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 Arguments
In their response dated 7/1/2026 applicants amended their claims to include term “consisting of”. While term “consisting off” excludes presence of additional components, after careful reconsideration of the invention as a whole, it is examiner’s position that term “consisting of” limits only components outside of the emulsion. The emulsion itself is not confined by the term “consisting of”.
Additionally, another Double Patenting rejection will be stated over application 17/986,111 which was allowed on April 8, 2026. Patent number has not been assigned yet.
It is noted that during the interview conducted on June 4, 2026 the examiner indicated that the amendment as presented would overcome the prior art. However, the examiner made a mistake, by not consulting instant specification as filed for the definition of the emulsion to ensure that term “consisting off” would apply to the emulsion in the same way as to the rest of the composition. The examiner apologizes for the oversight, consequently another Non-final office action is issued because updated search resulted in yet another application filed directed to the same subject matter.
Instant specification as filed originally defines emulsion in following manner that is not only non-limiting but also confusing.
In [0013] amino functional silicone emulsion is defined as comprising an amino functional organopolysiloxane fluid and water. Term comprising includes other components that can be utilized to make an emulsion.
In [0013] specification discloses an example of amino functionalized silicone emulsion , for examples Siltech E-4135 in water. By manufacturer’s own definition this component is 35% solids microemulsion which is dispersible in water not soluble in it.
In [0014] specification states that the amino functional silicone emulsion is soluble in water, which is confusing and contrary to what is disclosed by manufacturer especially when the purpose of surfactant is to minimize interaction between amino group of the silicone compound and water. Silicon compound itself is polydimethylsiloxane does not dissolve in water or ethanol so it is a physical dispersion not true solubility.
The [0014] states further that the amino-functional silicone emulsion has pH of 3-7. To obtain acidic pH, emulsions have to be prepared with surfactant and organic acid (See US 4,388,437). Specification does not disclose use of organic acid. This is further confusing because in Siltech E-4135 both surfactants and amino-modified polysiloxane are generally neutral to slightly basic in aqueous medium and their pH depends on the further formulation and dilution.
In [0029] applicants further utilize term “comprises” when defining emulsion.
In view of applicant’s own definition and the scope of term “emulsion” is open ended use of “consisting of” will reflect the remaining composition not the emulsion itself. The applicants failed to clearly describe the invention in order particularly point out and distinctly claim the scope of the term “emulsion”.
Broadest reasonable interpretation as defined in [0051] the amino functional silicone emulsion comprises amino functional organopolysiloxane fluid (it is an oil) and water, wherein amino-alkyl functional organopolysiloxane can be selected from more than 1 amine functionalized silicon oil. Instant specification is silent with respect to the exact amine utilized to functionalize the silicone polymer, and additional silicone oils do not have to be functionalized in the same manner. As defined in the instant invention term “comprising” is viewed as non-limiting with respect to the actual composition of the emulsion itself.
Prior art of Onai as applied against instant claims, specifically composition of layer 2, comprises:
Component b1) amino modified polysiloxane fluids (oils) which are insoluble in water and alcohol. KF-865 is an amine modified polydimethylsiloxane (see attached brochure)
Component b2) X-22-161B is also an amine modified polydimethylsiloxane fluids (oils) not soluble in water.
Component b3) is an amino modified polydimethylsiloxane under tradename NP 2609 emulsified with non-ionic surfactants.
Specifically, each one of those oils, at least for the purpose of claim 1, is not soluble in water and it will form silicon oil emulsion in water.
Furthermore, updated search provided references which are directed to amino functionalized silane. The references include Yan (US 5,391,400), Ona (US 4,541,936), Sanders (US 4,247,330).
Onai is maintained because the applicant’s definition of emulsion encompasses other components not disclosed in the claims. Consequently, any aminosilane fluid (oil) of Onai will form silicon oil in water emulsion.
Other noteworthy disclosures that do not qualify as a prior art include: US 12,031188 and US 12,522,882, US 2023/0151245 and US 20230151301 all to Mahfouz, US 2023/0131597 to Rajeev, US 2023/0130959 to Uchiyama.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sanders (US 4,247,330).
