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 .
DETAILED ACTION
Claims 1-13 of Aso, Fumihiro, US 18/277,143 (02/26/2021) are pending, under examination on merits and are rejected.
Claim Rejections 35 U.S.C. 112(a) – Written Description
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.
For an originally filed claim, 35 U.S.C. 112(a) requires that the specification shall contain a written description of the invention demonstrate that the inventor was in possession of the invention that is claimed.1 MPEP § 2163(I); MPEP § 2163(II)(A)(3)(a). Possession may be shown by disclosure of drawings or structural chemical formulas that show that the invention was complete. MPEP § 2163(I).
Thus, the written description requirement in an originally filed claim may be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function. MPEP § 2163(II)(A)(3)(a)(i). In contrast, without such a correlation, the capability to recognize or understand the structure from the mere recitation of function and minimal structure is highly unlikely. MPEP § 2163(II)(A)(3)(a)(i) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406). Accordingly, a “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). For genus claims using functional language, the written description "must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus." Ariad, 598 F.3d at 1349.
The § 112(a) Written Description Rejection
Claim 10 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the application as filed does not disclose either sufficient species of organopolysiloxane (B) having the formula (I) such that one of skill can recognize or envision (per claim 10) which species of organopolysiloxane (B) having the average unit formula (I)meet the kinematic viscosity as claimed.
the organopolysiloxane (B) has a kinematic viscosity of 50 to 200 mm2/s at 25°C
Breadth of the Claims
The claim is directed to a coating composition comprising a hydrolyzable silyl group-containing acrylic resin; a curing catalyst and the organopolysiloxane (B) having the average unit formula (I).
The claim breadth is vast because each in addition to the claimed organopolysiloxane (B) having the average unit formula (I) is unlimited, the number of the claimed acrylic resin and curing catalyst are also unlimited. The written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. MPEP § 2163(II)(A)(3)(a)(ii) (citing Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021)).
State and Predictability of The Art
It is noted that what is conventional or well known to one of ordinary skill in the art need not be disclosed in the specification in detail. MPEP § (II)(A)(3)(a). Thus, the state of and predictability in the art is a relevant consideration in determining compliance with § 112(a), written description. MPEP § (II)(A)(3)(a) (citing Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) ("The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution”).
This art of kinematic viscosity of a specific siloxane is unpredictable. Wang teaches that siloxane-based polymers (polysiloxanes) exhibit a range of volume, viscosity, and pressure-viscosity behaviors that are strongly influenced by the macromolecular structure. See Q. Wang, et al. Journal of Tribology 136.1 (2014) (“Wang”) at Abstract, line 1-3. Polymer viscosity increases with macromolecule length, branch content, and branch length, effectively the molecular mass. Wang at page 2, paragraph 2, line 1-2.
While Wang teaches that increasing branch content, branch length, and degree of polymerization causes an increase in the viscosity of polysiloxanes, however, Wang’s model cannot predict viscosity of a specific polysiloxanes as well kinematic viscosity.
Supporting Disclosure in the Specification
The specification only discloses 5 species of the claimed organopolysiloxane (B) having the average unit formula (I). The kinematic viscosity of the disclosed species B-1 (R1SiO3/2)0.6(R12SiO2/2)0.4(R2O1/2)0.24 (wherein R1 is 43% of phenyl and 57% of methyl and R2 is 73% of methyl and 27% of hydrogen) is 100 mm2/s; and the Kinematic viscosity of the disclosed species B-5 (R1SiO3/2)0.4(R12SiO2/2)0.6(R2O1/2)0.19 (wherein R1 is 38% of phenyl and 62% of methyl and R2 is 12% of methyl and 88% of hydrogen) is 5 mm2/s. Specification at page 16.
The disclosed species B-1 and B-5 have similar chemical structure, however, these two species have much difference in their Kinematic viscosities, which further indicates that kinematic viscosity of polysiloxane is unpredictable.
Claim 10 Lacks Adequate Written Description Support
One of skill in the art would not recognize that Applicant was in possession of claim 10 because the application as filed does not disclose either sufficient species of the claimed of organopolysiloxane (B) having the average unit formula (I) that can perform the claim 10 function of:
“has a kinematic viscosity of 50 to 200 mm2/s at 25°C”
or correlation relationship between the structure of organopolysiloxane (B) having the average unit formula (I) and a kinematic viscosity, such that one of skill can recognize or envision (per claim 10) which species of organopolysiloxane (B) having the average unit formula (I)meet the kinematic viscosity as claimed.
