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 .
Claim Interpretation
The claims recite that component (a) trimethoxymethylsilane is 98% pure, and component (b) triethoxy(octyl)silane is 97% pure. As is evidenced by the Sigma-Aldrich Product Specification sheets for trimethoxymethylsilane and triethoxy(octyl)silane (attached and cited in the PTO-892), this is the form/purity of the Sigma-Aldrich commercially available products of these components.
Claim 1 recites about 0% to about 98.9% by weight trimethoxymethylsilane, 98% pure. The upper limit of 98.9% * 0.98 (% pure) = 96.9%. Therefore, claim 1 has been interpreted as requiring: (a) about 0% to about 96.9% by weight trimethoxymethylsilane.
Using similar calculations, the claims have been interpreted as requiring the following for this office action:
Claim 1: (b) about 0% to about 95.9% by weight triethoxy(octyl)silane.
Claim 2: (a) about 9.8% to about 88.2% by weight trimethoxymethylsilane, and
(b) about 0.98% to about 83.3% by weight triethoxy(octyl)silane.
Claim 3: (a) about 24.5% to about 68.6% by weight trimethoxymethylsilane, and
(b) about 4.85% to about 48.5% by weight triethoxy(octyl)silane.
Claim 4: (a) about 44.1% to about 63.7% by weight trimethoxymethylsilane, and
(b) about 9.7% to about 29.1% by weight triethoxy(octyl)silane.
Claim 5: (a) about 57.5% by weight trimethoxymethylsilane, and
(b) about 18.0% by weight triethoxy(octyl)silane.
Claim Objections
Claims 1-5 are objected to because of the following informalities:
In claims 1-5, component (a) trimethoxymethylsilane appears to be misspelled, i.e., component (a) is spelled as trimethyoxymethylsilane in the claims. Appropriate correction is required.
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 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al, KR 20180033326A (Hong) in view of Lucas, CA 2840936 A1 (Lucas), and further in view of Watkins et al, WO 2019/067912 A1 (Watkins).
The Examiner has provided a machine translation of Hong, including a Google translation-assisted translation of Table 1. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1-2, Hong teaches an anti-absorption agent for concrete comprising 30-70wt% waterproofing agent, 20-50wt% diluent, and 1-20wt% thixotropy improvement agent (Hong: Abstract, page 2, lines 42-46 and page 3, lines 5-6). The waterproofing agent may be a silane, polysiloxane, or combinations thereof (page 4, lines 17-26).
Compositions of Examples 1-4 are shown in Table 1, wherein A is trimethyloxy methylsilane (i.e., component (a) as claimed), B is triethoxyoctylsilane (i.e., component (b) as claimed) and C is polydimethylsiloxane (i.e., component (c) as claimed).
Example 1 has a total of 1000 total parts by weight (i.e., A+B+C+D+E+F+G = 150g+150g+300g+200g+150g+20g+30g = 1000g total parts by weight). Therefore, Example 1 comprises 15.0% by weight trimethyloxymethylsilane (150/1000 * 100 = 15wt%), 15 % by weight triethoxyoctylsilane (150/1000 * 100 = 15wt%), and 30% by weight polydimethylsiloxane (300/1000 * 100 = 30wt%) (Hong; page 5, lines 29-49).
Using the above exemplified calculation methods, the weight percentages of Components A-C of Table 1 were calculated as indicated below:
Table 1
A
B
C
Total Parts (g)
Example
1
15.0%
15.0%
30.0%
1000
2
15.2%
15.2%
30.3%
990
3
15.0%
15.0%
30.0%
1000
4
14.7%
14.7%
29.4%
1020
14.7wt% to 15.2wt% of Component A falls within the claimed range of about 0-96.9% by weight of (a) trimethyloxymethylsilane (claim 1), and about 9.8% to about 88.2% by weight (a) trimethoxymethylsilane (claim 2).
14.7wt% to 15.2wt% of Component B falls within the claimed range of about 0% to about 95.9% by weight (b) triethoxy(octyl)silane (claim 1), and about 0.98% to about 83.3% by weight (b) triethoxyoctylsilane (claim 2).
29.4wt% to 30.3wt% of Component C falls within the claimed range of about 1-50% by weight (c) polydimethylsiloxane (claim 1), and about 1-85% by weight (c) polydimethylsiloxane (claim 2).
The compositions bond to the surface of concrete, preventing water from penetrating the concrete, while the thixotropic agent prevents the compositions from flowing down a horizontal surface after application due to gravity, thereby creating a watertight layer (Hong; page 2, lines 42-46 and page 3, lines 9-14). The upper surface layer of the treated concrete is modified to be hydrophobic (Hong; page 4, lines 3-8).