With respect to claim 1, Sanders discloses aqueous emulsion composition wherein emulsion comprises 1) mixture of silane compounds a) an amino functional silicon fluid, b) a cyclic siloxane; 2) aliphatic alcohol which has to be soluble in water, and 3) carboxylic acid to neutralize the amino groups and 4) emulsifiers (Abstract).
The emulsion is formed by mechanically mixing the components then adding water with continuous mixing then adding emulsifier. The content of water can be adjusted based on desired dilution (col. 7, l. 3-13) such that the content of silicone is at minimum 0.02%. For the optimum performance, the composition comprises 5-35 wt.% of silicone compound (col. 6), emulsifiers in amount of 5-25 wt.% (col. 6), alcohol 1-20 wt.% (col. 6), balance being water. When all components are utilized in their lower preferred content, the water would be 89 wt.%. If all components are utilized in their highest content the water would be as low as 30 wt.%. Preservative being optional.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, that content of water overlaps with the content of water of the instant invention. Furthermore, one of ordinary skill in the art would have understood what Sanders means by diluting the emulsion as needed, and that the content of water can actually be higher than 89 wt.% to meet the minimum silane content of 0.2 wt.%.
With respect to claims 2 and 3, the amino functional silanes are depicted in col. 4, which meet the limitation of aminoalkyl functionalized organopolysiloxanes.
With respect to claim 4, silicone compound is utilized in amount of 5-35 wt.% (see rejection of claim 1) which meets claimed range.
With respect to claim 5, the content of alcohol of 1-20 wt.% (see rejection of claim 1) which meets claimed range.
With respect to claim 6, Sanders teaches use of optional additives such as preservatives (col. 6, l. 67).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sanders (US 4,247,330).
With respect to claims 8 and 9, Sanders discloses composition that forms protective coatings on hard surfaces. Specifically, the hard surfaces are those of automobile which are washed by automatic carwash, which would inherently include at least hood, roof, and other exterior parts (see col. 1). The composition is an aqueous emulsion composition wherein emulsion comprises 1) mixture of silane compounds a) an amino functional silicon fluid, b) a cyclic siloxane; 2) aliphatic alcohol which has to be soluble in water, and 3) carboxylic acid to neutralize the amino groups and 4) emulsifiers (Abstract).
The emulsion is formed by mechanically mixing the components then adding water with continuous mixing then adding emulsifier. The content of water can be adjusted based on desired dilution (col. 7, l. 3-13) such that the content of silicone is at minimum 0.02%. For the optimum performance, the composition comprises 5-35 wt.% of silicone compound (col. 6), emulsifiers in amount of 5-25 wt.% (col. 6), alcohol 1-20 wt.% (col. 6), balance being water. When all components are utilized in their lower preferred content, the water would be 89 wt.%. If all components are utilized in their highest content the water would be as low as 30 wt.%. Preservative being optional.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, that content of water overlaps with the content of water of the instant invention. Furthermore, one of ordinary skill in the art would have understood what Sanders means by diluting the emulsion as needed, and that the content of water can actually be higher than 89 wt.% to meet the minimum silane content of 0.2 wt.%.
With respect to claim 10, the emulsion is diluted with water, wherein in automatic car washes water is applied to the car surface using nozzles and sprays. Action is triggered by car approaching the specific section of the automatic wash.
Claims 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Onai (US 2014/0065396) in view of evidence in Shin-Etsu product datasheet.
With respect to claim 11, Onai discloses protective composition of layer II the composition comprises [0033-0038, 0053]:
Amino functionalized polyorganosiloxane (b-1)
Amino functionalized silicone (b-2)
Amino-functionalized silicone emulsion b-3)
Organic solvent (b-4), and
Water in the amount of 30-98.4 wt.%
Wherein organic solvent is a hydrophilic solvent that are miscible with water. The solvents include alcohols, where isopropanol is exemplified [0094].
