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 .
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 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.
Claims 19, 20, 22-23, 26, 30 are pending. Applicant’s previous election of claims 19, 20, 22-23, 26, still applies and claims 30 remain withdrawn.
Response to Amendment
Applicant’s amendment of 01/30/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(b)/second paragraph
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(s) 19, 20, 22-23, 26 is/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 pre-AIA the applicant regards as the invention.
Claim 19 recites “or binder components” in parenthesis which is vague because it is unclear if this is limitation is part of the claimed scope or not.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
If this application currently names joint inventors: in considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art 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).
Claim(s) 19 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jones et al. (WO 2012/175459, cited by Applicant in IDS, citations made to U.S. 2014/0141263) in view of Thorlaksen et al. (WO/2011/076856, cited by Applicant in IDS, citations made to US equivalent U.S. 2012/0264847).
Regarding claim 19, Jones teaches a fouling control coating applied to a substrate that has a first layer including pyrithione biocide at an amount overlapping the claimed range ([0051]-[0052]), as well as a PDMS based binder matrix at an amount overlapping the claimed range (adding the amounts of polymer and crosslinker in the coating composition from [0041]-[0046] and also taking into account the amount of solvent in the coating composition from [0060] which would further increase this amount of polymer and crosslinker, i.e., binder, when the solvent evaporates and the coating composition cures, with the ratio of PDMS polymer in the polymer and crosslinker also overlapping the claimed range of PDMS parts in the binder matrix), as well as a second, outer, PDMS based layer with an overlapping amount of PDMS binder ([0067]-[0071]) that does not include biocide and functions to control the rate of biocide leaching from the first layer through the second layer to prolong the useful time of the biocide in the overall two layer coating ([0024]-[0026], [0113]-[0116]). The first layer is not disclosed as including any hydrophilic silicone oils, as claimed.
Jones does not disclose that the second coating that controls the rate of biocide leaching including hydrophilic silicone oils. However, Thorlaksen is also directed to multilayer coatings that have controlled biocidal leach properties (see abstract, [0152]) and teaches that hydrophilic (oxyalkylene) modified silicone oils, that are not reactive, may be included at an overlapping amount to control the leach rate of the biocide and create a hydrated surface (see abstract, [0017], [0024], [0033]-[0034], [0038], [0040]). Thus, it would have been obvious to have included such hydrophilic silicone oils in the second, outer, biocide leach control coating of Jones because Thorlaksen teaches that such an ingredient may be added to a silicone coating in order to help control the leach rate of the biocide (as sought by Jones) and also to create a hydrated surface layer that helps with biocide retention.
Claim(s) 23 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Jones et al. (WO 2012/175459, cited by Applicant in IDS, citations made to U.S. 2014/0141263) in view of Thorlaksen et al. (WO/2011/076856, cited by Applicant in IDS, citations made to US equivalent U.S. 2012/0264847), in view of Boudjoik (U.S. 2009/0018276).
Regarding claim 23, modified Jones teaches all of the above subject matter but does not disclose that the second outer layer also included hydrophilic pendant groups in the PDMS binder. However, Boudjoik is also directed to marine silicone based antifouling coatings and discloses that antifouling properties may be improved by included polyoxyalkylene pendant groups on the crosslinkable polydiorganosiloxane backbone (see abstract, [0032]-[0046], [0064]), such that it would have been obvious to have included such pendant groups in the PDMS binder of the second/outer layer in Jones as taught by Boudjoik in order to improve antifouling properties as taught by Boudjoik and sought by Jones.
Claim(s) 20, 22, 26, is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (WO 2012/175459, cited by Applicant in IDS, citations made to U.S. 2014/0141263) in view of Thorlaksen et al. (WO/2011/076856, cited by Applicant in IDS, citations made to US equivalent U.S. 2012/0264847), in view of Boudjoik (U.S. 2009/0018276), as applied to claim 23 above, and further in view of Chida (WO 01/81474, cited by Applicant in IDS, see translated abstract/summary and machine translation).
Regarding claims 20, 22, 26, modified Jones teaches all of the above subject matter, including use of the coating to prevent fouling. Jones does not teach the claimed water contact angle of the outer layer. Chida is also directed to easy to clean silicone based compositions and teaches that the silicone may be made stain-resistant and easy to clean (i.e., antifouling, as sought by Jones) by making the silicone hydrophilic to produce a water contact angle within the claimed ranges (e.g., 25 degrees) (see translated abstract and pages 2-5 of the machine translation). Thus, it would have been obvious to have made the outer sub-layer of Jones have a hydrophilicity that results in the above water contact angle as taught by Chida because doing so make the outer layer easy to clean.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the top coat in Jones is hydrophobic or amphiphilic, which is merely preferred and not required (also, amphiphilic would include hydrophilic).
Applicant argues that the present claims provide unexpected results, however, the claims are not remotely commensurate in scope with the cited examples in terms of the type and amount of ingredients as claimed being far broader than the type and amount of ingredients used in the examples.
Applicant also appears to argue that Jones teaches away from pyrithiones but Jones is not limited to the examples and Jones clearly teaches pyrithiones.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787