DETAILED ACTION
Response to Amendment
In response to the amendment received on 01/05/2026:
claims 1-9 and 11-22 are currently pending
claims 13-22 are withdrawn from consideration
claims 1 and 20 are amended
previously presented 112(b) rejection is withdrawn in light of the amendment to the claim
prior art grounds of rejection reapplying Aydin and Galvan are presented herein
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 text of those sections of Title 35 U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Aydin et al. (US 20190218348), hereinafter referred to as AYDIN, in view of Galvan-Miyoshi et al. (US 20170121442 A1), hereinafter referred to as GALVAN.
Regarding claim 1, AYDIN teaches a composition comprising
2 to 15 wt% of a polymerized C10-30alkanetriC1-5alkoxysilane (see AYDIN at paragraphs [0110]: the concentration of the alkylalkoxysilane in the composition is in the range of 1-22 w/w % compared to the total amount of composition; [0102]: hexadecyltrimethoxy silane, octadecyltrimethoxy silane; and [0113]: hydrolysis and condensation of silane, which reads on limitation “polymerized”). It is noted that AYDIN discloses a method of obtaining the emulsified composition comprising the steps of (a) adding the hydrolysable alkylsilane to water, (b) adding the acid to the to the mixture in step (a), whereafter the resulting mixtures a-b are mixed and homogenized (see AYDIN at paragraphs [0176-77]). The method disclosed by AYDIN is substantially identical to the process for the manufacturing of the composition disclosed by the Applicant (see Specification, p. 8), thus, one of ordinary skill in the art would have anticipated the composition of AYDIN to comprise the polymerized alkylalkoxysilane,
0.3 to 1.5 wt% of a surfactant (see AYDIN at paragraph [0114]: co-emulsifier refers to any surfactant; [0115]: the emulsifier is a surfactant that has an HLB value 1-41, selected from any of … aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents, and also alkali metal and ammonium salts of the acids mentioned; and [0117]: co-emulsifiers are used in the amounts of less than 7 w/w % or between 0.01-4 w/w %),
0.04 to 0.40 wt% of an organic acid catalyst (see AYDIN at paragraph [0112]: organic acid; the amount of acid catalyst is less than 7 w/w %),
optionally 0.5 to 10 wt% of an organic component selected from the group consisting of silica dioxide gel, pyrogenic silica (see AYDIN at paragraph [0127]: fumed hydrophobic silica; the rheology modifier can be used in amounts up to 5 w/w %), crystalline silica, titanium dioxide, nanographite, nanographene and water glass, and
water to make 100 wt%, wherein weight percentages are percentages of the total weight of the composition and wherein the water is the only solvent (see AYDIN at paragraph [0118]: water is present as a solvent, in amounts of 49-99.9 w/w %).
AYDIN teaches ranges which overlap and render obvious the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim. See MPEP §2144.05(I).
While AYDIN teaches that the emulsifier is a surfactant that has an HLB value 1-41, selected from aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents and alkali metal and ammonium salts of the acids mentioned (see AYDIN at paragraph [0115]), but AYDIN is silent with respect to surfactant being sodium dodecyl sulfate.
However, GALVAN discloses waterborne coating composition with hydrophobic effect (see GALVAN at paragraph [0013]). GALVAN teaches the emulsifiers used for stabilization of the monomer droplets and polymer micelles may be ionic, non-ionic or mixtures thereof; suitable emulsifiers include but are not limited to sodium dodecyl sulfate, sodium dodecylbenzene sulphonate, ammonium salt of nonylphenol ether; wherein sodium dodecyl sulfate is preferred (see GALVAN at paragraph [0037]). GALVAN also discloses that the emulsifier concentration is between 0.8 and 2 weight percent, preferably between 1.0 and 1.5 weight percent based on the total weight of the components of the emulsion (see GALVAN at paragraph [0037]).
One of ordinary skill in the art would have anticipated success when using an emulsifier/surfactant disclosed by GALVAN in the composition of AYDIN based on the teachings of AYDIN describing that the emulsifier is a surfactant that has an HLB value 1-41, selected from aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents and alkali metal and ammonium salts of the acids mentioned (see AYDIN at paragraph [0115]). Moreover, one of ordinary skill in the art would have been motivated to modify the composition of AYDIN by using surfactant such as sodium dodecyl sulfate as disclosed by GALVAN since GALVAN explicitly teaches that the emulsifiers used for stabilization of the monomer droplets (see GALVAN at paragraph [0037]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of AYDIN by using sodium dodecyl sulfate disclosed by GALVAN in order to stabilize the monomer droplets.
