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 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.
Claims 10 & 15 – 18 are rejected under 35 U.S.C. § 112(b) 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.
Regarding claim 10, the claim defines physical properties of the composition that are measured when applied to the indicated substrate. Issues arise, however, as said substrate is limited by the claim to be, “…smooth, unstructured and transparent…” (Claim 10, line 2). The term ‘transparent’ is understood by those in the art, however, the terms ‘smooth’ and ‘unstructured’ are not. The term ‘smooth’ is a relative term of degree and is subjective. See MPEP § 2173.05. Absent any further quantitative definition or objective standard as to what constitutes ‘smooth’ for the aforementioned substrate, one of ordinary skill in the art would be unable to determine the full scope of claim 10 or accurately determine if a substrate abides by ‘smooth’ as required by the claim.
Further, the term ‘unstructured’ is abstract in that all substrates have a form or structure. For example, substrates can be flat, spherical, porous, pipe/co-axial, chain (or more, said examples are not exhaustive); all of which have a structure which are instantly understood by those skilled in the art. Further limiting the substrate to be ‘unstructured’ seems to imply said substrate is formless (i.e., fluid). Absent any further quantitative definition or objective standard as to what constitutes ‘unstructured’ for the aforementioned substrate, one of ordinary skill in the art would be unable to determine the full scope of claim 10 or accurately determine if a substrate abides by ‘unstructured’ as required by the claim.
Regarding claim 15, the claim cites a polysiloxane of the formula below:
[C(CsH2s+1)(QX)2] – E – SiR1R2 – [O – SiR1R2]n – O – SiR1R2 – Y
Issues of indefiniteness arise from subscript ‘s’, which is limited to be an integer from 0 – 3 (Claim 15, lines 1-12). When ‘s’ is equal to 0, the carbon atom bound to E will have only three substituents while carbon is tetravalent. The claim limits Q as a divalent group, therefore it cannot be both double bonded to C and bonded to X. The bond between C and E is illustrated as a single bond and no charge is shown on C.
Therefore, it is unclear whether s=0 is actually permitted as it seems to be incompatible with other portions of the claimed formula, as demonstrated above. The instances of incompatibility between constituents of the above formula creates a sufficient degree of confusion and uncertainty such that it would improper to reject the claims on the basis of prior art. See MPEP § 2173.06(II).
Regarding claims 16 – 18, said claims depend from the independent claim 15 and inherit all the limitations established therein. Similarly, said claims also inherit all indefiniteness from the independent claim 15 and are therefore similarly rejected.
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.
Claims 1 – 10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Audenaert et al. (US 2021/0079257 A1).
Regarding claims 1 – 4, Audenaert teaches a protective coating composition comprising a polysiloxane (Abstract). The coating is free of fluorine (p. 2, [0023], [0025]). The polysiloxane has a general formula (I), shown below:
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90
756
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Wherein: (p. 2, [0017])
-- R1 – R8 are independently C1-C8 alkyl groups;
-- Y and Z are independently a divalent linking group which may be urea, urethane, oxygen atom, sulfur atom or a C1-C8 alkylene;
-- A, B, L and M are independently a divalent linking group which may be a C1-C8 alkylene;
-- n is an integer from 5-1,500; and,
-- m and p are integers from 1-3.
Audenaert also provides particularly preferred embodiments thereof, two of which are shown below: (p. 3 & 4, [0040])
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422
938
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The particularly preferred embodiments (A), (B) & (C) read on the claimed formula wherein:
-- X is a trialkyoxysilane,
-- A & B are dialkyl urea or urethane,
-- R1 & R2 are methyl, and
-- n is an integer in the range of 5 – 100 (p. 4, [0041]).
As Audenaert anticipates the formula(s) claimed, the polysiloxanes taught by Audenaert will necessarily exhibit the transparent and hydrophobic properties as required by the claim. Chemical compositions and their properties are inseparable. Products of identical chemical compositions cannot have mutually exclusive properties. Therefore, the properties required by the claim will inherently be present in the polysiloxanes taught by Audenaert.
Thus, the above disclosures from Audenaert anticipate the limitations of claims 1 – 4 of the instant application.
Regarding claim 5, Audenaert teaches the coating composition may be applied in various ways including spraying and dipping (p. 6, [0085]).
Regarding claim 6, Audenaert teaches a contact angle of 100° or more (p. 9, [0144]).
Regarding claim 7, Audenaert teaches a contact angle of 95° or more after 4,000 mechanical abrasion cycles (p. 9, [0145]). This approximates to a contact angle loss of about 5%. Chemical compositions and their properties are inseparable. Products of identical chemical compositions cannot have mutually exclusive properties. Therefore, the properties required by the claim will inherently be present in the polysiloxanes taught by Audenaert.
Regarding claims 8 – 10, Audenaert is silent on the surface energy of the inventive protective coating, however, as all the limitations of the independent base claim 1 have been mapped from, and are anticipated by, the teachings of Audenaert, the properties detailed in the instant claim 8 will necessarily be present in, and are inherent in Audenaert.
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.
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 11 – 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Stammer et al. (US 2021/0253867 A1).
Regarding claims 11 – 14, Stammer teaches coating compositions comprising at least one polysiloxane wherein the composition has no added fluorinated compounds (Abstract). The polysiloxane has a general formula (II), shown below:
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117
461
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Wherein: (p. 1, [0013]-[0022])
-- R1–R6 are independently selected from H, OH, linear, cyclic or branched C1-18 alkyl, C1-6 alkenyl, C1-6 alkoxy, C1-6 aminoalkyl, C1-12 vinyl alkyl; C6-18 aryl, C3-18 epoxy-forming groups and di(C1-6 alkyl)hydrogensilyl;
-- A is independently O or C1-6 alkyl,
-- B is independently SiR1R2 or R1;
-- x1 ranges from 1-3,000;
-- x2 ranges from 0-500; and,
-- x3–x6 are either 0 or 1.
Employing those limitations and mapping constituents from Stammer’s formula (II) above to constituents in the formula of independent claim 11:
--
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32
159
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reads on: X–D– (when x6 is 1, and B is SiR1R2);
--
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109
214
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reads on: –SiR1R2–[O–SiR1R2]n–O–
(when x1 & x2 are 1, and A is Oxygen);
--
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40
116
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reads on: SiR1R2 – Y (when x5 is 1, and B is SiR1R2)
When A is Oxygen, the limitation of D comprising an ether group is met, as required by claim 13. As Stammer states R1 – R6 may independently be C1-6 alkoxy, C1-6 aminoalkyl, and/or C3-18 epoxy-forming groups, the limitation of X being Si(OCH3)3 is met, as required by claim 14.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the indicated substituents based on their art-recognized suitability for use in this capacity. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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