The specification does not disclose a representative number of species. In this regard, the specification teaches 5 species, however, two of structural similar species have much different Kinematic viscosities (100 mm2/s vs 5 mm2/s). Thus, the specification clearly does not disclose a representative number of species within the large genus of the claimed organopolysiloxane (B) having the average unit formula (I). A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii).
Further still, the prior art does not supplement the instant lack of disclosure regarding the structure function relationship between the claimed organopolysiloxane (B) and its kinematic viscosity such that the claimed functional recitations can be realized. Rather, the art teaches that viscosity of polysiloxanes is strongly influenced by the macromolecular structure. Wang at Abstract, line 1-3.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over K. Nagayasu et al. JP2016180093A (2016)(“Nagayasu”) in view of T. Fujimoto, et al. (WO2020036074A1) (published on 02/20/2020)(“Fujimoto”).
K. Nagayasu et al. JP2016180093A (2016)(“Nagayasu”)
Nagayasu is published in Japanese, a copy of machine translation is attached as the second part of the reference, which results in the total page of the reference is 39, the format for citation of the reference is xx/39.
Nagayasu teaches a multicomponent ambient temperature drying coating composition comprising:
a first component containing a hydrolysable silyl group-containing acrylic resin (A), a hydrolyzable silyl group-containing organopolysiloxane (B), an epoxy group-containing compound (C) and an organic solvent, and a second component containing an aminosilane compound (D) and a curing catalyst (E), wherein the solid content ratio of the hydrolyzable silyl group-containing acrylic resin (A) in the total resin solid content contained in the coating composition is 35% by mass or more, the solid content mass of the hydrolyzable silyl group-containing organopolysiloxane (B) is in the range of 5.0 to 160 parts by mass, the solid content mass of the epoxy group-containing compound (C) is in the range of 1 to 160 parts by mass based on 100 parts by mass of the solid content mass of the hydrolyzable silyl group-containing acrylic resin (A), and the amount of the curing catalyst (E) is in the range of 1 to 95 parts by mass based on 100 parts by mass of the solid content mass of the aminosilane compound (D).
Nagayasu at 23/39, [0013], emphasis added.
Nagayasu teaches that:
[0039]Examples of the hydrolyzable silyl group-containing organopolysiloxane (B) include resins produced by chemically bonding two or more identical or different organosilanes represented by the following formula (1): SiXnY4-n formula (1)(wherein X represents a hydroxyl group or an alkoxy group, Y represents an optionally substituted monovalent hydrocarbyl group, and n represents an integer of 1 to 4).
[0040]In the hydrolyzable silyl group-containing organopolysiloxane (B), the
organosilane represented by the formula (1) is bonded in a linear or branched form. The hydrolyzable silyl group-containing organopolysiloxane resin (B) preferably has a hydrocarbon group directly bonded to a silicon atom.
Nagayasu at 27/39, [0039]-[0040], emphasis added.
Nagayasu teaches examples of the organosilanes represented by the following formula (1) such as methyltrimethoxysilane, diphenyldimethoxysilane, phenyltrimethoxysilane, dimethyldimethoxysilane. Nagayasu at 27/39, [0041].
Nagayasu teaches that:
[0042]The hydrolyzable silyl group-containing organopolysiloxane (B) preferably has a methyl group and / or a phenyl group directly bonded to a silicon atom, from the viewpoint of compatibility with the hydrolyzable silyl group-containing acrylic resin (A) and the bending resistance of a coating film formed from the coating composition.
[0043]The weight average molecular weight of the nonvolatile component of the hydrolyzable silyl group-containing organopolysiloxane (B) is not particularly limited, but is generally in the range of about 400 to about 30,000, and preferably about 400 to about 20,000, from the viewpoint of compatibility with the hydrolysable silyl group-containing acrylic resin (A) and the bending resistance of the coating film to be formed.
Nagayasu at 27/39-28/39, [0042]-[0043], emphasis added.
Nagayasu teaches examples of the curing catalyst E such as organotin compounds. Nagayasu at 49/39-50/39, [0042]-[0043].
Nagayasu teaches working examples of the coating compositions listed in Table 1, for example, Example 1 that comprises:
70 part by weight of the hydrolysable silyl group-containing acrylic resin A-2;
20 part2 by weight of the silicon resin B-1 (DC3074); and
0.5 part3 of by weight the curing catalyst E-1 (dicoctyltin dilaurate).
Nagayasu at 34/39-38/39, Table 2, emphasis added.
Nagayasu also teaches that each the coating composition was spray-coated on a zinc-phosphate-treated steel sheet having a thickness of 0. 5mm. Nagayasu at 39/39.
