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 Claims
Claims 1-19 are pending in the current application.
Claim 19 is withdrawn from consideration in the current application.
Election/Restrictions
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 22, 2026.
Applicant's election with traverse of Group I (claims 1-18) in the reply filed on April 22, 2026 is acknowledged.
The traversal is on the grounds that the Restriction Requirement did not support the allegation that the product as claimed can be made by another materially different process.
This is not found persuasive, because the Restriction Requirement states “the resin composition can be cured by utilizing chemical crosslinking or accelerating agents.” The MPEP at 806.05(f) states that the “[a]llegations of different processes or products need not be documented.” Therefore, prior art supporting the allegation of chemical-based curing with crosslinking and/or accelerating agents does not need to be provided. The Restriction Requirement dated February 24, 2026 provides viable alternative processes, is considered to satisfy the conditions set forth in MPEP 806.5(f), and is deemed proper.
Applicant also argues that a serious search burden does not exist.
This is not persuasive, because Group I and Group II each pertain to different statutory categories having different classifications. Group I pertains to a product classified in C08F290/068 and Group II pertains to a method classified in C09J3/24. Therefore, additional search and consideration are required to address the different terminology and different classification areas associated with the different statutory categories.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1, 2, 5-11, 13, 14, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (JP H07179849 A).
Regarding Claim 1, Ono teaches a resin composition comprising (B) an acrylic-silicone graft copolymer containing a constitutional unit based on a silicone macromonomer that contains a polyalkylsiloxane unit represented by chemical formula 4 (i.e., silicone macromonomer (X)) and a constitutional unit based on an alkoxysilane monomer represented by chemical formula 10 that satisfies Formula (1) of claim 1 with M as Si (i.e., monomer (Y)) (Ono, Pgs 3-6); and (A) an organosilicon compound represented by chemical formula 3 (i.e., component consisting of a silane compound or a partially hydrolyzed condensate thereof) (Ono, Pgs 2-3). Ono teaches the silicone macromonomer makes up 5-80 parts by weight of the acrylic-silicone graft copolymer, the alkoxysilane monomer makes up 0-30 parts by weight of the acrylic-silicone graft copolymer, and a third monomer makes up 20-95 parts by weight of the acrylic-silicone graft copolymer; therefore a total of the silicone macromonomer and the alkoxysilane constituent units makes up a ratio of (5-130) to (20-95) relative the third monomer, and yields a mass% of 5/(5+95)*100 = 5.0% by mass to 130/(130+20)*100 = 86.7% by mass (Ono, Pg 5). Ono’s range overlaps the claimed range of 55% by mass or more, and therefore, renders obvious the claimed range (MPEP 2144.05).
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Ono - silicone macromonomer
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Ono – (A) organosilicon compound
Regarding Claim 2, Ono teaches (A) the organosilicon compound is represented by chemical formula 3 that satisfies Formula (b) of claim 2 when c = 0 (Ono, Pgs 2-3).
Regarding Claim 5, Ono teaches (B) the acrylic-silicone graft copolymer has a weight average molecular weight (Mw) of 5,000 to 500,000 (Ono, Pg 6). Ono’s Mw range overlaps the claimed range of 3,000 to 400,000, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 6, Ono teaches (A) the organosilicon compound has a weight average molecular weight (Mw) of 2,000 or less (Ono, Pg 3). Ono’s Mw range overlaps the claimed range of 500 or more, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claims 7 and 8, Ono teaches (A) the organosilicon compound can be a partially hydrolyzed condensate of tetraalkoxysilane by conducting a polycondensation reaction in the presence of a catalyst, where the weight average molecular weight is 2,000 or less (Ono, Pgs 2-3, 7-9). Ono’s Mw range overlaps the claimed range of 300 to 3,000, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claims 9, 10, and 11, Ono teaches the resin composition comprises a catalyst (i.e., initiator) that is a photopolymerization initiator such as a photobase generator like a quaternary ammonium salt (Ono, Pgs 5, 8-9).
Regarding Claim 13, Ono teaches a cured film-forming product formed from the resin composition discussed above for claim 1 that is coated on the surface of an object (Ono, Pgs 8-9).
Regarding Claim 14, Ono teaches a cured film-forming product formed from the resin composition discussed above for claim 1 that is coated on the surface of an object (Ono, Pgs 8-9). One teaches the cured film-forming product exhibits excellent water repellency and water absorption prevention performance (Ono, Pgs 8-12). Although Ono measures water repellency performance differently than the method of claim 14, one of ordinary skill in the art would readily understand that these water repellency performance properties are substantially similar, because both products are formed of substantially similar compositions and both seek the same goal of providing excellent water repellency and water absorption prevention performance. If Ono’s cured film-forming product was measured with the same method of claim 14, one of ordinary skill in the art would expect Ono’s water repellency performance to be substantially similar to the claimed performance where any differences would be minor and obvious. Therefore, Ono’s water repellency results are considered to render obvious the performance requirements of claim 14 with a predictable and reasonable expectation of success (MPEP 2143, MPEP 2144.05).
