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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/9/2025, 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 (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.
Claims 1, 3-10, 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US20180311968, herein Sato), in the view of Kohei (JP2019198807, herein Kohei, a machine translation is being used for citation purpose), Kodama (WO2017221059, herein Kodama), and Jogo (JP2014083466, herein Jogo, a machine translation is being used for citation purpose).
Regarding Claims 1, 6-8, Sato teaches water-based ink composition [0008] has “defoaming properties” [0020] comprising: polyether-modified silicone-based surfactant [0113], in the range of surfactant in the water-based ink is preferably not more than 5.0% by mass [0132] overlaps the claimed range, triethylene glycol methyl ether [0104] as organic solvent in the water-based ink is preferably not more than 45% by mass [0131] overlaps the claimed range, water [0083], the content of water in the water-based ink is preferably not less than 30% by mass [0133] overlaps the claimed range. These ranges as taught by Sato can further lead to B/A=5%/5%=1, given B and A are both 5% which are both within the ranges of A and B, hence, lies in the claimed ratio range; C/A=5%/5%=1, given C and A are both 5% which are both within the ranges of A and C, hence, lies in the claimed ratio range
Sato does not explicitly teach the average value of HLB is within a range of 1.2 to 2.0, however, Kohei teaches “polyether modified Silicone; HLB of 0 to 4” [0024] overlaps the claimed range. Sato and Kohei are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of aqueous ink compositions both utilizing polyether modified silicone defoaming agents.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the specified “polyether modified Silicone; HLB of 0 to 4” [0024] by Kohei into the composition preparation. Doing so would further achieve the desired property as of “excellent defoaming properties and can easily form an excellent coating film appearance (gloss, rain streaks).” [0007] as taught by Kohei.
Sato teaches triethylene glycol methyl ether [0104], but does not explicitly teach one or more types selected from triethylene glycol mono-n-butyl ether and triethylene glycol butyl methyl ether, however, Kodama teaches “triethylene glycol monobutyl ether” [0065]. Sato and Kodama are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the specified “triethylene glycol monobutyl ether” [0065] by Kodama into the composition preparation. Doing so would further achieve the antifreeze properties [0060].
Sato teaches as the surfactant other than the polyether-modified silicone-based surfactant preferred is a nonionic surfactant, but does not explicitly teach the specific average value of HLB range. However, Jogo teaches “polyoxyalkylene alkyl ether Emulmin 40 (HLB=8.0, Sanyo Chemical Industries, Ltd.,” [0043], matches “Examples of the nonionic surfactant serving as component (D) include polyoxyalkylene alkyl ethers” [Instant app. P3, 0035], lies in the claimed range. Sato and Jogo are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of ink composition comprising silicone based aqueous anti-foaming. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the “polyoxyalkylene alkyl ether Emulmin 40 (HLB=8.0, Sanyo Chemical Industries, Ltd.,” [0043] by Jogo into the composition preparation. Doing so would further achieve the desired property as of “excellent in suppressing the occurrence of cissing and in defoaming properties, and is also excellent in suppressing a decrease in the gloss value of a coating film. Therefore, the coating film obtained by applying the paint using the defoaming agent of the present invention does not impair the appearance.” [0006] as taught by Jogo.
This is further obvious because Sato teaches in [0116] that additional surfactants include alkyl ethers of polyoxyalkylenes. Surfactant of Jogo is alkyl ether of polyoxyalkylene.
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).
Regarding Claims 3, 14, Sato does not teach the specific hydrophobic silica, however, Kodama teaches “filler (A2)” [0022] which is “silica in which the surface is hydrophobized” [0024]. Sato and Kodama are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of silicone based aqueous anti-foaming agent composition formation.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the “filler (A2)” [0022] which is “silica in which the surface is hydrophobized” [0024] by Kodama into the composition preparation. Doing so would further enhancing the anti-foaming effect [0022].