Difference Between Nagayasu and the instant Claims 1-13
Nagayasu differs the instant claim 1 only in that the Nagayasu composition such as Example 1 does not comprise the organopolysiloxane B claimed by the instant claim 1.
T. Fujimoto, et al. (WO2020036074A1) (published on 02/20/2020)(“Fujimoto”)
Fujimoto is published in Japanese and US equivalent application US20210189070A1(Fujimoto-US) is used as English Translation.
Fujimoto-US teaches an organopolysiloxane compound having a structure of average formula (I) as indicated below and the organopolysiloxane compound can be used for a coating material that has excellent coating properties and is able to give a smooth cured film having a good crack resistance and adhesion, and a coated article.
(SiO4/2)a(R1SiO3/2)b(R1 2SiO2/2)c(R1 3SiO1/2)d(R2O1/2)e (I)
wherein each R1 is independently a hydrogen atom or an alkyl group, aralkyl group or aryl group of 1 to 8 carbon atoms which may be substituted with halogen atoms; R2 is a hydrogen atom, methyl group, ethyl group, n-propyl group or i-propyl group; “a”, “b”, “c” and “d” are respectively numbers which satisfy the conditions 0≤a<1, 0<b≤1, 0≤c<1, 0≤d<1 and a+b+c+d=1; and “e” is a number which satisfies the condition 0<e≤4.
Fujimoto-US at page 1, [0011]-[[0012] and Fujimoto at page 3, [0011].
Fujimoto-US teaches working examples of the organopolysiloxane, such as Example 1-3 as indicated below:
[0061] Methyltrimethoxysilane (KBM-13, from Shin-Etsu Chemical Co., Ltd.) in an amount of 408.6 g (3.0 mol), 793.2 g (4.0 mol) of phenyltrimethoxysilane (KBM-103, from Shin-Etsu Chemical Co., Ltd.), 733.2 g (3.0 mol) of diphenyldimethoxysilane (KBM-202, from Shin-Etsu Chemical Co., Ltd.), 13.1 g of methanesulfonic acid and 562.8 g of diethylene glycol diethyl ether (Nippon Nyukazai Co., Ltd.) were blended in a reactor until uniform, at which point 291.6 g of deionized water was added and the mixture was stirred at 70° C. for 2 hours. Neutralization was then carried out by adding 65.7 g of magnesium aluminum hydroxide carbonate hydrate (Kyowaad 500SH (Kyowa Chemical Industry Co., Ltd.) and stirring for 2 hours. Volatile constituents such as methanol were distilled off under reduced pressure, and filtration under pressure was carried out.
[0062]The resulting composition was a liquid that had a viscosity of 1,150 mPa·s, a nonvolatiles content of 72.2 wt %, a component (B) content within the composition of from 25.0 to 27.8 wt % and a silicone component (exclusive of the solvent) weight-average molecular weight of 13,000, and was viscous at 25° C. The values of “a” to “e” in average formula (I) were respectively a=0, b=0.69, c=0.31, d=0 and e=0.24.
Fujimoto-US at page 5, [0061]-[0062], Example 1-3 emphasis added and also see Fujimoto at page 13-14, [0048].
Thus, the organopolysiloxane formed in Fujimoto-US Example 1-3 is produced by chemically bonding three different organosilanes ( 3 mol of methyltrimethoxysilane, 4 mol of phenyltrimethoxysilane and 3.0 mol of diphenyldimethoxysilane), therefore, the formed organopolysiloxane has a formula of (R1SiO3/2)0.69(R1 2SiO2/2)0.31(R2O1/2)0.24, wherein at least of R1 is phenyl; which meets each and every limitation of the structural requirement of the claimed organopolysiloxane (B) having the average unit formula (I).
It should be noted that these three different organosilanes (methyltrimethoxysilane, diphenyldimethoxysilane and phenyltrimethoxysilane) are all exampled species of the formula (1) taught by Nagayasu. See Nagayasu at 27/39, [0041]. Therefore, one ordinary skill would be appraised that the organopolysiloxane Fujimoto-US Example 1-3 is the species of the Nagayasu hydrolyzable silyl group-containing organopolysiloxane (B) and it can be used as the hydrolyzable silyl group-containing organopolysiloxane (B) in Nagayasu composition, such as Nagayasu Example 1.
Obviousness Rational of the Claims 1-13
Claim 1 is obvious because on ordinary skill seeking a multicomponent ambient temperature drying coating composition is motivated to modify Nagayasu composition such as Example 1 by replacing the silicon resin B-1 (DC3074) with the organopolysiloxane formed in Fujimoto-US Example 1-3, thus arrive at a composition meeting each and every limitation of the instant claim 1, therefore, claim 1 is obvious.
