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 .
Response to Arguments
In their response dated 12/8/2025 the applicants amended independent claim 1 to include fumed silica as required component. Independent claim further includes limitations of original claims 11 (solvents) and 17 (L values).
Applicants further amended the claims to overcome Statutory Double Patenting rejection. The terminal disclaimer was approved on 12/8/2025 overcame Obviousness Double Patenting rejection of record.
Dependent claims were amended to correct the Markush language. Further, applicants response overcame the 112 2nd paragraph rejection of claim 15.
Applicants amendment overcame the anticipation rejection over Tselepsis. The rejection however, will be restated as obviousness rejection and will be changed to reflect the amendments.
Applicants arguments are not persuasive and reasons why teachings of Tselepsis are maintained is addressed below.
In addition to the amendments applicants argued that Tselepsis is silent with respect to any rheological modifiers including fumes silica. The applicants argue that Tselepsis may teach fumed silica as a possibility among many fillers listed. The applicants further argued that Examples A and B do not reflect use of rheology modifiers and one filler utilized in colloidal silica.
With respect to the above argument, rheology modifier are added to control flow, thickness and texture of polymer compositions. Consequently, a filler or an additive added to the composition will affect the rheology of the composition, since it will affect the flow and viscosity of the polymer composition. All compounds in [0077] listed by Tselepsis can be used as rheology modifier, including colloidal silica because particulate create shear thinning properties.
The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
As such the prior art of record does not have to explicitly defined fumed silica as rheology modifier because fumed silica will perform in the same manner as that disclosed by the applicants.
Further, the examiner can’t tell how prophetic the examples are, but that is all they are. The invention is not limited to the examples, but it is reflected by the entirety of the prior art disclosure, including all fillers that have been explicitly named and therefore envisaged by Tselepsis. It should be noted that teachings of Tselepsis include one or more fillers as such combinations of two or more are clearly encompassed and envisaged by the prior art. The examiner would like to add that rheology modifiers are in fact enabled by Tselepsis in [0094].
Applicants further made statement that properties of Tselepsis are different from the properties of the instant invention.
It is examiner’s position that the applicants failed to substantiate exactly what these differences are. In fact the properties of Tselepsis as defined in [0097] the composition has tensile strength of 100psi to 2000 psi most preferred 200-400 psi which is the same tensile strength of the instant invention [0197] as determined by ASTM D412 in both disclosures.
Elongation at break in Tselepsis is 50-400% preferably 50-200% [0099] is the same elongation at break as that of the instant invention [0199] as determined by ASTM D412 in both disclosures.
The reflectivity of the composition of Tselepsis of at least 75% when measured after 7 month [0102-0103] is in the same reflectivity as instant invention [0194-0197].
With respect to the properties of ΔL or ΔE, because the reflectivity property is in exactly the same range as that of the instant invention, then the change in L or E has to be within the same range, again because compounds and their properties are mutually exclusive. While the change in L and E are not reported that does not mean that these values are different or not met. The applicants have not provided any factual basis to support their position. As such incorporation of claim 17 into claim 1 will not overcome the rejection of record as applicant have not shown any factual data which would indicate the properties of the composition are in fact different.
Applicants further argued that Tselepsis does not provide any specific teachings as to the amounts of pigment to achieve claimed change in and there is no expectation of success at preparing composition having properties recited as claimed.
Well, based on the discussion of properties above, it looks like Tselepsis actually did arrive at proper combination of components. Having said that, the applicants invention is just as open to interpretation as Tselepsis. For example, the content of surfactant in [0101] mirrors the content of surfactant discloses in Tselepsis [0070 with 1-3% being the narrowest range. Similarly, the content of pigments in Tselepsis [0082] is exactly the same as the range depicted in instant invention [0103]. Not only the components are the same but the amounts in which they are utilized are the same. It seems like Tselepsis defined the contents of the composition in exactly the same manner as applicants invention.
With respect to the amounts of fumed silica itself, the content of silica is disclosed in [0105-0106] of the invention, which is disclosed as a filler. As such regardless in which capacity fumed silica is utilized it was selected from exactly the same types of fillers as instant invention and the content of the filler in its entirety is the same as that of the instant invention. See [0077-0078] of Tselepsis and [0106-0107] of the instant invention.
In summary, the prior art of Tselepsis is still applicable against instant claims and it will be restated to reflect the amendments to claim 1 in an obviousness rejection.
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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10, 12, 13, 15, 16, 18, 19, 21, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tselepsis (US 2018/0016791, EFD of July 15, 2016) of Tselepsis (WO 2018/013945).
With respect to claims 1-3, Tselepsis discloses composition comprising 40-60 wt.% of hydroxyl-terminated polysiloxane, 1-3 wt.% of crosslinker, 0.1-1 wt.% of catalyst, 1-3 wt.% surfactant (claim 17) as well as fillers, pigments (claim 18) 0.5-3 wt.% of adhesion promoters [0088-0090], 1-12 wt.% pigments [0080-0082], 0-20 wt.% fillers [0077-0079], 0-60 wt.% additives [0093], 0-50 wt.% of solvents [0071-0073].
Polysiloxane of Tselepsis has following formula [0047]:
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104
314
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Wherein:
R1, is alkyl alkenyl, aryl, aralkyl, heteroaryl, heteroarylalkyl, cycloalkyl, cycloalkyalkyl and heterocyclylalkyl.
R2 is selected from alkyl, aryl, arylalkyl and a bond each occurrence can be substituted or unsubstituted with suitable substituents.