Other additives may be included to improve the physical properties of the anti-absorption agent (Hong; page 3, lines 53-54).
Hong does not explicitly teach wherein the waterproofing compositions comprise about 0.1% to about 10% by weight titanium diisopropoxide bis(acetylacetonate) 75% in isopropanol.
Although Hong teaches hydrophobic coatings, Hong does not explicitly teach superhydrophobic compositions as claimed.
With respect to the difference, Lucas teaches a one-part, moisture-curable, elastomeric, translucent coating composition comprising: (a) a di-hydroxy-terminated dimethylpolysiloxane polymer; (b) a reinforcing filler; (c) an organic solvent; (d) a polyalkoxysilane crosslinking agent; (e) an organo-silane adhesion promoter; and, (f) a titanium condensation cure catalyst (Lucas; [0006]).
One specific example of (d) is methyltrimethoxysilane (i.e., component (a) as claimed and Component A of Hong) (Lucas; [0036]).
The titanium cure catalyst (f) can be any titanium condensation cure catalyst known for facilitating crosslinking in silicone compositions (Lucas; [00040]). The titanium condensation cure catalyst (f) is incorporated in the range of form about 0.1 weight% to about 5 weight%, more preferably from about 0.5 weight% to about 4.0 weight%, and most preferably from about 1.0 to about 3.0 weight%, based on the total one-part, moisture-curable, elastomeric, translucent coating composition (Lucas; [00041]). These amounts fall within the claimed range of about 0.1 to about 10% by weight (claim 1), and about 0.5% to about 8% by weight (claim 2) of titanium diisopropoxide bis(acetylacetonate).
Lucas exemplifies a coating composition comprising DDMS (polydimethylsiloxane) polymers available from MPM, methyltrimethoxysilane crosslinker, and a diisopropoxy titanium bis-acetylacetonate condensation cure catalyst (i.e., component (d) titanium diisopropoxide bis(acetylacetonate) as claimed) (Lucas; [0075-0076]).
Lucan teaches that the coatings are translucent and waterproof when applied to substrates such as building facades, and provide long-term durability, UV resistance, and resistance to wind and extreme temperatures (Lucas; [00011] and [00066]).
The compositions can self-bond to substrates when applied thereto (Lucan; [00044]). Substrates may be on the face or surface of a building or structure that is sought to be water-proofed, such as concrete, brick and mortar (Lucas; [00051] and [00066]).
The coating can provide water proofing protection, including water impermeability (Lucas; [00062]).
Lucas is analogous art as it teaches coating compositions which repel water, and which comprise methyltrimethoxysilane, and diisopropoxy titanium bis-acetylacetonate in the claimed amounts.
In light of the motivation provided by Lucas to add a titanium condensation cure catalyst to a waterproofing composition for concrete structures such as building facades, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a titanium condensation cure catalyst in the preferred amount of about 1.0 to about 3.0 weight%, as the additive to improve the physical properties of the compositions of Hong, in order to facilitate crosslinking of the silicones, thereby providing improved water impermeability, long-term durability, UV resistance, and resistance to wind and extreme temperatures.
Given that Lucas discloses the presently claimed titanium diisopropoxide bis-acetylacetonate as a preferred titanium condensation cure catalyst, it therefore would have been obvious to one of ordinary skill in the art to use the titanium diisopropoxide bis-acetylacetonate, which is both disclosed by Lucas and encompassed within the scope of the present claims.
Hong in view of Lucas do not explicitly teach wherein the titanium diisopropoxide bis-acetylacetonate is provided as 75% in isopropanol as claimed.
With respect to the difference, Watkins discloses the use of titanium diisopropoxide bis(acetylacetonate) 75% in isopropanol as being purchased from Sigma Aldrich (Watkins; [0089]).
Watkins is analogous art as it teaches commercially available titanium diisopropoxide bis(acetylacetonate) 75% in isopropanol from Sigma Aldrich.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use commercially available forms of titanium diisopropoxide bis(acetylacetonate), such as 75% in isopropanol which is available for purchase from Sigma Aldrich, in the compositions of Hong in view of Lucas, in order to provide a readily available titanium condensation cure catalyst, and thereby arrive at the claimed invention.
Given that the hydrophobic, waterproof compositions of Hong in view of Lucas and further in view of Watkins are substantially identical to the compositions as claimed in that they comprise the claimed components in the claimed amounts, it is clear that the compositions would intrinsically provide a superhydrophobic coating as claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 3, Hong in view of Lucas and further in view of Watkins are relied upon as teaching the limitations of claim 1 as discussed above, wherein the coating compositions comprise:
(a) 14.7wt% to 15.2wt% of trimethyloxymethylsilane;
(b) 14.7wt% to 15.2wt% of triethoxy(octyl)silane;
(c) 29.4wt% to 30.3wt% of polydimethylsiloxane, and
(d) preferably of about 1.0 to about 3.0 weight% of titanium diisopropoxide bis(acetylacetonate) 75% in isopropanol (see page 5 above).