One ordinary skill is motivated to do so with a reasonable expectation of success because Fujimoto-US teaches that Fujimoto-US Example 1-3 organopolysiloxane is a species of the Nagayasu hydrolyzable silyl group-containing organopolysiloxane (B) and it can be used as the hydrolyzable silyl group-containing organopolysiloxane (B) in Nagayasu composition, such as Nagayasu Example 1. The rational supporting the modification is simple substitution of one known element for another to obtain predictable results. MPEP 214. I (B).
Claim 2 is obvious because the Fujimoto-US Example 1-3 organopolysiloxane is produced through chemically bonding of 3 mol of methyltrimethoxysilane, 4 mol of phenyltrimethoxysilane and 3.0 mol of diphenyldimethoxysilane, therefore, phenyl accounts for 70% of the total number of R1.
Claim 3-4 are obvious because R1 of the Fujimoto-US Example 1-3 organopolysiloxane is methyl or phenyl.
Claim 5 is obvious because each R2 of the Fujimoto-US Example 1-3 organopolysiloxane is methyl.
Claim 6 is obvious because in the Fujimoto-US Example 1-3 organopolysiloxane “b+c=1”
Claim 7-8 are obvious because in the Fujimoto-US Example 1-3 organopolysiloxane both a and d are 0.
Regarding claim 9, in additional to the Fujimoto-US Example 1-3 organopolysiloxane, Fujimoto-US also teaches Example 1-2 organopolysiloxane as below:
[0059] Methyltrimethoxysilane (KBM-13, from Shin-Etsu Chemical Co., Ltd.) in an amount of 272.4 g (2.0 mol), 480.8 g (4.0 mol) of dimethyldimethoxysilane (KBM-22, from Shin-Etsu Chemical Co., Ltd.), 793.2 g (4.0 mol) of phenyltrimethoxysilane (KBM-103, from Shin-Etsu Chemical Co., Ltd.), 9.5 g of methanesulfonic acid and 406.1 g of diethylene glycol diethyl ether (Nippon Nyukazai Co., Ltd.) were blended in a reactor until uniform, at which point 280.8 g of deionized water was added and the mixture was stirred at 70° C. for 2 hours. Neutralization was then carried out by adding 47.4 g of magnesium aluminum hydroxide carbonate hydrate (Kyowaad 500SH (Kyowa Chemical Industry Co., Ltd.) and stirring for 2 hours. Volatile constituents such as methanol were distilled off under reduced pressure, and filtration under pressure was carried out.
[0060]The resulting composition was a liquid that had a viscosity of 1,060 mPa·s, a nonvolatiles content of 72.2 wt %, a component (B) content within the composition of from 25.0 to 27.8 wt % and a silicone component (exclusive of the solvent) weight-average molecular weight of 2,000, and was viscous at 25° C. The values of “a” to “e” in average formula (I) were respectively a=0, b=0.62, c=0.38, d=0 and e=0.21.
Fujimoto-US at page 5, [0059]-[0060], Example 1-2 emphasis added.
For the same as given above that Fujimoto-US Example 1-2 organopolysiloxane [(R1SiO3/2)0.62(R1 2SiO2/2)0.38(R2O1/2)0.21, weight-average molecular weight of 2,000 ] is another species of the Nagayasu hydrolyzable silyl group-containing organopolysiloxane (B).
Claim 9 is obvious because one ordinary skill seeking a multicomponent ambient temperature drying coating composition is also motivated to modify Nagayasu composition such as Example 1 by replacing the silicon resin B-1 (DC3074) with the organopolysiloxane formed in Fujimoto-US Example 1-2 [(R1SiO3/2)0.62(R1 2SiO2/2)0.38(R2O1/2)0.21, weight-average molecular weight of 2,000 ] for the same reason given above, thus arrive at a composition meeting each and every limitation of the instant claim 9, therefore, claim 9 is obvious.
Claim 10 is obvious because the same product would has the same inherency proprieties including the same kinematic viscosity. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Claim 11 is obvious because the curing catalyst in the proposed method is dicoctyltin dilaurate.
Claims 12-13 are obvious because one ordinary skill is further motivated to form a cured coating on a zinc-phosphate-treated steel sheet to form a coated article with the proposed coating composition as taught by Nagayasu.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
Provisional Nonstatutory Double Patenting Rejection over US 20240409774A1 (2024)
Claim1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 12-13 of copending Application No. 18/702,994 (US 2024040977A1) in the claim set submitted on 04/19/2024 in view of T. Fujimoto, et al. (WO2020036074A1) (published on 02/20/2020)(“Fujimoto”). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other.