Regarding Claims 17 and 18, Ono teaches Ono teaches a cured film-forming product formed from the resin composition discussed above for claim 1 coated on the surface of an object (Ono, Pgs 8-9). Ono teaches the resin composition comprises a catalyst (i.e., initiator) that is a photopolymerization initiator such as a quaternary ammonium salt (Ono, Pgs 5, 8-9).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (JP H07179849 A) as applied to claim 1 above, and further in view of Yamashita et al. (JP 2000239601 A, herein English machine translation utilized for all citations).
Regarding Claims 3 and 4, Ono teaches the resin composition as discussed above for claim 1. Ono teaches the resin composition is for forming a water resistant/repellent coating layer (Ono, Abstract, Pgs 1-2). Ono teaches the silicone macromonomer makes up 5-80 parts by weight of the acrylic-silicone graft copolymer (Ono, Pg 5).
Ono remains silent regarding the weight average molecular weight of the silicone macromonomer being 500 to 40,000; remains silent regarding the silicone macromonomer being 15-60% by mass of the copolymer; and remains silent regarding the alkoxysilane monomer being 40-85% by mass of the copolymer.
Yamashita, however, teaches a polymer resin composition for forming a hydrophobic (i.e., water resistant/repellent) coating layer (Yamashita, Abstract, [0001]). Yamashita teaches the resin composition comprises alkoxsilyl-siloxane copolymer formed from 1-40% by mass of a siloxane macromonomer, 5-50% by mass of a hydrolyzable-alkoxysilyl-containing monomer, and 10-94% by mass of other copolymerizable monomers (Yamashita, Abstract, Pgs 1-3). Yamashita’s 1-40% by mass macromonomer content overlaps the claim 4 range of 15-60% by mass, and therefore, renders obvious the claimed range (MPEP 2144.05). Yamashita’s 5-50% by mass hydrolyzable-alkoxysilyl-containing monomer content overlaps the claim 4 range of 40-85% by mass, and therefore, renders obvious the claimed range (MPEP 2144.05). Yamashita teaches the siloxane macromonomer has a molecular weight of 300 to 30,000 (Yamashita, Pg 3). Yamashita’s molecular weight range overlaps with the claim 3 range of 500 to 40,000, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Ono and Yamashita both disclose resin compositions comprising similar silicone-based macromonomers alkoxysilane monomers for substantially similar applications, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Yamashita’s guidance to form Ono’s silicone macromonomer and Ono’s acrylic-silicone graft copolymer to yield a resin coating that exhibits a superhydrophobic surface, excellent water repellency, water sliding property, and good durability as taught by Yamashita (Yamashita, Pgs 1-2).
Claims 12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (JP H07179849 A) as applied to claims 1 and 14 above, and further in view of Matsumura et al. (US 2014/0044927 A1).
Regarding Claims 12, 15, and 16, Ono teaches the cured film-forming product formed from the resin composition discussed above for claims 1 and 14 that is coated on the surface of an object. Ono teaches the cured film-forming product exhibits excellent water repellency, water absorption prevention performance, and prevents algae, fungal, and bacterial contamination (Ono, Abstract, Pgs 1, 8-12).
Ono remains silent regarding a sensing member required by claim 12; remains silent regarding a laminate required by claim 15; and remains silent regarding a laminate comprising a primer layer required by claim 16.
Matsumura, however, teaches a laminate for applying to the surfaces of electromagnetic wave related applications (i.e., sensing members) for machines, electronics, window materials, industrial devices, and semiconductor devices (Matsumura, Abstract, [0003]-[0004], [0023]-[0024], [0050]-[0065], [0070]). Matsumura teaches the laminate comprises a cover film formed of a silicone-based resin to provide water resistance and contamination resistance, a primer layer to improve adhesiveness of the cover film, and a polycarbonate base material (Matsumura, [0086]-[0090], [0138]-[0160]).
Since Ono discloses a silicone-based resin composition for a surface coating exhibiting water resistance/repellency properties and Matsumura discloses a cover film that can be formed of a silicone-based resin to provide water resistance and contamination resistance, it would have been obvious to one of ordinary skill in the art to have utilized Ono’s cured silicon-based film-forming resin composition to form Matsumura’s cover film to yield a laminate that exhibits water resistance and contamination resistance as taught by Matsumura (Matsumura, [0086]-[0090]) and exhibits excellent water repellency, water absorption prevention performance, and prevents algae, fungal, and bacterial contamination as taught by Ono (Ono, Abstract, Pgs 1, 8-12).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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