Regarding claim 2, AYDIN as modified by GALVAN teaches the composition according to claim 1, comprising:
4 to 9 wt% of a polymerized C10-30alkanetriC1-5alkoxysilane (see AYDIN at paragraphs [0110]: the concentration of the alkylalkoxysilane in the composition is in the range of 1-22 w/w % compared to the total amount of composition; [0102]: hexadecyltrimethoxy silane, octadecyltrimethoxy silane; and [0113]: hydrolysis and condensation of silane, which reads on limitation “polymerized”),
0.6 to 0.9 wt% of a surfactant (see AYDIN at paragraph [0114]: co-emulsifier refers to any surfactant; [0115]: the emulsifier is a surfactant that has an HLB value 1-41, selected from any of … aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents, and also alkali metal and ammonium salts of the acids mentioned; and [0117]: co-emulsifiers are used in the amounts of less than 7 w/w % or between 0.01-4 w/w %),
0.04 to 0.20 wt% of an organic acid catalyst (see AYDIN at paragraph [0112]: organic acid; the amount of acid catalyst is less than 7 w/w %),
0.5 to 10 wt% of an organic component selected from the group consisting of silica dioxide gel, pyrogenic silica (see AYDIN at paragraph [0127]: fumed hydrophobic silica; the rheology modifier can be used in amounts up to 5 w/w %), crystalline silica, titanium dioxide, nanographite, nanographene and water glass, and
up to 100 wt% water, wherein weight percentages are percentages of the total weight of the composition (see AYDIN at paragraph [0118]: water is present as a solvent, in amounts of 49-99.9 w/w %).
AYDIN teaches ranges which overlap and render obvious the claimed ranges.
Regarding claim 3, AYDIN as modified by GALVAN teaches the composition according to claim 1, comprising:
4 to 5 wt% of a polymerized C10-30alkanetriC1-5alkoxysilane (see AYDIN at paragraphs [0110]: the concentration of the alkylalkoxysilane in the composition is in the range of 1-22 w/w % compared to the total amount of composition); [0102]: hexadecyltrimethoxy silane, octadecyltrimethoxy silane; and [0113]: hydrolysis and condensation of silane, which reads on limitation “polymerized”),
0.6 to 0.9 wt% of a surfactant (see AYDIN at paragraph [0114]: co-emulsifier refers to any surfactant; [0115]: the emulsifier is a surfactant that has an HLB value 1-41, selected from any of … aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents, and also alkali metal and ammonium salts of the acids mentioned; and [0117]: co-emulsifiers are used in the amounts of less than 7 w/w % or between 0.01-4 w/w %),
0.04 to 0.08 wt% of an organic acid catalyst (see AYDIN at paragraph [0112]: organic acid; the amount of acid catalyst is less than 7 w/w %),
0.5 to 10 wt% of an organic component selected from the group consisting of silica dioxide gel, pyrogenic silica (see AYDIN at paragraph [0127]: fumed hydrophobic silica; the rheology modifier can be used in amounts up to 5 w/w %), crystalline silica, titanium dioxide, nanographite, nanographene and water glass, and
up to 100 wt% water, wherein weight percentages are percentages of the total weight of the composition (see AYDIN at paragraph [0118]: water is present as a solvent, in amounts of 49-99.9 w/w %).
AYDIN teaches ranges which overlap and render obvious the claimed ranges.
