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 .
Request for Continued Examination
Request for Continued Examination dated 12/24/2025 is acknowledged. Claims dated 12/27/2025 will be examined. New rejections will be stated as necessary. Claim 7 is cancelled. For purpose of clarity the rejections will be restated separately for composition claims and method claims.
Response to Arguments
With respect to teachings of Onai (US 2014/065396) applicants argued that Onai’s composition for second layer contains hydrophilic group containing organic solvent and silicone resin emulsion emulsified in a surfactant. These components are excluded by term “consisting essentially of”.
First, term “consisting essentially off” does allow additional components which will not chemically affect the composition. Having said that, applicant’s independent claims to enable use of solvents as optional additive, examples include pigment.
With respect to component b-3 as defined in [0090-0092] include emulsion of NP2609 which is emulsion of amino-modified silicone resin. Having said that, the instant claims are not limited to only one amine modified silicon resin, especially when utilizing surfactants or emulsifier to form an emulsion is implied.
With respect to [0078] and [0079] of Onai discloses additional components, however these components are part of the composition A or first layer and not the second layer which is utilized as grounds of rejection.
Additionally, while components of claim 1 are limited to consisting essentially of the components being water, alcohol, amino functional silicone emulsion optionally a preservative and/or solvents, claim 2, which defines amino functional silicone emulsion as comprising, aminoalkyl-functional organopolysiloxane fluid and water. Claim 2 therefore still opens the meaning of the amine functional silicone to other components thereby rendering “consisting essentially of” or “consisting off” as to encompass “comprising” at least for the purpose of independent claims.
Rejection over Onai will be restated to reflect newly amended claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Instant claim 3 recites following:
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Claim 3 depends on claim 2 which recites following:
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Claim 3 fails to narrow the embodiments of instant claim 2, because amine/alkoxy functionality is outside of amine/alkyl functionality
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 § 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 11-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Onai (US 2014/0063396).
With respect to claims 1, 4, 5, 11, 12, 14, 15, Onai discloses composition for example B11 which comprises (b1) monoamino-modified polysiloxane K-865, Terminal diamino modified polysiloxane X-22-3939 (b2) and aminomodified silicon resin emulsion NP2609 (b3) to form an emulsion for layer 2. Remaining components include alcohol which is a mixture of isopropyl alcohol and ethanol in amount of 10 parts, wherein water comprises 73 parts. The content of amine modified siloxane component is 27 parts for that particular example.
Having said that the content of b1 can be in a range of 0.5-15 parts, content of b2 can be in a range of 0.1-10 parts, content of b3 can be in a range of 0.1-20 parts [0022-0024]. Solvent can be utilized in amount of 0.1-25 parts [0025] and water content can be 30-98.4 parts [0026].
With respect to claims 2, 3, 13, utilized in example B11 emulsion NP 2609 is aminopropyl modified dimethylpolysiloxane.
With respect to claims 6 and 16, Onai discloses use of anti-rust agent which preserves the surface of automobile from rusting.
With respect to claim 17, combinations of alcohols in B11 reads on alcohol and solvent.
Claims 8-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Onai (US 2014/0063396).
With respect to claims 8, 9, 18 and 19, Onai discloses composition for example B11 which comprises (b1) monoamino-modified polysiloxane K-865, Terminal diamino modified polysiloxane X-22-3939 (b2) and aminomodified silicon resin emulsion NP2609 (b3) to form an emulsion for layer 2. Remaining components include alcohol which is a mixture of isopropyl alcohol and ethanol in amount of 10 parts, wherein water comprises 73 parts. The content of amine modified siloxane component is 27 parts for that particular example.
The composition of Onai is applied to exterior part of the automotive surface [0064], preferably painted surface to provide water repellency, and gloss [0014].
With respect to claims 10 and 20, the composition of Onai is applied to the surface via, for example, wet cloth, wherein wet cloth is a fabric having retention properties [0063]
Claims 1-6are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nishimura (JP 2009-040936 translation provided).
With respect to claims 1, 4 and 5, Nishimura discloses a polishing composition for automobiles providing a water repellent coating. Wherein amino-modified dimethylpolysiloxane (claim 1) is utilized in amount of 0.2-1 wt.% (claim 2) alcohol in amount of 0.1-40 wt.% (claim 2) balance being water. The composition may further comprise a water soluble solvent (claim 8) in amount of 0.1-5 wt.% [0018]. See also [0011]. While Nishimura does disclose other components they are optional and even if preferred [0012].
With respect to claims 2 and 3, the amino modified silane is amino alkyl silicone oil. The ends and chain are modified to include amino group [0022].
With respect to claim 6, Nishimura states that preservatives can also be utilized as optional additive [0030].
Claims 8-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nishimura (JP 2009-040936 translation provided).
With respect to claim 8, Nishimura discloses a polishing composition for automobiles providing a water repellent coating. Wherein amino-modified dimethylpolysiloxane (claim 1) is utilized in amount of 0.2-1 wt.% (claim 2) alcohol in amount of 0.1-40 wt.% (claim 2) balance being water. The composition may further comprise a water soluble solvent (claim 8) in amount of 0.1-5 wt.% [0018]. See also [0011]. While Nishimura does disclose other components they are optional and even if preferred [0012].
In the method of Nishimura, the amino modified polymer is dissolved in alcohol [0022] before it is dispersed in water. Applying the composition to automobile surface results in evaporation of the alcohol resulting in coated surface [0031] having gloss. The composition can be also emulsified.
With respect to claim 9, the composition of Nishimura is applied to black bonnet, commonly known as hood (see examples)
With respect to claim 10, the composition is sprayed, spread and whipped.
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.
Claims 1-6 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 14-16 of copending Application No. 17/915738 (‘738). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 or ‘738 discloses composition for automotive polish comprising aminofunctional silicone emulsion, mixture of surfactant which are viewed as stabilizers for the emulsion and therefore encompassed by the term “essentially of”. The composition further comprises a preservative and water.
Claim 2 of ‘738 discloses that the amino functional organopolysilane is also mixed with glycol which is an alcohol.
Claims 1 and 2 of ‘738 meet instant claims 1 and 6
Claim 3 of ‘738 discloses that the aminofunctional silane is amine alkyl copolymer which also meets instant claims 2 and 3.
Claim 4 of ‘738 recites content of aminofunctional silicon emulsion to be in amount of 0.5-15%, which meets instant claim 5.
Claim 14 of ‘738 discloses using the claimed composition to treat automotive surface which meets instant claim 8.
Claim 15 of ‘738 defines automotive surface as tire, wheel, glass, paint, hood, roof, trunk and the like. This claim meets the limitation of instant claim 9.
Claim 16 pf ‘738 states that the composition is applied by means or aerosol, trigger sprayer, a sponge or combination thereof. This claim meets instant claim 10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
**** please note that ‘738 invention was allowed recently but the patent number has not been assigned.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 February 26, 2026