DETAILED ACTION
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
1. Claims 1-12 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0267872 to Tanino et al. (“Tanino”).
With regard to Claims 1, 4-5, 10-12, 16, and 20-21, Tanino teaches a method of making a coated article comprising applying a first composition comprising a hydrolyzed amine-reactive organosilane compound followed by applying thereon a second composition comprising a condensation-curable polyorganosiloxane (see Abstract; ¶¶ [0054]-[0062], [0101]-[0103]). Tanino teaches that each of the first and second compositions can comprise a silane coupling agent including amino-functional silanes (see ¶¶ [0118], [0125]). By way of examples, the reference teaches depositing first and second compositions comprising hydrolyzed amine-reactive organosilane and amino-functional silane with a condensation-curable polyorganosiloxane featuring divalent units as claimed, including epoxy-functional organosilane (see ¶ [0203]; Tables 2-4). Tanino is further noted as teaching the claimed types of organosiloxane substituents (see ¶¶ [0062]-[0085], [0103]-[0105]).
Tanino teaches it is known in the art to treat glass surfaces with silane compounds (see ¶ [0144]), and that the reinforced antifouling composition to which the reference is directed can be applied to marine vessels and underwater structures (see ¶ [0002]). Although the reference does not expressly teach coating siliceous substrates, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have conducted the process of Tanino on glass marine vessel surfaces in order to form a reinforced antifouling coating thereon, and to have formed the coating in a manner that maintains transparency thereof.
With regard to Claim 2, Tanino teaches the claimed functional groups (see ¶ [0082]).
With regard to Claim 3, Tanino teaches inclusion of catalyst (see ¶¶ [0106]-[0110]).
With regard to Claims 6, 9, and 18, Tanino teaches the claimed types of amino-functional silanes for inclusion with the organosiloxane composition (see ¶¶ [00118]-[0128]).
With regard to Claims 7 and 17, Tanino teaches the claimed functionality in the organosiloxane of the second composition (see ¶¶ [0122], [0093]-[0097]).
With regard to Claim 8, Tanino teaches methoxy-functionality and inclusion in the polyorganosiloxane composition at amounts below the claimed amount (see ¶¶ [0126]-[0127]).
With regard to Claim 19, Tanino teaches the claimed types of catalysts (see ¶¶ [0106]-[0107]).
Response to Arguments
Applicant’s arguments filed 01 June 2026 have been fully considered. Applicant argues that the previously-asserted reference is disqualified as prior art due to common ownership (see Response at Pg. 12). This argument is found persuasive. Accordingly, the previous grounds of rejection are withdrawn. New grounds of rejection are presented herein. This action is Non-Final.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1712