Regarding Claim 4, Sato does not teach organopolysiloxane having a silanol group on an end of a molecular chain. However, Kodama teaches “dimethylpolysiloxane having both molecular chain terminals blocked with a trimethylsilyl group as an inherently hydrophobic organopolysiloxane” [0100] reads on the “F) Dimethylpolysiloxane having silanol groups at both ends of a molecular chain” [Instant app. Spec. P18; L21]. Sato and Kodama are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the “dimethylpolysiloxane having both molecular chain terminals blocked with a trimethylsilyl group as an inherently hydrophobic organopolysiloxane” [0100] by Kodama into the composition preparation. Doing so would further be enhancing viscosity optimization and lead to the anti-foaming effect [0022].
Regarding Claim 5, Sato teaches (G) polypropylene glycol. [0107]
Regarding Claims 9, 10, Sato teaches water-based ink composition [0008] reads on the water-based paint upon the ink printing application.
Regarding Claims 12, 13, Sato does not explicitly teach the method of defoaming a water-based paint. However, Kohei teaches “defoaming agent for paints, (water-based paints, etc.)” [0032] “The amount of antifoaming agent added (wt %) is appropriately determined depending on the foaming state, temperature, viscosity, etc., but is preferably 0.001 to 10, more preferably 0.005 to 3, based on the weight of the foaming liquid.” [0033] overlaps the claimed range. Sato and Kohei are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the teaching of the “defoaming agent for paints, (water-based paints, etc.)” [0032] “The amount of antifoaming agent added (wt %) is appropriately determined depending on the foaming state, temperature, viscosity, etc., but is preferably 0.001 to 10, more preferably 0.005 to 3, based on the weight of the foaming liquid.” [0033] by Kohei into the composition preparation. Doing so would further achieve the desired property as of “excellent defoaming properties and can easily form an excellent coating film appearance (gloss, rain streaks).” [0007] as taught by Kohei.
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).
Regarding Claim 15, Sato does not teach organopolysiloxane having a silanol group on an end of a molecular chain. However, Kodama teaches “dimethylpolysiloxane having both molecular chain terminals blocked with a trimethylsilyl group as an inherently hydrophobic organopolysiloxane” [0100] reads on the “F) Dimethylpolysiloxane having silanol groups at both ends of a molecular chain” [Instant app. Spec. P18; L21]. Sato and Kodama are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the “dimethylpolysiloxane having both molecular chain terminals blocked with a trimethylsilyl group as an inherently hydrophobic organopolysiloxane” [0100] by Kodama into the composition preparation. Doing so would further be enhancing viscosity optimization and lead to the anti-foaming effect [0022].
Regarding Claim 16, Sato teaches (G) polypropylene glycol. [0107].
Regarding Claim 17, Sato, Kodama, Kohei and Jogo collectively teach the water-based paint as set forth in claim 16, Sato teaches polyether-modified silicone-based surfactant [0113] as component (A), in the range of surfactant in the water-based ink is preferably not more than 5.0% by mass [0132] overlaps the claimed range, triethylene glycol methyl ether [0104] as component (B) in the water-based ink is preferably not more than 45% by mass [0131] overlaps the claimed range, water [0083], as component (C), the content of water in the water-based ink is preferably not less than 30% by mass [0133] overlaps the claimed range. Sato teaches as the surfactant other than the polyether-modified silicone-based surfactant preferred is a nonionic surfactant [0115] as component (D), in the range of surfactant in the water-based ink is preferably not more than 5.0% by mass [0132]; polypropylene glycol [0102] as component (G) in the water-based ink is preferably not more than 45% by mass [0131] overlaps the claimed range.
Sato does not teach the component (E), however, Jogo teaches hydrophobic silica particles in the range of 0.1 to 10 [0068] as component (E) overlaps the claimed range; Sato and Jogo are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the hydrophobic silica particles in the range of 0.1 to 10 [0068] by Jogo into the composition preparation. Doing so would further achieve the desired property as of “excellent in suppressing the occurrence of cissing and in defoaming properties, and is also excellent in suppressing a decrease in the gloss value of a coating film. Therefore, the coating film obtained by applying the paint using the defoaming agent of the present invention does not impair the appearance.” [0006] as taught by Jogo.