Regarding claim 4, AYDIN as modified by GALVAN teaches the composition according to claim 1, comprising:
5 to 13 wt% of a polymerized C14-20alkanetrimethoxyalkoxysilane (see AYDIN at paragraphs [0110]: the concentration of the alkylalkoxysilane in the composition is in the range of 1-22 w/w % compared to the total amount of composition; [0102]: hexadecyltrimethoxy silane, octadecyltrimethoxy silane; and [0113]: hydrolysis and condensation of silane, which reads on limitation “polymerized”),
0.4 to 1.1 wt% of a surfactant (see AYDIN at paragraph [0114]: co-emulsifier refers to any surfactant; [0115]: the emulsifier is a surfactant that has an HLB value 1-41, selected from any of … aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents, and also alkali metal and ammonium salts of the acids mentioned; and [0117]: co-emulsifiers are used in the amounts of less than 7 w/w % or between 0.01-4 w/w %),
0.05 to 0.30 wt% of an organic acid catalyst (see AYDIN at paragraph [0112]: organic acid; the amount of acid catalyst is less than 7 w/w %),
up to 100 wt% water, wherein weight percentages are percentages of the total weight of the composition (see AYDIN at paragraph [0118]: water is present as a solvent, in amounts of 49-99.9 w/w %).
AYDIN teaches ranges which overlap and render obvious the claimed ranges.
Regarding claim 5, AYDIN as modified by GALVAN teaches the composition according to claim 1, wherein the polymerized silane is polymerized C14-20alkanetrimethoxyalkoxysilane (see AYDIN at paragraphs [0102]: hexadecyltrimethoxy silane, octadecyltrimethoxy silane; and [0113]: hydrolysis and condensation of silane, which reads on limitation “polymerized”).
Regarding claim 6, AYDIN as modified by GALVAN teaches the composition according to claim 1, wherein the polymerized silane is hexadecyltrimethoxysilane or octadecyltrimethoxysilane (see AYDIN at paragraphs [0102]: hexadecyltrimethoxy silane, octadecyltrimethoxy silane; and [0113]: hydrolysis and condensation of silane, which reads on limitation “polymerized”).
Regarding claims 7-8, AYDIN as modified by GALVAN teaches the composition according to claim 1, wherein the organic acid catalyst is selected from the group consisting of: tartaric acid, citric acid and oxalic acid (claim 7), and organic acid catalyst is citric acid (claim 8) (see AYDIN at paragraph [0112]: citric acid, tartaric acid, oxalic acid).
Regarding claim 9, AYDIN as modified by GALVAN teaches the composition according to claim 1, wherein the organic acid catalyst is selected from the group consisting of: fumaric acid, maleic acid and lactic acid (see AYDIN at paragraph [0112]: fumaric acid, maleic acid, lactic acid).
Regarding claim 11, AYDIN as modified by GALVAN teaches the composition according to claim 1, wherein the inorganic component is selected from the group consisting of: silica dioxide gel, pyrogenic silica (see AYDIN at paragraph [0127]: fumed hydrophobic silica), titanium dioxide, nanographite, and water glass.
Regarding claim 12, AYDIN as modified by GALVAN teaches the composition according to claim 1, wherein the inorganic component is selected from the group consisting of: silica dioxide gel, pyrogenic silica (see AYDIN at paragraph [0127]: fumed hydrophobic silica).
Response to Arguments
Applicant's arguments filed on 01/05/2026 have been fully considered but they are not persuasive.
Applicant argues that AYDIN expressly teaches away from using traditional surfactants and that AYDIN’s core inventive concept is to create a stable emulsion without the drawbacks of traditional surfactants (see Remarks received on 01/05/2026 spanning paragraphs on page 7).
However, the examiner respectfully disagrees for the following reasons. Even though the title of AYDIN is “METHOD FOR MAKING FLUOROCARBON FREE EMULSIONS WITHOUT USING TRADITIONAL SURFACTANTS/EMULSIFIERS BY EMULSIFYING ALKOXYSILANES OR OTHER NON-WATER SOLUBLE HYDROPHOBIZING AGENTS USING AMINO FUNCTIONAL SILOXANES AND THE USES THEREOF”, AYDIN explicitly teaches co-emulsifier/co-surfactant as a component of a disclosed composition: the wording co-emulsifier may according to the present invention also refer to any surfactant, a thickener or a stabilizer; an emulsifier may be ionic or non-ionic; the emulsifier is added to the emulsified liquid composition in order to emulsify and stabilize the liquid composition (see AYDIN at paragraph [0114]). Furthermore, AYDIN discloses that in one embodiment the emulsifier is a surfactant that has an HLB value 1-41, selected from any of or a combination of any of; carboxylic acids having 9-20 carbon atoms; aliphatically substituted benzene/aromatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents; aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents; aliphatically substituted diphenyl ether sulfonic acids having at least 6 carbon atoms in the aliphatic substituents; alkyl hydrogen sulfates having at least 6 carbon atoms in the alkyl substituents; alkyl and alkylarylether sulfates having at least 6 carbon atoms in the hydrophobic radical and 1 to 40 ethylene oxide (EO) and/or propylene oxide (PO) units; taurides; esters and monoesters of sulfosuccinic acid with monohydric alcohols or alkylphenols having 4 to 15 carbon atoms, optionally ethoxylated with from 1 to 40 EO units; and also alkali metal and ammonium salts of the acids mentioned (see AYDIN at paragraph [0115]).
