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 .
Continued Examination Under 37 CFR 1.114
Applicant’s Request for Continued Examination dated 7/13/2026 including claims and their amendments is entered. Claims 11, 14, 17, 20 are cancelled. New claims 23-25 are added. Pending claims are 1-10, 12, 13, 15, 16, 18, 19, 21-25.
Response to Arguments
Comment directed at the amendment of instant claim 1:
The amendment includes limitation where the surfactant is chemically bonded to claimed polysiloxane. Instant specification teaches following:
[0005] ”… Surfactant is chemically tethered to the silicone polymer backbone, it does not leach out and remains with the WRC system for a longer time.”
[0006] “…surfactant has chemical groups that can chemically interact with silicone polymer backbone…”
[0037] “…a surfactant is chemically and/or physically bound in the matrix of the WRC…”
[0075] “The surfactant also contains a chemically reactive group that can be physically or chemically linked to silicone backbone…”.
Chemical structure of the instantly claimed polysiloxane is as follows:
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Wherein R1 and R2 are hydrocarbons, both aliphatic, cycloaliphatic and heterocyclic. The specification also states that the surfactant is tethered. There is a difference between compounds that are tethered vs. the compounds that are chemically bonded.
Having said that, the bond between surfactant having amine or hydroxy group with the hydroxyl terminated polysiloxane is inherent especially in presence of tin catalyst, which is a condensation catalyst. The condensation is that of the silanol group with the alcohol’s hydroxyl group.
This further imparts an issue with the limitations of claim 1 because claim 1 is directed at a composition before any condensation or crosslinking occurs. Consequently, if the surfactant is already bonded with polysiloxane, then the formula of claim 1 is not appropriate at it does not reflect proper terminal groups (surfactant part). If polysiloxane is pre-reacted with surfactant, then surfactant should not be one of the components listed, unless it is different surfactant which is not reflected in the claims. Additionally, adhesion promoters would also undergo condensation which completely changes the nature of the claimed composition because tin catalyst is effective condensation catalyst at room temperature and would result in condensation of all hydroxyl groups not just surfactant.
More importantly, the specification as filed has no support for the surfactant being reacted with polysiloxane to make the composition of claim 1, but it does have support for the modified polysiloxane as a result of condensation or crosslinking in presence of tin catalyst. The tradenames utilized in the examples only refer to PDMS terminated with hydroxy group (PDMS C2T).
With respect to claimed properties of change in L value (claims 24), reflectivity (claim 16), change in E (claim 18), contact angle (claim 19), the scope of the claim is much broader than what is presented in the examples. Furthermore, the examples do not present any actual data which would show how the combination of the components contributes to the claimed properties. Additionally, the properties are those of a film not claimed composition. This further means that the composition has to be capable of achieving the same results because the same compounds will have the same properties and wherein the properties flow from the content and chemical structure of each compound utilized.
Discovery of a new property or use of previously known composition, even if unobvious from prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ2d 1655 (CAFC 1990).
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).
Consequently, the rejections of record are still applicable against prior art and reaction between surfactant and polysiloxane is inherent in presence of tin catalyst where the modification of polysiloxane occurs in situ with other components of the composition.
Applicants argued that Tselepsis is directed to silicone membranes from an emulsion and it uses surfactant as an emulsifier.
First, applicants claim a composition not article consequently, the arguments are not persuasive. Furthermore, in applicant’s own invention the surfactant is added to the dispersion of silylated resin in a waterborne system. The PDMS polymer of instant invention is hydrophobic and it becomes water dispersable due to presence of the terminal -OH groups. As such added surfactant does perform its function as a wetting agent. The surfactant molecules absorb at the PDMS-water interface lowering interfacial tension and improving dispersion stability. Emulsifiers are surfactants and the same compound can serve as both functions since in dispersions the role of surfactants is broader and still improve stability for the dispersion.
Second, applicants’ claims are silent with respect to composition being dispersion or emulsion, as such the argument is not commensurate with the scope of the claims. The composition, under broadest reasonable interpretation can be both. Claims are directed to composition. The method steps recites applying the composition to a substrate and subsequently curing the composition. Both dispersion and emulsion can both be applied to the substrate.