Sato does not teach the component (F), however, Kodama teaches “dimethylpolysiloxane having both molecular chain terminals blocked with a trimethylsilyl group as an inherently hydrophobic organopolysiloxane” [0100] reads on the “F) Dimethylpolysiloxane having silanol groups at both ends of a molecular chain” [Instant app. Spec. P18; L21], in the range of “organopolysiloxane (A1) added is preferably 70 to 99 parts by mass, with respect to 100 parts by mass of the silicone oil compound (A).” [0026] wherein, the “silicone oil compound (A); 0.001 to 1.0 parts by mass” [0074], hence, the “organopolysiloxane (A1)” [0026] range is 70%x0.001%=0.0007% to 99%x1%=0.99%, lies in the claimed range. Sato and Kodama are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the “dimethylpolysiloxane having both molecular chain terminals blocked with a trimethylsilyl group as an inherently hydrophobic organopolysiloxane” [0100] and the range by Kodama into the composition preparation. Doing so would further be enhancing the anti-foaming effect [0014].
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).
Regarding Claim 19, Sato, Kodama, Kohei and Jogo collectively teach the water-based paint as set forth in claim 1, Sato teaches polyether-modified silicone-based surfactant [0113] as component (A), triethylene glycol methyl ether [0104] as component (B) in the water-based ink is preferably not more than 45% by mass [0131] overlaps the claimed range, water [0083], as component (C), the content of water in the water-based ink is preferably not less than 30% by mass [0133] overlaps the claimed range. Sato teaches as the surfactant other than the polyether-modified silicone-based surfactant preferred is a nonionic surfactant [0115] as component (D). Sato does not teach the ranges of components (A) and (D), however, Kadama teaches (A) “polyether-modified silicone” [0010], in the range of “0.002 to 90 parts by mass” [0010] overlaps the claimed range;
(D) “nonionic surfactants” [0040], in the range of “0.02 to 99.98 parts by mass” [0010], both overlap the claimed ranges. Sato and Kodama are considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the ranges of components (A) and (D) by Kodama into the composition preparation. Doing so would further be enhancing the anti-foaming effect [0014].
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).
Regarding Claim 18, Sato teaches water-based ink composition [0008] reads on the water-based paint upon the ink printing application.
Regarding Claim 20, Sato teaches mixed solvents constituted of water and at least one of these organic solvents [0083], wherein, the organic solvent include polyhydric alcohols [0100] which is polypropylene glycol [0102], which is generally considered a non-volatile, further indicates the solo-selection of water, without volatile organic compounds inclusion.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (US20180311968, herein Sato), Kodama (WO2017221059, herein Kodama), Kohei (JP2019198807, herein Kohei, a machine translation is being used for citation purpose) and Jogo (JP2014083466, herein Jogo, a machine translation is being used for citation purpose) as applied in claim 10, and in the further view of Ikeda (JP2005137963, herein Ikeda, a machine translation is being used for citation purpose).
Regarding Claim 11, Sato, Kodama, Kohei and Jogo collectively teach the water-based paint as set forth in claim 10, Sato is silent on the wherein the amount of a preservative or disinfectant component is 0.05 mass % or less of the total water-based paint. However, Ikeda teaches “preservative/bactericide” [0053], in the range of “0.005 to 1.0 part by mass” [0053], overlaps the claimed range. Sato and Ikeda are considered to be analogous to the claimed invention because they are in the same field of endeavor, that of silicone based aqueous anti-foaming agent composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the teaching of the “preservative/bactericide” [0053], in the range of “0.005 to 1.0 part by mass” [0053] by Ikeda into the composition preparation. Doing so would further achieve the desired property as of “small amounts of preservatives and bactericides may be added to the defoaming agent composition of the present invention for the purpose of preservation” [0053] as taught by Ikeda.
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).