MPEP §2123(I) states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)”. Therefore, irregardless of the title of the Patent Application of AYDIN, it would have been obvious to one of ordinary skill in the art that the composition of AYDIN can comprise various surfactants.
Applicant argues that a person skilled in the art would not be motivated to combine AYDIN and GALVAN (see Remarks received on 01/05/2026 at paragraph 4 on page 7).
However, the examiner respectfully disagrees for the following reasons. As was discussed in the rejection of claim 1 above, AYDIN discloses that the emulsifier is a surfactant that has an HLB value 1-41, selected from aliphatic sulfonic acids having at least 6 carbon atoms in the aliphatic substituents and alkali metal and ammonium salts of the acids mentioned (see AYDIN at paragraph [0115]), and that the emulsifier is added to the emulsified liquid composition in order to emulsify and stabilize the liquid composition (see AYDIN at paragraph [0114]). Furthermore, GALVAN teaches the emulsifiers used for stabilization of the monomer droplets and polymer micelles may be ionic, non-ionic or mixtures thereof; suitable emulsifiers include but are not limited to sodium dodecyl sulfate, sodium dodecylbenzene sulphonate, ammonium salt of nonylphenol ether; wherein sodium dodecyl sulfate is preferred (see GALVAN at paragraph [0037]). Thus, based on the aforementioned disclosure of AYDIN regarding alkyl hydrogen sulfates having at least 6 carbon atoms in the alkyl substituents being suitable surfactants (see AYDIN at paragraph [0115]), one of ordinary skill in the art would have anticipated success when utilizing surfactants of GALVAN including sodium dodecyl sulfate.
Applicant argues that the claimed invention starts with a polymerized silane, whereas AYDIN starts with hydrolysable silane monomers that are intended to polymerize later (see Remarks received on 01/05/2026 spanning paragraphs on pages 7-8).
However, the examiner respectfully disagrees for the following reasons. It is noted that claims 1 recites “a composition comprises 2 to 15 wt% of a polymerized C10-30alkanetriC1-5alkoxysilane”, thus, as set forth, claim 1 does not indicate whether alkoxysilane is polymerized prior to the addition to the composition or during manufacturing the composition. The process for the manufacturing of the composition disclosed by the Applicant comprises the steps of providing solution of surfactant and organic acid catalyst, adding C10-30alkanetriC1-5alkoxysilane until polymerized and homogenized (see Specification, p. 8). Similarly, AYDIN discloses a method of obtaining the emulsified composition comprising the steps of (a) adding the hydrolysable alkylsilane to water, (b) adding the acid to the to the mixture in step (a), whereafter the resulting mixtures a-b are mixed and homogenized (see AYDIN at paragraphs [0176-77]). Additionally, AYDIN discloses that the acid catalyst can act as a Lewis acid catalyzing the hydrolysis and condensation of the silane (see AYDIN at paragraph [0113]). Thus, one of ordinary skill in the art would have anticipated the composition of AYDIN to comprise the polymerized alkylalkoxysilane,
In response to Applicant’s argument that the references fail to show certain features of Applicant’s invention, it is noted that the feature upon which Applicant relies (i.e., exceptionally high-water contact angles, such as 157° and 158°) is not recited in the rejected claim. The examiner also notes that the teachings of AYDIN and GALVAN disclose a composition that meets all the limitations claimed by the applicant, as outlined in the above rejection. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123(II)).
Therefore, the rejection of claims as being unpatentable over AYDIN in view of GALVAN is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731