Third, the applicants do not disclose anywhere at which point the polysiloxane is reacted with surfactant. The polysiloxane is definitely not pre-treated (nothing like this is even mentioned) so the only option for the two components to react includes any step within claimed process, for example, when the composition is first mixed or when it is deposited onto a substrate in presence of tin catalyst.
Third, applicants own claims recite term “comprising” which includes any crosslinker in addition to one that is claimed.
Fourth, Tselepsis does not have to explicitly teach that the surfactant has reactive group when tradenames are disclosed and the structure of the surfactant is readily known. It should be noted that in this argument, the applicants indicated that the surfactant become covalently bonded to the polysiloxane or chemically tethered. However, that is not what amended claim 1 now recites. Claim 1 requires the surfactant to be chemically bonded, which includes ionic bonds, so which one is it. The amendment resulted in confusion and complete change in concept that is not really defined in the specification. Specifically, how and when did applicants react hydroxy-terminated polysiloxane with a surfactant. Until the claims are made clear and invention distinctly claimed the examiner will not withdraw the rejections. The newly claimed feature will be inherently present when the condensation of the components occurs and as of now, even though the polysiloxane is now defined as terminal hydroxyl groups reacted with surfactant, that specific feature is not reflected in the claimed formulas.
Fifth, the applicants’ claims are so broad that the only requirement of the surfactant has either hydroxy or amino group with HLB in a range of 3-20. The amount of such surfactants is enormous and the claimed HLB values allow the surfactant to have either hydrophilic and/or hydrophobic character. Consequently, any hydroxy or amino-terminated surfactant can be utilized in any amount, any pigment in any amount, any filler in any amount as well as any crosslinker, any adhesion promoter and any catalyst.
Sixth, by definition in both emulsion or dispersion, the purpose of surfactants is to lower interfacial tension and improve interaction between phases. The surfactants adsorb at the liquid-solid interface or liquid-liquid interface as such interaction between polymer and surfactant is inherent via, for example, electrostatic interaction, van der Walls, tethering and the like. These interactions are inherent. According to applicants’ own invention tethering is considered chemical bonding.
Seventh, applicants argue again on page 9 that surfactants of the instant invention is chemically linked to silicon. As pointed out earlier that is not what instant claim says. Claim require chemical bonding which includes ionic, covalent, tethering and van der Walls bonds.
Eighth, applicants broadened scope of the claim by removing silica because now any filler can be utilized. All components of instant claim 1 are generically listed by the function they perform, and each component can be utilized in any amount. Consequently, the properties of the dependent claims which depend on instant claim 1 are attributed to the composition of claim 1. The applicant’s specification discloses composition that comprises specific tradenames and the ranges in which each component is utilized. As such claims are broader in scope than the composition to which the properties have been reported. Furthermore, the claims are directed to the composition while the properties are those of cured film or coating. Consequently, the composition is chemically and structurally distinct from the coating due to presence of catalyst and crosslinker, as such the composition has to be capable of obtaining the claimed properties. As seen in newly applied teachings of Stezke, the properties are met.
In summary, rejection over Tselepsis will be restated until applicants clarify what the actual structure of the siloxane is and 112 rejections stated below are resolved.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10, 12, 13, 15, 16, 18, 19, 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claim 1 contains new limitation “…at least one surfactant is chemically bonded to the polysiloxane”.
Applicants’ specification defines following:
[0005] ”… Surfactant is chemically tethered to the silicone polymer backbone, it does not leach out and remains with the WRC system for a longer time.”
[0006] “…surfactant has chemical groups that can chemically interact with silicone polymer backbone…”
[0037] “…a surfactant is chemically and/or physically bound in the matrix of the WRC…”
[0075] “The surfactant also contains a chemically reactive group that can be physically or chemically linked to silicone backbone…”.
Based on the description in the specification, the surfactant is tethered, chemically or physically bound or linked. The instant invention fails to explicitly define how the bonding between the siloxane and surfactant is achieved. The instant invention other than tethering failed to provide what type of bonding occurs between the siloxane and surfactant. Generic term “chemically bonded” includes ionic bonds, which were not disclosed in the specification. This amendment further does not show what the actual structure of the siloxane is because if siloxane is bonded to the surfactant, the hydroxyl groups on both are consumed and end group would not be what is presented in claim 1. Considering that the surfactant has HLB of 3-20, and the values of HLB are on scale of 0-20 zero being completely oleophilic and 20 being completely hydrophilic the end groups of the siloxane once reacted with surfactant can be anything. The specification fails to define the actual structure of the siloxane polymer that is reacted with the surfactant.