(b) 14.7wt% to 15.2wt% falls within the claimed range of about 5% to about 50% by weight triethoxy(octyl)silane, 97% pure.
(c) 29.4wt% to 30.3wt% falls within the claimed range of about 10% to about 30% by weight polydimethylsiloxane.
(d) About 1.0 to about 3.0 weight% falls within the claimed range of about 1% to about 5% by weight titanium diisopropoxide bis(acetylacetonate) 75% in isopropanol.
Further, the exemplified trimethyloxymethylsilane and triethoxy(octyl)silane of Hong fall within the silanes of formula RnSi(OR)4-n wherein R is alkyl and OR is a methoxy or ethoxy group (Hong; page 4, lines 10-15). Hong teaches that these silane-based materials may be used alone or in combination and/or with polysiloxanes, in amounts ranging in total from 30 to 70 wt% (Hong; page 4, lines 10-26 and page 5, lines 5-6). When the waterproofing agent is added in an amount less than 30%, the waterproofing function may be lowered due to insufficient penetration into the concrete. If added in excess of 70%, the waterproofing agent may remain on the concrete and cause pollution (Hong; page 5, lines 9-11).
Water-proofing agent total amounts of 30 to 70 wt% overlap in scope with the claimed range of about 25% to about 70% by weight trimethoxymethylsilane, 98% pure.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, Hong in view of Lucas and further in view of Watkins are relied upon as teaching the limitations of claim 1 as discussed above, wherein the coating compositions comprise:
(a) 14.7wt% to 15.2wt% of trimethyloxymethylsilane;
(b) 14.7wt% to 15.2wt% of triethoxy(octyl)silane;
(c) 29.4wt% to 30.3wt% of polydimethylsiloxane, and
(d) preferably of about 1.0 to about 3.0 weight% of titanium diisopropoxide bis(acetylacetonate) 75% in isopropanol (see page 5 above).
(b) 14.7wt% to 15.2wt% falls within the claimed range of about 10% to about 30% by weight triethoxy(octyl)silane, 97% pure.
(d) About 1.0 to about 3.0 weight% overlaps with the claimed range of about 2% to about 4% by weight titanium diisopropoxide bis(acetylacetonate) 75% in isopropanol.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Hong further teaches that the silane-based waterproofing agents, including trimethyloxymethylsilane, triethoxy(octyl)silane, dimethylpolysiloxane, and combinations thereof, may be used in amounts ranging in total from 30 to 70 wt% (Hong; page 4, lines 10—26; page 5, lines 5-6 and 40-41). When the waterproofing agent is added in an amount less than 30%, the waterproofing function may be lowered due to insufficient penetration into the concrete. If added in excess of 70%, the waterproofing agent may remain on the concrete and cause pollution (Hong; page 5, lines 9-11).
Water-proofing agent total amounts of 30 to 70 wt% overlap in scope with claimed range of about 45% to about 65% by weight trimethoxymethylsilane, 98% pure, and the claimed range of about 15% to about 25% by weight polydimethylsiloxane.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the weight percentages of the water proofing agents and mixtures thereof, including over the presently claimed, in order to obtain the desired waterproofing, hydrophobicity, and penetration into the concrete, while minimizing environmental effects.
Regarding claim 6, Hong in view of Lucas and further in view of Watkins are relied upon as teaching the limitations of claim 1 as discussed above. Hong teaches that the compositions are coated onto concrete structures such as a bridge top plate, a ceiling surface, or a bridge pillar (i.e., a coated article of manufacture as claimed) (Hong; page 3, lines 34-51).
Double Patenting
Claims 1-7 of this application are patentably indistinct from claims 1-5 and 7-8 respectively, of Application No. 18/743235. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-7 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5 and 7-8 respectively of copending Application No. 18/743235 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al, US 2007/0009657 A1, US 2008/0090010 A1, and 2008/0107864A1, teach superhydrophobic compositions which comprise methyltrimethoxysilane, octyltriethoxysilane, and hydroxy-terminated polydimethylsiloxane, and which may comprise a metal catalyst.
Heldmann, US 2013/0178581 A1, teaches crosslinkable compositions containing an alkoxy-functional polyorganosiloxane and a titanium chelate complex (Abstract). Examples of a titanium chelate complex include bis(ethylaceto-01’,03)bis(propan-2-olato) titanium, CAS No. 27858-32-8 (para [0058]). The titanium chelate complex may be mixed with a solvent such as 2-propanol, or commercially available products may be used (para [0066-0067]).
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732