Response to Arguments
Applicant’s arguments, filed 9/9/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sato (US20180311968, herein Sato), Kodama (WO2017221059, herein Kodama), Kohei (JP2019198807, herein Kohei, a machine translation is being used for citation purpose) and Jogo (JP2014083466, herein Jogo, a machine translation is being used for citation purpose).
In this case, Sato, Kodama, Kohei and Jogo collectively teach the water-based paint of the claimed ingredients, in the claimed amounts as set forth above in the new rejection above.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, Kodama teaches “anti-foaming effect” [0013] comprising: (A) “polyether-modified silicone” [0010]; “triethylene glycol monobutyl ether” [0065]; (C) water [0067] which can lead to anti-foaming properties to the coolant composition [0014] as taught by Kodama; as analogous art, Kohei teaches the specified “polyethermodified Silicone; HLB of 0 to 4” [0024] which can further substitute the “polyether-modified silicone” [0010] of Kodama, and lead to “excellent defoaming properties and can easily form an excellent coating film appearance (gloss, rain streaks).” [0007] as taught by Kohei, collectively match the excellent defoaming or foam suppression effects [Instant App. US20220411633; 0053], hence, neither Kodama nor Kohei teaches away the instant application.
Additionally, although Kodama teaches there is a possibility that an anti-foaming agent of the related art, depending on the type, (1) may significantly decrease the thickening effect of a surfactant as a viscosity index improver, and (2) may not maintain the anti-foaming effect in all regions from a high temperature to a low temperature although the anti-foaming effect is achieved at any one of a high temperature and a low temperature [0013] which indicates the possibility of the thickening effect weakening, however, these possibilities taught by Kodama, do not exclude the specific “polyethermodified Silicone; HLB of 0 to 4” [0024], which in fact can lead to “excellent defoaming properties and can easily form an excellent coating film appearance (gloss, rain streaks).” [0007] as taught by Kohei.
In response to applicant's argument that “neither reference teaches component (D) as claimed, nor teaches the desirability of a nonionic surfactant having the required HLB range, nor would one of skill in the art be motivated to seek out such a reference. This is especially true in view of the amendment to claim 1, wherein the HLB values are now very narrow, and it would not have been obvious for one of skill in the art to select an HLB value in this narrow-claimed range.”, which is not persuasive.
In fact, Kadama teaches (D) “nonionic surfactants” [0040], as analogous art, Jogo teaches “polyoxyalkylene alkyl ether Emulmin 40 (HLB=8.0, Sanyo Chemical Industries, Ltd.,” [0043], matches “Examples of the nonionic surfactant serving as component (D) include polyoxyalkylene alkyl ethers” [Instant app. P3, 0035], lies in the claimed range, which can further lead to the desired property as of “excellent in suppressing the occurrence of cissing and in defoaming properties, and is also excellent in suppressing a decrease in the gloss value of a coating film. Therefore, the coating film obtained by applying the paint using the defoaming agent of the present invention does not impair the appearance.” [0006] as taught by Jogo.
In response to the “unexpected results”, is not persuasive.
When Examples 1-4 and Comp. Examples 1-3 are considered as a whole, they establish results associated with the ranges, with respect to the claimed ranges provided for comparison.
Claim 17 is open to the ranges of the amount of component (F) is within a range of 0 to 10 mass %, and the amount of component (G) is within a range of 0 to 50 mass %. However, Examples 1, 3, 4 and Comp. Examples 2, 3 each only include single concentration. Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the 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 occur over the entire claimed range. See MPEP 716.02(d).
In response to the “the skilled artisan working from Kodama would have had no reason to consider the exclusion of VOCs, let alone to recognize the advantages that a VOC-free formulation could bring in a coating or paint context. To the contrary, Kodama positively teaches toward the inclusion of VOCs as necessary and beneficial. Modification would render Kodama unsuitable for its intended purpose.”, is not persuasive.
In fact, the newly added reference_ Sato teaches mixed solvents constituted of water and at least one of these organic solvents [0083], wherein, the organic solvent include polyhydric alcohols [0100] which is polypropylene glycol [0102], which is generally considered a non-volatile, further indicates the solo-selection of water, without volatile organic compounds.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767