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.
Claims 1-10, 12, 13, 15, 16, 18, 19, 21-25 are 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.
Claim 1 discloses composition comprising hydroxyl terminated polysiloxane having following structure:
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At the same time instant claim 1 claims that the polysiloxane is reacted with surfactant. Consequently, if the surfactant is part of the polymer, the claimed formula fails to correctly depict the polymer structure as it does not include part that belongs to the surfactant.
Claim 1 further lists a surfactant as a component of the composition. It is therefore not clear if the surfactant listed as a component of the polysiloxane is one and the same as the chemically bonded surfactant.
Claim 15 also teaches that the polysiloxane has a polyalkylene glycol tail. Consequently, it is not clear how the surfactant can react with polysiloxane if the polysiloxane already comprises polyalkylene tail, unless the polyalkylene tail is part of the surfactant. Clear explanation is requested.
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 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 1-10, 12, 13, 15, 16, 18, 19, 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Setzke (US 2016/0347956) in view of Tselepsis (US 2018/013945).
With respect to claim 1, 5, 13, 23, Setzke discloses dirt pick-up resistant silicone composition comprising hydroxyl terminated polysiloxane having following structure (claim 3 of Setzke):
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Wherein polysiloxane includes polyethylene glycol tail, wherein polyethylene glycol is a non-ionic surfactant [0158]. Consequently, non-ionic surfactants are part of the polysiloxane as claimed. Exemplified polysiloxane is hydroxy terminated polydimethylsiloxane (PDMS). Other components of the composition according to claim 1 of Setzke include pigment, filler, crosslinker, adhesion promoter, solvents and additives. The additives include dispersants, which prevent agglomeration of the fillers within the composition itself as well as wetting agents which reduce contact angle between liquid and a solid surface.
While Stezke discloses hydrogen terminated polyorganosiloxane that forms chemical bond with polyethylene glycol (PEG), the reactive group of the glycol can is a hydroxyl group, because is synthesized with primary hydroxyl termini wherein each chain ends with a -CH2-OH group. Additionally, Setzke does not provide any information on the glycol component which includes its HLB value. The HLB value of the PEG surfactants depends on the specific ester compound as well as length of the PEG.
With respect to the hydroxyl terminated surfactants, Tselepsis discloses the same basic composition comprising hydroxyl terminated polysiloxane having the same structure, pigments, fillers, catalyst, crosslinking agent, adhesion promoter and surfactant. and the like (See final rejection dated 1/12/2026).
The surfactants of Tselepsis include [0069] ethoxylated long chain alcohols utilized in an amount of 0.1-10 wt.% [0070]:
Tergitol TMN-6 which has an HLB value of 13-16. The chemical name of this surfactant is polyethylene glycol trimethylnonyl ether, and it is polyethylene glycol-based surfactant.
Tergitom TMN-10 is a polyethoxylated secondary alcohol surfactant with high HLB value as well.
These are basically ethoxylated alcohol surfactants or polyethylene oxide (PEG) based surfactants which would also have hydroxyl end group and therefore would react with the hydroxyl terminated polysiloxane in the same manner. The type of surfactant meets limitation of instant claims 5 and 23.
The surfactants are non-ionic and include ethoxylated silicon ether surfactants meeting limitations of instant claim 13.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize PEG-based surfactants or ethoxylated surfactants of Tselepsis, in lieu of PEG Of Stezke and therefore obtain the claimed invention. The surfactants of Tselepsis would condense with hydroxyl terminated polysiloxane in the same manner since both compounds have terminal hydroxyl group. One of ordinary skill in the art would also know that utilizing PEG based surfactants with HLB values as described above would allow one to tailor the emulsification and stability of the composition and allow surfactants to perform functional role as not only emulsifier but also a wetting agent.
It should also be noted that wetting agents are envisaged by Stezke.