The Conflicting Claims
The conflicting claim 1 claims coating composition comprising:
(A) 100 parts by weight of one or two or more polyols selected from the group consisting of an acrylic polyol, a polyester polyol, and a polyether polyol,
(B) 0.5 to 20 parts by weight of a silane coupling agent having an isocyanurate skeleton, and
(C) 5 to 100 parts by weight of an organopolysiloxane represented by the following formula (I)
[Chem. 1]
(SiO4/2)a (R1SiO3/2 )b (R12SiO2/2)c(R13SiO1/2)d (R2O1/2)e (I)
wherein R is each independently a C1-C12 substituted or unsubstituted monovalent hydrocarbon group, R2 is a hydrogen atom or a C1-C6 alkyl group, a, b, c, and d are numbers satisfying 0≤a<1, 0≤b≤1, 0≤c≤0.5, 0≤d<1, a+b+c+d=1, and 0.5 <(a+b)<1, and e is a number satisfying 0<e<4.
The conflicting claim 10 further claims that:
The coating composition of any one of claim 1 further comprising (D) a curing catalyst.
The conflicting claim 12 claims a cured coating formed from the coating composition of claim 1.
The conflicting claim 13 claims a coated article comprising a substrate and the cured coating of claim 12 formed on at least one surface of the substrate directly or via at least one other layer.
Difference between the conflicting claims and the instant Claims
The conflicting claim 10 differs from the instant claim 1 in that :
(i). the conflicting claim 10 does not claim specific species of organopolysiloxane represented by the following formula (I) meeting the structural requirement of the organopolysiloxane claimed by the instant claim 1; and
(ii). the conflicting claim 10 does not claim the concentration of the curing catalyst as claimed by the instant claim 1.
T. Fujimoto, et al. (WO2020036074A1) (published on 02/20/2020)(“Fujimoto”).
Fujimoto is published in Japanese and US equivalent application US20210189070A1(Fujimoto-US) is used as English Translation.
As discussed above that Fujimoto-US teaches organopolysiloxanes such as Fujimoto-US Example 1-3 is produced by chemically bonding three different organosilanes ( 3 mol of methyltrimethoxysilane, 4 mol of phenyltrimethoxysilane and 3.0 mol of diphenyldimethoxysilane), and the organopolysiloxane has a formula of (R1SiO3/2)0.69(R1 2SiO2/2)0.31(R2O1/2)0.24, and Fujimoto-US Example 1-2 organopolysiloxane [(R1SiO3/2)0.62(R1 2SiO2/2)0.38(R2O1/2)0.21, weight-average molecular weight of 2,000 ] that is produced by chemically bonding three different organosilanes (methyltrimethoxysilane, dimethylltrimethoxysilane and diphenyldimethoxysilane). Both of the Fujimoto-US organopolysiloxanes meet each and every limitation of the structural requirement of the organopolysiloxane (B) having the average unit formula (I) claimed by the instant claim 1.
One ordinary skill would be appraised that the organopolysiloxane Fujimoto-US Examples 1-3/1-2 is the species of the organopolysiloxane claimed by the conflicting claim 10 and it can be used as organopolysiloxane (c) in the composition claimed by the conflicting claim 10.
Claims 1-13 are Obvious
Claim 1 is obvious because one ordinary skill is motivated to include the organopolysiloxane Fujimoto-US Examples such as Example 1-3 as organopolysiloxane (c) in the composition claimed by the conflicting claim 10 because it is a species of the organopolysiloxane (c) claimed by the conflicting claim 10. Regarding the claimed concentration of the curing catalyst, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP2144.05.II (A). Herein, neither the instant application nor prior art provides evidence that the claimed concentration is critical for the method.
Claims 2-10 are obvious for the same reason as given for the 103 rejections.
Claim 11 is obvious because Fujimoto-US also teaches that organotin compound can be used as a curing catalyst. See Fujimoto-US at page 4, [0044], line 3-4.
Claim 12-13 are obvious because one ordinary skill is also motivated to use the proposed composition to coat an article comprising a substrate and the cured coating as claimed by the conflicting claims 12-13.
Terminal Disclaimer
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. MPEP § 2163.03 (V) (citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. MPEP § 2163.03 (V) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) ("[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed”).
2 That is 28.5 part by weight according to 100 part by weight of the hydrolysable silyl group-containing acrylic resin A-2.
3 That is 0.71 part by weight according to 100 part by weight of the hydrolysable silyl group-containing acrylic resin A-2.