DETAILED ACTION
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 .
Status of Application
Claims 1-15 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive. The Applicant argues that the prior art fails to teach a coating agent only consisting of components (A) and (B). The Applicant points to the additional components of Aine. However, in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Aine is being supplied to teach the inclusion of a polyol ester in Mori’s coating agent consisting of only component (A), wherein the combination of the references will yield a coating agent consisting of just component (A) from Mori and (B) from Aine.
With respect to claim 7, the transitional phrase “consisting essentially of” has been interpreted as “comprising” for the purposes of searching and applying prior art as there is no clear indication in the specification or claims of what the basic and novel characteristics actually are.
Finally, Applicant argues that the effect of the claimed invention is a composition excellent in lipophilicity and abrasion resistance and this is not disclosed or suggested by Mori or Aine. However, the Examiner disagrees and notes that Mori teaches the coating agent being lipophilic and having abrasion resistance (0001). Therefore, the rejections are maintained as presented below.
Claim Rejections - 35 USC § 103
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.
1. Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (WO 2019/159476, of which U.S. PGPUB No. 2020/0369887 is referenced as an English equivalent) in view of Aine (CN 101161756, of which the English machine translation is provided and referenced).
I. Regarding claims 1-6, Mori teaches a coating agent composition for a surface treatment agent (abstract), wherein the coating agent composition consists of an organosiloxane (abstract) having the formula
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(page 5), which meets the limitations of the formula as claimed in claims 1-5. Mori fails to teach the inclusion of a polyol ester including a condensate of a polyhydric alcohol selected from the group as claimed in claim 6 with a fatty acid, wherein the ratio of the components A:B is greater than 0.1 and less than 10.
However, Aine teaches including a polyol ester which is a condensation product of a fatty acid, such as oleic acid having 18 carbon atoms and neopentyl glycol (middle of page 5) in a surface treatment agent composition (abstract and title), which may additionally include an organosiloxane (top of page 5). Aine further teaches the ratio of the siloxane component to the polyol ester being a range which overlaps the claimed range (middle of page 5, the siloxane can be present in 1-30 parts and the polyol ester can be present in 1-30 parts, and note that overlapping ranges are prima facie evidence of obviousness). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mori’s composition by including a polyol ester as disclosed by Aine in a ratio of the organosiloxane to polyol ester overlapping the claimed range as disclosed by Aine. One would have been motivated to make this modification as Aine teaches that the polyol ester in combination with organosiloxane provides improved anti-adhesive and release properties (top of page 5).
II. Initially, it is noted that the transitional phrase “consisting essentially of” is interpreted as “comprising” for the purposes of searching and applying prior art as there is no clear indication in the specification or claims of what the basic and novel characteristics actually are.
Regarding claims 7-12, 14 and 15, Mori in view of Aine make obvious the coating agent composition as claimed (see above), wherein components (A) and (B) are present in 1-30 parts (see above, and note that overlapping ranges are prima facie evidence of obviousness), and wherein the coating agent is present in an amount of 0.01-10 parts by weight based on 100 parts by weight the coating agent and solvent together (see Mori at 0107). Furthermore, Mori teaches a surface treatment agent containing the coating agent composition (abstract), a solvent (0106) and a hydrolysis condensation catalyst (0108) that is capable of providing a cured film having an oleic acid contact angle of 30º or less at 25 ºC and a relative humidity of 40% (0445 and Table 1 at 0451), and an article having a cured film of the surface treatment agent on its surface (0110-0113), wherein the surface can be glass, quartz or ceramics (0112). Therefore, Mori in view of Aine also make obvious claims 7-12, 14 and 15.
III. Regarding claim 13, Mori in view of Aine make obvious an identical composition including only the two components as claimed (see above). Therefore, given an identical coating agent composition, that composition will inherently have the rubbing resistance against steel wool as claimed when evaluated in the manner as claimed. Therefore, Mori in view of Aine also make obvious claim 13.
Conclusion
Claims 1-15 are pending.
Claims 1-15 are rejected.
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.
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/ROBERT S WALTERS JR/
May 22, 2026Primary Examiner, Art Unit 1717
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