore (8w)” when a non-reactive hydrophilic modified polysiloxane is added to the coating compositions (Thorlaksen; Examples C & D, Table on page 43; page 44, lines 1-3; Example P and G, Table on pages 47-48, and page 48, “Comments”).
9). Applicant lastly argues:
“The Examiner highlights page 22 of Thorlaksen, which discusses the optional presence of non-reactive hydrophilic-modified polysiloxane oils. These components are separate therefore from the curable hydrophilic modified polysiloxanes. Note that claim 1 of Thorlaksen requires the hydrophilic moieties are part of the binder matrix (i.e., requires the use of a curable component carrying the hydrophilic moieties). None of the claims of Thorlaksen recite non-reactive hydrophilic-modified polysiloxanes, which are only exemplified in a small number of the working examples. Moreover, when the non-reactive hydrophilic- modified polysiloxane is used in Thorlaksen, the amount used is low and falls outside the scope of claim 1. The Examiner however cites the range at page 26, line 24 range. However, the preferred ranges in that passage all exclude the range in claim 1 of Thorlaksen, which clearly suggests to the skilled artisan that Thorlaksen did not see any advantage of using a higher content of this material.”
Remarks, page 11.
Examiner respectfully disagrees because Thorlaksen is not limited to the claims, working examples, or preferred embodiments. As stated in the above rejection, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Further, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
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 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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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732