DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/10/2025 has been entered.
Claims 1-15 are pending.
Double Patenting
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,041,937. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-3: US 937 claims an antifouling composition comprising a compound of copper di(ethyl 4,4,4-trifluoroacetoacetate)
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(equivalent to formula IB wherein Me represents a metal of Cu, R1 is a halogen, R2 is O, and R4 is a C2 alkyl, R5/R6 are hydrogen.)
Regarding claims 4-15: See claims 2-16 of US 937.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15 recites R1 is each F, or two of three R1 are F and one is H. Applicant cites [0025]-[0026] for support. However, support for the genus of compounds wherein two of three R1 are F and one is H is not supported. While the working examples include specific compounds wherein two of three R1 are F and one is H in Table 1, these are specific compounds with specific R2, R3, R4, Me groups, and therefore does not support the genus of compounds within the scope of claim 15.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Mondiere in view of Iwata et al. (US 2018/0105703) in view of Iwata et al. (US 2018/0105703).
Regarding claim 1: Mondiere is directed to an antifouling composition comprising a compound of the formula
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, wherein specific examples include ethyl acetoacetate
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(equivalent to a compound of formula IA or IB wherein R1 is C1 alkyl, R2 is O, R3 is O, R4 is a linear C1 alkyl, and R6/R6 are hydrogen).
The compound above is chelated to a metal including Mg, Ca (column 2 of the periodic table ([0061] [0065]).
Mondiere mentions additives can be added, although doesn’t mention a biocidal agent.
Iwata is directed to an antifouling composition comprising medetomidine as well as additional antifouling/biocidal agents ([0031] Iwata). One skilled in the art would have been motivated to have included a biocidal agent in the composition of Mondiere to prevent fouling of substrates by aquatic organisms and which can form antifouling properties over long period and good storage stability (abstract [0081] Iwata). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a biocidal agents in the composition of Mondiere to arrive at claim 1 of the present invention.
Regarding claim 2: Me includes Mg. A specific examples include Mg ethyl acetoacetate
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(equivalent to a compound of formula IA or IB wherein R1 is C1 alkyl, R2 is O, R3 is O, R4 is a linear C1 alkyl, and R6/R6 are hydrogen).
Regarding claim 3: While claim 3 recites Me represents Cu or Zn, base claim 1 recites formula IA or IB in the alternative. While Mondiere includes metal coordinated chelating complexes, the composition nevertheless comprises formula IA as well. Hence, claim 3 is met since Mondiere discloses formula IA as well as IB.
A specific examples include ethyl acetoacetate
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(equivalent to a compound of formula IA or IB wherein R1 is C1 methyl, R2 is O, R3 is O, R4 is a linear methyl, and R6/R6 are hydrogen).
Regarding claim 4: Iwata is directed to an antifouling composition comprising medetomidine as well as an antifouling agent of cuprous oxide, copper rhodanide, copper, copper pyrithione, zinc pyrithione, 4-bromo-2-(4-chlorophenyl)-5-( trifluoromethy 1)-1 H-pyrrole-3-carbonitrile, 4,5-dichloro-2-n-octyl-4-isothiazolin-3-one, 2,4,5,6-tetrachloroisophthalonitrile, bisdimethyldithiocarbamoylsine ethylene bisdithiocarbamate, zinc dimethyl dithiocarbamate, zinc ethylene bisdithiocarbamate ([0031] Iwata).
Regarding claim 5: CuPT, ZnPT, DCOIT, Cu2O, and tralopyril are disclosed by Iwata at [0031].
Regarding claim 6: Biocides of CuPT and Cu2O are disclosed from a finite number of possible biocides wherein CuPT is demonstrated in the working examples ([0031] Table 2 Iwata).
Regarding claim 7: The amount of the chelating ligand of formula IA or IB is 1-3 wt% of the composition. The amount of antifouling agent is 0.01-1000 parts by weight per 100 parts of the silicone polymer (A) ([0085] Iwata). It follows an amounts at least overlaps the claimed ratio. For instance, a ratio of 1:1 by weight of formula IA or IB to CuPT is well within the scope of Mondiere and Iwata as well as the present claim 7, and therefore the amounts at least overlap.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 8: Use of the antifouling composition for inhibition of biofouling on a surface is disclosed by Mondiere.
Regarding claim 9: The composition is used with a polymer or copolymer allowing the release of the compounds IA and IB.
Regarding claim 10: An antifouling paint is disclosed.
Regarding claim 11: The compound of formula IA and/or IB is used in an amount of 0.1-6% by weight relative to the total weight of the composition ([0203] Mondiere).
Regarding claim 12: Medetomidine is used in an amount of 0.02-20 parts by weight per 100 parts by weight of polymer (A), and therefore at least overlaps the claimed biocidal agent is less than about 30 wt%.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 13: CuPT is disclosed and present in an amount of 0.01-1000 parts by weight per 100 parts of the silicone polymer (A) ([0085] Iwata), and therefore at least overlaps the claimed CuPT is less than about 10 wt%.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 14: A method of inhibiting marine biofouling on a solid surface comprising applying the composition onto said surface is disclosed.
Regarding claim 15: Specific examples include ethyl trifluoroacetoacetate (equivalent to claim 1 wherein R1 is each F).
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Response to Arguments
Applicant's arguments filed 6/18/2025 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 7-8 Remarks) Mondiere fails to disclose one or more biocidal agents in combination with formula IA and/or IB. Mondiere teaches the coating is very smooth treated surface with a low surface energy to which organisms have great difficulty in adhering. Nonetheless the Examiner argues it would have been obvious to include a biocide of medetomidine as taught by Iwata. However, this would yield a redundant result. Applicant cites Ex parte Richard, Ex parte Dalton, Ex parte Henn, and Ex parte Meinass.
This argument is not found persuasive since Mondiere teaches additives can be incorporated into the composition ([0330] Mondiere). The additive of Iwata is well within the scope of the additives that can be included in Mondiere. Merely incorporation of an additive in Mondiere is advantageous and well within the skill level of one skilled in the art. Further, the two compositions are substantially identical compositions used for the same purpose. Hence, while Mondiere already possess a smooth surface, a property of increased biocidal properties by including a biocide is obvious and well within the scope of Mondiere.
Applicant argues (p. 8 Remarks) the differences are not merely trivial. The present inventors have found that the presently claimed antifouling compositions are highly effective and versatile that enhance the antifouling performance of all types of antifouling paints. The present inventors have found the composition can significantly enhance the antifouling efficacy of antifouling compositions against marine organisms such as barnacles, bryoxoans, hydoids, algae, and the like.
This argument is not found persuasive since the present inventors have demonstrated the antifouling paints are used in acrylate paints as well as gum rosin based compositions comprising other components such as Laroflex MP25, chlorinated paraffin/disperbyk161, talc, red iron oxide, zinc oxide, Cu2O, CuPT, etc. In contrast, claim 1 does not recite any amounts or the aforementioned components, and can include any biocide known to mankind. Hence, the claims are not commensurate in scope with the showing of improved properties.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764