Component b1) amino modified polysiloxane fluids (oils) which are insoluble in water and alcohol. KF-865 is an amine modified polydimethylsiloxane (see attached brochure_
Component b2) X-22-161B is also an amine modified polydimethylsiloxane fluids (oils) not soluble in water.
Component b3) is an amino modified polydimethylsiloxane under tradename NP 2609 emulsified with non-ionic surfactants.
All silicon fluids (oils) of Onai are the same polymer (PDMS) modified with amine.
Under broadest reasonable interpretation and the fact that specification cannot be read into the claims, term amino-functional silicone is interpreted broadly to include more than one amino-functionalized silicone with varying degrees of amine substitution.
With respect to claim 12, amino-functionalized emulsion (b-3) is present in an amount of 1-20 parts [0036].
With respect to claim 13, amino-functionalized silicone includes amino functionalized organopolysiloxane (KF-865) which is based on dimethylsilane (see brochures and description in the rejection of claim 1)
With respect to claim 14, total content of amino functional silicone is at minimum 0.06 wt.% [0034-0035].
With respect to claim 15, alcohol is utilized in an amount of 0.1-25 wt.% [0037].
With respect to claim 16, Onai discloses anti-rusting agent [0060] which preserve the surface of the vehicle from rusting.
With respect to claim 17, component b-4 of Onai is a solvent (alcohol) and these solvents can be utilized in mixtures in order to adjust for viscosity, flashpoint, volatility and the like [0053]. Example B-10 discloses use of isopropanol in combination with another alcohol.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Onai (US 2014/0065396).
With respect to claims 18 and 20, Onai discloses protective composition of layer II the composition comprises [0033-0038, 0053]:
Amino functionalized polyorganosiloxane (b-1)
Amino functionalized silicone (b-2)
Amino-functionalized silicone emulsion b-3)
Organic solvent (b-4), and
Water in the amount of 30-98.4 wt.%
Wherein organic solvent is a hydrophilic solvent that are miscible with water. The solvents include alcohols, where isopropanol is exemplified [0094].
Under broadest reasonable interpretation and the fact that specification cannot be read into the claims, term amino-functional silicone is interpreted broadly to include more than one amino-functionalized silicone with varying degrees of amine substitution.
Composition of Onai is utilized to treat surface of automobiles, where the composition is applied to the surface of the vehicle using cloth [0124].
With respect to claim 19, the composition is applied to the exterior parts of the vehicle [0153]
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 11-17 of copending Application No. 17/986,111 (‘111). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘111 discloses a composition comprising non-ionic amino functional silicone emulsion, a preservative and water. This meets instant claim 1, because alcohols such as isopropanol or ethanol are also preservatives.
Claim 2 of ‘111 is the same as instant claim 2.
Claim 3 of ‘111 recited content of emulsion of 0.1-15 wt.% which meets the range of 0.5-25 wt.% of instant claim 4.
Claim 4 of ‘111 is the same as instant claim 3 with exception of amine/alkoxy end blocked silicone.
Claim 5 of’111 recites content of preservative to be in a range of 0.01-5 wt.% which meets that range in instant claim 5.
Claim 8 of ‘111 discloses content of water, which meets instant claim 1.
Claim 11 of’111 discloses composition comprising nonionic silicone emulsion, preservative, water and solvent which also meets the limitation of instant claim 1.
Claim 12 of’111 is directed to method of treating automobile surface by applying the composition of the independent claim, which is the same method as that claimed in instant claim 8.
Claim 13 of ‘111 discloses a method where the automotive surface includes a tire, wheel, glass, paint, hood, roof, trunk, an exterior part and combinations thereof. This is the same as instant claim 9.
Claim 14 of ‘111 discloses that the composition is applied using a trigger sprayer, which is also the method of instant claim 10.
Claim 15-17 have the same limitations as claims 12-14 and also meet the limitations of instant claims 8-10.
**** Please note, that the co-pending application ‘111 is allowed, however patent number is not yet available. Consequently, the claims utilized in the rejection are the most recent claims dated 3/11/2026.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 22, 2026
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