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 .
Response to Amendments/Arguments
Predicated on the Examiner’s determination that claims 12 and 13 recited allowable subject matter, claim 8 has been amended to include the limitations of claim 12 while also re-defining the invention as a paint composition instead of a paint additive. Whereas the Examiner agrees that these modifications to claim 8 distinguish it over the teachings of Nakanashi and Deeth, an updated/modified survey of the prior art unearthed another reference that renders unpatentable some of the remaining claims as described supra.
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.
Claims 8-9, 14, 18, 20, 24, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suruwatari et al., JP 2009-051984 with a brochure from Shin Etsu profiling product no. KF-6038 and also Aso, U.S. Patent Application Publication No. 2013/0338281 as an evidentiary reference proving that KF-6038 complies with the structural requirements of the claimed paint additive.
This reference is directed to an acrylic resin-based antistatic coating comprising the materials outlined in the abstract, a surfactant (D) [0011, 0076-0090], a compound (E) featuring an alkylene oxide chain, and, relevant to the present discussion, a polysiloxane-polyoxyalkylene graft copolymer surfactant [0098], of which KF-6028 and KF-6100 are exemplified (with the latter being utilized in Example 14).
The Examiner appreciates that the support disclosures from Shin Etsu and Aso define the structure of KF-6038, as opposed to KF-6028. KF-6038 is, according to the combined teachings of paragraphs [0103] and [0243] a graft polysiloxane that contains pendant lauryl (dodecyl) groups, pendant polyether groups conforming with formula (3) of claim 8, and pendant organopolysiloxane chains conforming with formula (4) of claim 8. The second page of the Shin Etsu brochure is suggestive that KF-6038 is comparable in structure to KF-6028 with the only distinction being the absence of long chain alkyl groups (shown in red) being absent from the latter. Thus, one of ordinary skill would infer from these two references that KF-6028 is a graft polysiloxane-polyoxyethylene copolymer featuring both graft polyether- and polysiloxane chains, both chains being linked to the backbone via a divalent hydrocarbon group.
As for the weight-average molecular weight limitation, Aso does not address this aspect directly but, rather, says that embodiments of the siloxane copolymer containing substituents as described in formulae (5), (6), and (9), as is the case for KF-6038, have a dynamic viscosity of 500 to 1000 mm2/s and graft copolymers within this viscosity range will inherently possess a Mw consistent with that claimed.
As for claim 9, the PSA disclosed in [0115]is said to include acrylic resin of Synthesis Example 1 added in a quantity defined in terms of the amount of solids introduced. The resin is furnished in ethyl acetate assuming that there is no solvent replacement prior to formulating the PSA. The isocyanate component is, likewise, provided as an ethyl acetate solution.
Claims 18 and 20 do not place any additional limitations on the makeup of the paint composition but, instead, merely express an intended use.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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October 1, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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