Integer n is 10-1000, preferably 160-250 which meets limitation of claim3.
If R2 is a bond then following structure of Tselepsis also reads on the instant invention (claim 8):
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98
292
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It is the same formula as that in [0071] of the instant invention.
Surfactant of Tselepsis discloses several tradenames for some of which the HLB values are not published. However, Tselepsis also discloses Tergitol TMN-6 which has HLB value of 13-16, Tergitol TMN-10 with HLB value of 14.4.
Solvents of Tselepsis is selected from mineral spirits, toluene, hexane xylene and combinations thereof [0072].
The fillers of Tselepsis as listed in [0077] more than one filler can be utilized and every one of the fillers listed can modify rheology of the composition.
As such it would have been obvious to one of ordinary skill in the art to utilize explicitly recited fumed silica as one of the fillers and thereby arrive at the instant invention. Such choice of filler is envisaged by Tselepsis.
With respect to the change in L, and consisted with the response to the arguments above, The composition of Tselepsis has the same tensile strength [0097], the same elongation at break [0099], reflectivity, the same reflectivity [0103]. Most importantly the change of reflectivity after the exposure for the same amount of time is also within the same range.
As such if the reflectivity in Tselepsis is still at least 80% after as much as 3 years of exposure, then the change in reflectivity will meet the change in reflectivity of the instant invention. It should be worth noting that the reflectivity in Tselepsis was measured at 500 nm and 650 nm which is the same measurement as in the instant invention [0124-0125].
With respect to claim 2, in addition to the amounts of the components disclosed above, specification of Tselepsis discloses broader range which include polysiloxane content of 35-65 wt. % [0055]; surfactant content of 1-10 wt.% preferably 1-3 wt.% [0070]; crosslinker content is 1-10 wt.% [0062]; pigments in amount of 1-12 wt.% [0082]; fillers in amount of 0.5-20 wt.% [0078]; catalyst in amount of 1% or less [0066-0067]; solvents in amount of 0-50 wt. % [0073];
With respect to claim 4, polysiloxane of Tselepsis has the same chemical structure, with the same n integer range and the same substituents. Since molecular weight depends on all three factors the molecular weight of Tselepsis will inherently meet claimed molecular weight. Additionally the specific embodiment of Tselepsis with R2 being a bond and R1 being methyl group with the same number of repeat unit, will be the exactly the same compound as that of the instant invention. The property of molecular weight and viscosity will therefore be inherent because the same compounds will have the same properties. These properties are inseparable and mutually exclusive.
With respect to claim 5, surfactants Tselepsis are selected from ethoxylated alcohols [0069].
With respect to claim 6, pigments of Tselepsis are selected from zinc oxide, antimony oxide, zirconium oxide, chromium oxide, iron oxide, lead oxide, zinc sulfide, titanium dioxide, lithopone and carbon black, [0081].
With respect to claim 7, fillers of Tselepsis are selected from calcium carbonate, barium sulfate, iron oxide, diatomaceous earth, melamine, quartz. Crystalline silica, amorphous silica, fumed silica, titanium dioxide, alumina trihydrate and the alike, all fillers are the same as those of the instant invention [0077].
With respect to claim 8, crosslinkers of Tselepsis are selected from ketoxime silanes, alkoxysilanes, acetoxysilanes, isopropenoxy silanes and partial hydrolysate/condensate of said silanes [0058].
With respect to claim 9, adhesion promoters of Tselepsis include vinyltris)2-methoxyethoxy)silane, 3-methacryloxypropyltrimethoxysilane, 2-(3,4-epoxycyclohexyl)ethyl trimethoxy silane and the like, all of which are the same as the adhesion promoters of the instant invention [0089].
With respect to claim 10, catalyst of Tselepsis is selected from dibutyltin diacetate, stannous octoate, dibutyltin dioctoate, dibutyltin dilaurate, dibutyltin dimethoxide and the like, all of the catalysts are also the same catalysts as those of the instant invention.
With respect to claims 12 and 13, surfactants of Tselepsis includes polyether siloxane based surfactants wherein polyethylene glycol content is zero.
With respect to claim 15, Tselepsis discloses 3-(polyoxyethylene)propylheptamethyltrisiloxane (claim 12)
With respect to claim 16, the composition has reflectivity of at least 85% [0103] preferably greater than 90%.
With respect to claims 18 and 19, While Tselepsis is silent ΔE value and contact angle of the composition the properties flow from the composition and each ingredient included in it.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (eg. [0121). Therefore, the claimed effects and physical properties, i.e. (ΔE value and contact angle) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients
Consistent with MPEP, the composition of Tselepsis discloses the same type of components polysiloxane having the same chemical structure and the same molecular weight, the same amount and type of crosslinkers, catalysts, fillers, adhesion promoters and especially surfactants having claims HLB values, the properties claim in claims 18 and 19 will be also be within the same range. This is further supported by the fact that all other properties are also the same.
The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With respect to claims 21 and 22, Tselepsis states that the composition is utilized to make membranes, or can be applied to structures such as weathered and non-weathered roofing products such as asphaltic coatings , roofing felts, polymeric membranes, wherein weathered substrates include metal roofs and the like [0104]. Membrane in Tselepsis is defined as a coating deposited onto a substrate [0040]. This coating is applied to external or internal surfaces [0105] of the roofing system by spraying, brushing, dipping, soaking and the like [0106].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 January 8, 2025
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