DETAILED ACTION
Claim Rejections - 35 USC § 112
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.
Claims 43 and 44 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 43 and 44: The claims are dependent on cancelled claim 9. For the purpose of further examination, it is taken to mean claim 43 depends on claim 1.
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.
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 1-8, 11, 12, 14-19, 27-44, 47, 51, and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US 2019/0390084) in view of Shudo et al. (US 2018/0346722) and Kasler (US 2006/0058436).
Regarding claims 1, 3, 27-31, 43, and 44: Fan et al. teaches a multi-layered composite comprising a substrate/base layer, an adhesive layer/bottom glue layer, and a topcoat layer/surface glue layer (para. 8). The topcoat layer is comprised of a vinyl MTQ silicon resin (para. 26) having the structure
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(para. 26). R1, R2 and R3 can all be alkenyl (para. 28) and there is a vinyl group in the second SiO unit, so that there can be at least two units of the claimed formula (I-1) having at least one alkene function. Fan et al. also teaches a crosslinking organohydrogensiloxane/organic hydrogenated polysiloxane (para. 20) having at least two hydrogen atoms bonded to a silicon atom in each molecule (para. 35), which overlaps with three. Fan et al. also teaches a catalyst (para. 14).
Fan et al. does not teach the hydrogenated polysiloxane comprises at least about 25 wt% of a three-dimensional net-like organohydrogensiloxane resin. However, Shudo et al. teaches a similar composition where component (B) has at least 3 silicon-bonded hydrogen atoms per molecule (para. 35), has the structure
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(para. 35), which overlaps with the claimed structure, and can be 100% a three-dimensional network (para. 39). Since b is 0.7-2.1 and c is 0.001-0.1 (para. 35), these are average values, meaning sometimes b and c are zero, and the unit is Q. Fan et al. and Shudo et al. are analogous art since they are both concerned with the same field of endeavor, namely polysiloxane compositions using alkenyl groups and Si-H groups as crosslinking points. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the crosslinker of Shudo et al. in the composition of Fan et al. and would have been motivated to do so to introduce more crosslinking groups per molecule in order to affect the hardness of the coating.
Fan et al. also does not teach the fillers that are spherical particles of silicone resin material having the claimed polysiloxane formula. However, Kasler teaches a similar coating comprising spherical particles having a R-SiO3/2 structure (abstract), where R is alkyl (para. 42) such as methyl (para. 78). Fan et al. and Kasler are analogous art since they are both concerned with the same field of endeavor, namely polysiloxane coatings. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the fillers of Kasler in the composition of Fan et al. and would have been motivated to do so to impart non-sticking, water-repelling, abrasion-resistance, and surface slip properties.
Regarding claims 2 and 32-34: Fan et al. teaches both a vinyl MTQ silicon resin (para. 12) and a spherical vinyl MQ silicon resin (para. 13). The vinyl MTQ silicone resin can be considered the claimed component (A’) since a T unit is present while the sum of the vinyl MTQ resin and the spherical vinyl MQ silicon resin is the claimed component (A) since both have the required vinyl/alkene functions. Fan et al. teaches the vinyl MTQ/component (A’) is in an amount of 1 to 60 parts and the spherical vinyl MQ silicon resin is in an amount of 10-100 parts (para. 12-13). Therefore, Fan et al. teaches 1/(100+1) =0.99 wt% to 60/(60+10) =85.7 wt% (A’), which overlaps the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of (A’) and would have been motivated to do so since Fan et al. teaches it is an acceptable amount to achieve the disclosed invention.
Regarding claims 4, 35 and 36: Fan et al. teaches the basic claimed composition as set forth above. Not disclosed is the amount of M units to Q units in (B’). However, Shudo et al. teaches the organohydrogenpolysiloxane has structure:
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(para. 35) where b+c is 0.8 to 3.0 (para. 35). This range is the average of b+c values for 1 molecular unit. If one were to choose b+c is on average 3.0, and there were 10 siloxane units, the b+c would equal 30. Since the structural unit M has 3 R groups per 1 silicon atom, this means all 10 units would have 3 R groups, and therefore, when b+c = 3.0, that means all units are M units. Looking to b+c of 0.8, that means when there are 10 siloxane units, there are only 8 R groups total across all 10 units. When an M unit is selected such that each possible unit has 3 R groups, that means that out of the 10 total units 8/3 = 2.67 of the units are M units and the rest have no R groups, meaning they are Q units. Therefore, the range disclosed in Shudo et al. can be 2.67 mol M units to 7.33 mol Q units, which is 2.67/7.33 = 0.36 mol/mol and greater (the “and greater” meaning the disclosure that all units are M units/b+c = 3.0). This disclosure overlaps the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of M and Q units and would have been motivated to do so since Shudo et al. teaches this type of organohydrogenpolysiloxane functions to crosslink alkenyl containing organopolysiloxanes.
