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 .
Specification
The disclosure is objected to because of the following informalities:
The use of terms such as (but not limited to) “Owatrol” which are trade names or marks used in commerce has been noted in this application. The terms should be accompanied by the generic terminology; furthermore, the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claims 8 and 11 are objected to because of the following informalities:
Claim 8 is missing a space (“ “) between the number 6 and the word “to” in line 2.
Within claim 11, the word polysiloxane is mis-spelled as “polysiloxan” in line 4.
Appropriate correction is required.
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.
Claim 12 is 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 claim 12, “TFZ” appears to be a misspelling of “TFC,” in reference to TFC silicone rubber type 2-1, which is a trade name. If a trade mark or trade name is used in a claim as a limitation to identify of describe a particular material or product, the claim is indefinite (see MPEP 2173.05(u)).
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 6, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schiller (GB 2,039,231 A).
Regarding claim 1, Schiller teaches a composition for coating crosslinked organopolysiloxanes (Abstract), which may optionally comprise a filler and condensation catalyst (p. 5, claim 11), alongside a resin (e.g., polyurethane, p. 5, claim 21) and an organic solvent (p. 3, lines 21-36).
The optional catalyst within the formulation of Schiller reads on the claimed limitation requiring that the catalyst is “configured to vulcanize rubber mixtures” because Schiller teaches that the catalyst is a condensation catalyst (p. 2, line 61), and further teaches the incorporation of organopolysiloxanes having condensable terminal groups (p. 2, lines 56-60). The instant Application contemplates that silicone rubbers are rubber mixtures (c.f. claim 2).
Schiller does not specifically describe the inventive composition as an “emulsion;” however, the inventive composition reads on the claimed “emulsion” because it comprises mixtures of the claimed components, optionally within a solvent as claimed.
The filler within the formulation of Schiller reads on the claimed limitation requiring that the fine particle solid material is “configured as a thickener and an adhesion enhancer” because it is designated as a filler. The instant application places no additional limitations on what characteristics of a filler, beyond being classified as a filler, would qualify or disqualify the configuration thereof as a “thickener” and “adhesion promoter.”
The resin within the formulation of Schiller reads on the claimed “varnish” because the instant application specifies that polyurethanes are suitable “varnish” materials (e.g., claim 6).
Regarding claim 2, as described above, the optional catalyst within the formulation of Schiller is taught as being a condensation catalyst (p. 2, line 61), and further teaches the incorporation of organopolysiloxanes having condensable terminal groups (p. 2, lines 56-60).
Regarding claim 6, as described above, the resin within the formulation of Schiller may comprise inter alia a polyurethane (p. 5, claim 21), which reads on the claimed “PU-varnish.”
Regarding claim 12, as described above, the catalyst within the formulation of Schiller catalyst is a condensation catalyst (p. 2, line 61), and Schiller further teaches the incorporation of organopolysiloxanes having condensable terminal groups (p. 2, lines 56-60). The catalyst of Schiller therefore reads on “catalyst for siloxane” from the claimed list.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Schiller (GB 2,039,231 A) in view of Blizzard (US Patent No. 5,213,617 A).
Regarding claim 3, Schiller teaches all of the limitations of claim 1, as described above. Schiller teaches the incorporation of an organic solvent including, inter alia, toluene (p. 3, lines 21-36), but differs from claim 3 because it is silent with regard to the incorporation of the particularly claimed “white spirit” solvent.
In the same field of endeavor, Blizzard teaches a primer composition for silicone substrates (Abstract), wherein the composition may be advantageously thinned using solvent (col. 5, lines 15-25). Blizzard teaches the use of toluene (col. 5, line 21), and also teaches the use of mineral spirits (col. 5, lines 21-22), which read on the claimed “white spirit.” It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute mineral spirits in place of the toluene within Schiller, as Blizzard teaches mineral spirits alongside toluene as suitable solvents within silicone primer compositions.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Schiller (GB 2,039,231 A) in view of Noda (JP 5,230,907 B2, hereinafter referring to the attached ESPACENET translation).
Regarding claim 4, Schiller teaches all of the limitations of claim 1, as described above. Schiller teaches the incorporation of an organic solvent (p. 3, lines 21-36), but differs from claim 3 because it is silent with regard to the incorporation of an oil from the claimed group.
In the same field of endeavor, Noda teaches a primer composition (Abstract), suitable for use as construction sealants (Abstract) including for use on interior and exterior silicone-based joints ([0002]). Noda teaches the incorporation of solvents, including a plurality of solvents which overlap with those of Schiller (c.f. Schiller p. 3, lines 21-36 and Noda [0097]), and further teaches the incorporation of a substance having an unsaturated group in the molecule which undergoes polymerization upon reaction with ambient oxygen ([0103]), which is useful for improving the weather-resistant adhesion of the composition ([0103]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the oils described by Noda within the formulation of Schiller for the purpose of improving the weather-resistant adhesion of the silicone primer composition. Noda specifically cites the use of linseed oil alongside a series of oils originating from nature (e.g., hemp seed oil, walnut oil, soybean oil, etc). These oils read on “linseed oil” and “natural oil” as claimed.
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Schiller (GB 2,039,231 A) in view of Kuhn (US 2006/0207723 A1).
Regarding claim 5, Schiller teaches all of the limitations of claim 1, as described above. Schiller teaches the incorporation of calcium carbonate and fumed silica fillers (p. 2, lines 109-110), but differs from claim 5 because it is silent with regard to the incorporation of the particularly claimed “glass powder” and/or “tetrapodal zinc oxide” fillers.
In the same field of endeavor, Kuhn teaches primer compositions for silicone rubbers (Abstract), including reinforcing and non-reinforcing fillers such as calcium carbonate and pyrogenically prepared silica ([0092]-[0093]). Kuhn also teaches inter alia that glass powder is a suitable non-reinforcing filler ([0093]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute glass powder in place of the calcium carbonate within Schiller, as Kuhn teaches glass powder alongside calcium carbonate as suitable fillers within silicone primer compositions.
Regarding claim 10, Kuhn further teaches the incorporation of titanium dioxide as an additional filler ([0094]), which reads on the claimed list.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Schiller (GB 2,039,231 A) in view of Barsotti (US Patent No. 4,614,683).
Regarding claim 9, Schiller teaches all of the limitations of claim 1, as described above. Schiller differs from claim 9 because it is silent with regard to the incorporation of polyvinyl pyrrolidone.
In the same field of endeavor, Barsotti teaches coating compositions useful as primers (Abstract), and teaches the incorporation of polyvinylpyrrolidone as a part of a rheology modifying agent which otherwise includes a filler such as fumed silica (col. 4, lines 58-68). Furthermore, as described above, Schiller teaches the optional incorporation of fumed silica (e.g., p. 3, line 126). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate polyvinyl pyrrolidone within the formulation of Schiller as taught by Barsotti for the purpose of controlling the rheology of the primer composition.
Allowable Subject Matter
Claims 7-8 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 7 and 8, Schiller fails to contemplate the claimed compositional limitations. Furthermore, Schiller exemplifies its composition with a formulation containing 47.6 wt% of solvent (p. 4, Examples 1 and 2), which falls outside of the claimed range. Likewise, all of the documents referenced herein fail to contemplate the claimed compositional limitations of silicone primer compositions (e.g., Kuhn contemplates between 50 and 95 wt% of solvent (p. 12, claim 1)).
Regarding claim 11, Schiller is silent with regard to the proportion of the (optionally polyurethane) resin which comprises solvent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762