With respect to claim 2, the surfactants as disclosed above are utilized in an amount of 1-10 wt.%. Other components are utilized as follows:
35-60 wt.% of hydroxy-terminated polysiloxane [0135],
wt.% of pigment,
30-50 wt.% of filler
wt.% of crosslinker,
0.1-1 wt.% of catalyst
0-50 wt.% of additives
0-50 wt.% of solvents.
With respect to claim 3, preferred value of n is 160-250 [0138].
With respect to claim 4, the hydroxy-terminated polysiloxane has molecular weight in a range of 1,000 g/mol to 100,000 g/mole and viscosity of 70 cts [0141].
With respect to claim 6, claim 7 of Stezke discloses following pigments: zinc oxide, antimony oxide, zirconium oxide, chromium oxide, iron oxide, led oxide, zinc sulfate, titanium dioxide, lithopone, carbon black or any combination thereof.
With respect to claim 7, the list of the fillers in claim 8 of Stezke is the same as the instantly claimed fillers. That includes fumed silica and crystalline silica.
With respect to claim 8, the crosslinkers in claim 9 of Stezke include ketoxime silanes, alkoxy silanes, acetoxysilanes, isopropenoxy silanes, a partial hydrolysate/condensate of said silanes and their combinations.
With respect to claim 9, the adhesion promoters in claim 10 of Stezke are the same as instantly claimed adhesion promoters.
With respect to claim 10, the catalysts in claim 11 of Stezke are the same as instantly claimed catalysts.
With respect to claim 12, the polyethylene glycol is disclosed in claim 13 of Stezke, the amount is 0-20 wt.% based on binder solids [0155].
With respect to claim 15, polysiloxane, pigment, crosslinker or the adhesion promoter include polyalkylene oxide tail (claim 14 of Stezke), wherein polyalkylene glycol is polyethylene glycol [0158].
With respect to claims 16, 18, 19, 24, these properties are directed to an article which is formed from composition of instant claim 1. This article is crosslinked and therefore has a different chemical structure than uncured composition. Having said that the same composition is deemed to be capable of achieving claimed properties when subject to the same testing. As an example:
Claim 16 of Stezke discloses delta L of -30 to 0 after 10 months of exterior exposure which meets instant claim 24.
Claim 17 of Stezke discloses delta E of 15 or less after 10 months of exterior exposure, measured on cleaned test panels relative to unexposed sample of the composition, which meets instant claim 18.
Reflectivity disclosed in [0096-0098] is at least 85% regardless of the wavelength at which it was measured and the time after exposure.
The composition of Setzke is therefore capable of obtaining the same properties as the composition of the instant invention.
With respect to claim 21, the composition is applied to at least part of the surface [0103] (see also claim 19 of Stezke).
With respect to claim 22, the surface is an exterior roof of a structure (see Stezke’s claim 20).
With respect to claim 25, the composition of claim 28 of Stezke, comprises following:
Polydimethylsiloxane resin,
0.1-10 wt.% of surfactant (See rejection of claim 5, 13 and 23 above),
11-14 wt.% of titanium dioxide,
72-78 wt.% of crystalline silica powder,
1-3 wt.% of polydimethylsiloxane treated fumed silica,
8-10 wt.% of methyltris(methylethylketoxime)silane,
1-3 wt.% of (3-aminopropyl)triethyoxy silane, and
0.02-0.4 wt.% of tin catalyst,
Wherein as disclosed in the rejection of claim 1, the hydroxyl terminated polysiloxanes is modified to contain at the terminal group with a surfactant that includes ethoxylated alcohol (see claims 5 and 13).
Claims 1-10, 12, 13, 15, 16, 18, 19, 21-23 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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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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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.
Since the surfactants of Tselepsis contain hydroxyl groups and HLB within claimed range its interaction with identical siloxane component will be the same as the interaction of the instant invention based on what is disclosed in instant claim 1 and what is defined in the specification as originally filed.
Wherein, presence of tin catalyst will inherently condense the OH groups of the hydroxy-terminated polysiloxane and hydroxy containing surfactants at room temperature.
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 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 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 claims 5 and 23, 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 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].
With respect to claim 24, the change in L, 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 exposure for the same amount of time is also within the same range.
The composition of instant claim 1 is so generic with respect to all of the components of instant claim 1 where under broadest interpretation any compound that meets the components of claim 1 utilized in any amount would result in the claimed change in L.
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].
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 25, 2026
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