Regarding claims 5, 37 and 38: Fan et al. teaches 0.5-4.5 total moles active hydrogen to total moles of vinyl groups (para. 65), which overlaps the claimed ranges.
Regarding claim 6: Fan et al. teaches the basic claimed composition as set forth above. Not disclosed is the particle size of component (D). However, Kasler teaches an average particle size of 0.1-100 microns (para. 91), which overlaps the clamed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the particle size of Kasler and would have been motivated to do so to control the coefficient of friction and abrasion.
Regarding claims 7, 41 and 42: Fan et al. teaches the amounts of the components in paragraphs 41-48. The amount of the spherical particulate filler is within a range of 12% (30/(100+8+45+30+4+2+45+10)) and 37.9% by weight (80/(100+1+25+80+0.1+0.01+5+0)).
Regarding claim 8: Fan et al. teaches the spherical particle is a spherical silicone resin (para. 44).
Regarding claims 11 and 47: Fan et al. teaches 30-80 parts of the spherical silicone particles based on 161.11 (100+1+25+30+0.1+0.01+5) to 294 (100+8+45+80+4+2+45+10), which is 18.6-27 wt%, which overlaps the claimed range.
Regarding claim 12: Fan et al. teaches an inhibitor (para. 46).
Regarding claim 14: While Fan et al. does not specifically teach the abrasion resistance, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II).
Regarding claim 15: Fan et al. teaches the adhesive layer is a silicone adhesive (para. 49-56).
Regarding claim 16: Fan et al. teaches the adhesive layer has no three-dimensional net like organohydrogensiloxane and no precipitated silica, spherical silicone or polyamide particles (para. 49-56).
Regarding claims 17, 51 and 52: Fan et al. teaches 2-7 parts organic hydrogenated polysiloxane/adhesive promoter which is 0.8-5.4 wt.% (para. 49-56).
Regarding claim 18: Fan et al. teaches vinyltrimethoxy silane (para. 122).
Regarding claim 19: Fan et al. teaches the base layer is a polyvinyl chloride fabric (para. 38).
Regarding claims 39 and 40: Fan et al. teaches the particle size is 1-10 µm (para. 75), which overlaps the claimed ranges.
Claims 10, 45 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US 2019/0390084) in view of Shudo et al. (US 2018/0346722) and Kasler (US 2006/0058436) as set forth above and in view of Furukawa et al. (US 2013/0116340).
Regarding claims 10, 45 and 46: Fan et al. teaches the basic claimed composite as set forth above. Not disclosed is the D unit. However, Furukawa et al. teaches a spherical silicone powder having mainly D units (para. 140). Fan et al. and Furukawa et al. are analogous art since they are both concerned with the same field of endeavor, namely polysiloxane compositions. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to us the mainly D unit powder of Furukawa et al. in the composition of Fan et al. and would have been motivated to do so since Furukawa et al. teaches it is softer and more elastic.
Claims 13, 48-50 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US 2019/0390084) in view of Shudo et al. (US 2018/0346722) and Kasler (US 2006/0058436) as set forth above and in view of DiZio et al. (US 2007/0100306).
Regarding claims 13 and 48-50: Fan et al. teaches the basic claimed composite as set forth above. Not disclosed is the coat weight. However, DiZio et al. teaches 20-40 gsm (para. 14). Fan et al. and DiZio et al. are analogous art since they are both concerned with the same field of endeavor, namely silicone coatings. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use toe coat weight of DiZio et al. in the composite of Fan et al. and would have been motivated to do so in order to have sufficient coverage.
Response to Arguments
Applicant's arguments filed March 12, 2026 have been fully considered but they are not persuasive. After further search and consideration, the reference Kasler is used to teach the newly claimed feature.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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