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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 6/9/2026 is acknowledged.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/9/2026.
Claim Objections
Claim 9 is objected to because of the following informalities: claim 9 recites the a formula that includes the monomeric unit
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. It is clear that the silicon atom is connected to the Rq group and the (CRm2)jO([CRm2]kO)pRm group, but the “Si” appears to be too far to the left of the structure. Appropriate correction is required.
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 2-3, 6, 9-10 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.
Claims 2-3, 6, 9-10 recite a number of variables that are not defined in the claim which results in the scope of the claim being indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites Z is selected from ORh, where Rh is selected with a C1-12 alkyl substituted with a silane moiety. However, claim 3 depends from claim 2 which defines Z as -ORh where Rh includes a list that does not include a silane moiety. In other words, claim 3 includes a genus (silane moieties) which is outside the scope of claim 2. As claim 3 includes embodiments outside the scope of the parent claim, claim 3 is an improper dependent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-6, 8, 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Milligan (US 5,663,215).
Milligan teaches antifouling coating compositions comprising a polymer comprising pendent curable group and a curable polysiloxane (abstract) and gives an example having a polymer (A), a hydroxy functional siloxane, TEOS, and petrolatum (col. 17, ln. 48-63) where the polymer (A) is a siloxane functionalized acrylate copolymer (col. 14, ln. 1-28). Milligan teaches the petrolatum is a petrolatum oil (col. 13, ln. 1-11). Petrolatum oil has long chain alkanes and thus is an oligomeric fluid. No halogens are present on these components which meets limitation (i) in claim 10.
Milligan teaches the compositions may include one or more unreactive oils such as a silicone oil, petroleum or polyolefin oil or a polyaromatic oil (col. 12, ln. 17-62). Because they are oils, they are liquid at 25˚C and atmospheric pressure. Silicone oil and polyolefin oil are polymeric compounds.
Examples of the curable polysiloxane include hydroxy functional siloxane (col. 17, ln. 48-63) including hydroxy functional polydimethylsiloxane (col. 9, ln. 40). A hydroxy functional polydimethylsiloxane has an end group that is -Si(Me)2-OH which meets claimed formula Si(Rb)3-a(ORa)a when Rb is methyl and Ra is H and a is 1.
Polymer A of Preparation Example 1 is a copolymer of methyl methacrylate, lauryl methacrylate, and trimethylsilylpropyl methacrylate (col. 14, ln. 1-27). This meets claimed formula -Si(Rb)3-a(ORa)a when a is 3 and Ra is methyl. Trimethylsilylpropyl methacrylate meets the limitations of claim3. Methyl methacrylate meets claimed formula (4) when Rg is H or Me and Z is a C1 OMe. This polymer is derived from acrylate based monomers and meets the amount of claim 5.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Milligan (US 5,663,215).
Milligan teaches the polymer of component A may include monomers such as styrene (col. 5, ln. 42) which meets claim 4.
Milligan teaches the functional polysiloxane has a molecular weight in the range of 1500-310,000 (col. 7, ln. 53-60). When the repeat unit is a dimethylsiloxyl group (as described above) this gives about 20-4133 repeat units which overlaps the claimed range of 1-100.
Milligan teaches the compositions may include one or more unreactive oils such as a silicone oil (col. 12, ln. 17-62) which is a non-functional polysiloxane and meets claim 8.
Milligan teaches ranges which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Milligan suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Milligan. See MPEP 2123.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Milligan (US 5,663,215) in view of De Gans (US 2022/0177652) (having an effective filing date of 12/9/2020).
The discussion with respect to Milligan above is hereby incorporated by reference.
Milligan does not explicitly recite the structural features of claim 7 where the endgroup is a C1-6 alkyl.
De Gans teaches coating systems for repelling soil (¶2) and antifouling purposes (¶ 7, 71) which include an alkoxy-functional polysiloxane (abstract) having the formula (III)
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(¶40-43) and provides an examples such as Dowsil 3074, a methoxy-functional phenyl(methyl)silicone resin (¶ 192) which is used in the examples of the instant specification (see pg. 35 of the instant specification). This meets the limitations of claim 7.
It would have been obvious to one of ordinary skill in the art to use a methoxy terminated polysiloxane because they provide improved storage stability over silanols and because silanol-functional polysiloxanes that are typically used for coating systems are generally solid and always require a solvent for processing thereof, in order either to further functionalize or else apply them and once applied to a substrate, polysiloxanes bearing silanol groups are less reactive compared to systems bearing alkoxy groups, and need high temperatures for crosslinking to take place (¶ 100).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Milligan (US 5,663,215) in view of Martinez (WO 2017/220097).
The discussion with respect to Milligan above is hereby incorporated by reference.
Milligan does not explicitly recite the formula of the silicone oil.
However, Martinez teaches antifouling coating compositions comprising a polyoxyalkylene modified silicone oil (abstract) which includes
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where each R1 is an alkyl or aryl group, R2 is H or C1-C4 alkyl, R3 is ethylene or propylene, and R4 is (CH2)2-6, x is 0-2500, y is 1-100, m is 0-50, and m is 0-50 (pg. 24). This meets the formula in claim 9. Regarding the claimed ratio of q:r, this corresponds to the ratio of x:y which is 0:100 to 2500:1 which overlaps the claimed rnages.
Martinez teaches ranges which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Martinez suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Martinez. See MPEP 2123.
It would have been obvious to one of ordinary skill in the art to use the polyoxyalkylene modified silicone because it improves the antifouling property and durability by interacting with metal biocides and controlling the leach rate (pg. 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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