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 .
Specification
The disclosure is objected to because of the following informalities: on page 19 (Paragraph 89), the applicant refers to phtalamine, which the examiner believes is a typo.
Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities: The applicant lists options for the structure of A contained within the emulsifier, which in claim 3 is required to be a polyether. However, the second option is of the formula –(O-R10)-O-(O-R11), which would represent a peroxide. 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.
Claim 1-31 is 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.
Regarding Claim 1,
The applicant states that the composition comprises a silicone resin, water, a surfactant, and an emulsifier. However, the terms surfactant and emulsifier are understood in the art to represent the same types of substances and from the wording of the claim, it is unclear what distinction the applicant intends to draw between the two or whether a single compound which can be utilized as both a surfactant and emulsifier would meet the requirements of the claim, rendering the claim to be indefinite. The applicant is required to revise the claim language to clarify what the distinction between the compounds is or to reword the claim to remove the ambiguity.
Claims 2-31 are rejected based upon their dependence upon claim 1.
Claim 25 is 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.
Claim 25 recites the limitation "the composition of claim 1, wherein the condensable group...". There is insufficient antecedent basis for this limitation in the claim, as claim 1 does not list a condensable group as a requirement.
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.
Claim 7-10 is 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 1 requires that the emulsifier have a hydrophobic group at both termini of the polymer. However, claim 7 states that only one of these groups is required to by a hydrophobic group while the other may be hydrogen. This language excludes hydrogen from the grouping of hydrophobic groups and therefore, allows for compounds that do not meet all of the requirements as listed in claim 1 upon which claim 7 depends. 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.
Claims 8-10 are rejected based upon their dependence upon claim 7.
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 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 1-11 and 13-35 are rejected under 35 U.S.C. 103 as being unpatentable over Di Giovanni (US 20190382581) in further view of Chatterjee (US20220363946, US Patent Application Reference #1 from IDS dated 6/18/2024).
Regarding Claims 1-2,
Di Giovanni teaches a composition that includes a silicone resin (Abstract), a surfactant, also referred to as an emulsifier (Paragraph 58), and water (Paragraph 57). Di Giovanni further teaches that the surfactant can include compounds such as oxyethylenated or oxypropyleneated ethers of fatty alcohols such as cetyl, stearyl, or octyl (Paragraph 62) and that rheology modifiers can also be used (Paragraph 109), but does not explicitly teach that the compounds have hydrophobic groups at both termini. Chatterjee teaches the use of hydrophobe modified ethoxylated urethanes (HEURs) as rheology modifiers, which consist of alkylene oxides such as polyethylene oxide or polypropylene oxide urethane polymer that is endcapped with a hydrophobic alcohol (Paragraph 57). Because Di Giovanni teaches the use of rheology modifiers to adjust viscosity, one of ordinary skill in the art would be motivated to use such compounds. Chatterjee provides additional guidance as to appropriate compounds for this purpose, thus providing one of ordinary skill in the art a list of possible compounds. Further, because these compounds are based upon compounds known to serve as emulsifiers, it would logically follow that such compounds could be used in an analogous manner. As such, it would have been obvious to have combined the composition of Di Giovanni, including the rheology modifier, with the specific modifiers as taught by Chatterjee to achieve the predictable result of a aqueous emulsion of silicone resin with a reasonable expectation of success.
With regard to the composition consisting essentially of silicone resin, surfactant, water, and emulsifier, Di Giovanni teaches that the composition comprises siloxane components, water, and surfactant (synonymous with emulsifier) (Claim 1), meeting the requirements of claim 2.
Regarding Claims 3-10,
Di Giovanni in view of Chatterjee teaches that the HEUR compound is comprised of an alkylene oxide polymer reacted with a diisocyanate and then capped with a hydrophobic alcohol (Paragraph 57), which Chatterjee teaches are commonly C10 to C25 (Paragraph 54). This descriptions would result in A equaling a polyether, X being a urethane, and R being a hydrophobic alcohol, meeting the requirements of claim 3. The alkylene oxide, particularly ethylene or propylene oxide, would thus be the first structure of claim 4 with R9 as a C2 of C3 group, meeting the requirements of claim 4 and 5. Because the alkylene oxide is reacted with a diisocyanate, X would be represented by the structure -NH-C(O)-NH-, meeting the requirements of claim 6. Finally, as Chatterjee teaches the hydrophobic alcohol to be C10 to C25 (Paragraph 54), this satisfies the requirements of claims 7-10.
Regarding Claims 11 and 13,
Di Giovanni teaches that the surfactant can be nonionic and may include compounds that are polyoxyethyleneated or polyoxypropylenated ethers such as PEG-50 stearate or PEG-40 monostearate (Paragraph 59) amongst other options such as fatty acid esters of polyols (Paragraph 62).
Regarding Claim 14,
Di Giovanni in view of Chatterjee is silent on the ratio of surfactant to emulsifier. However, as because these compounds are defined by Di Giovanni to be the same (Paragraph 58) and discloses that mixtures of surfactants may be used (Paragraph 62), it would have been obvious prior to the effective filing date of the instant application to have used these compounds in any ratio.
Regarding Claims 15 and 16,
Di Giovanni teaches that the silicone resin can be a T resin, DT resin, or DTQ resin among other options (Paragraph 15) and that the alkyl groups include methyl, ethyl, decyl, and octadecyl amongst others (Paragraph 19). Di Giovanni additionally teaches that the resin must contain either a T or Q unit (Paragraph 12), meeting the requirements for the T and Q units. Di Giovanni further teaches that in some resins, M units represent 33 to 75% of the resin (Paragraph 23). Finally, Di Giovanni teaches that some T resins can include up to 15% M, D, and/or Q units (Paragraph 29), thus including more than 0% D units. The ranges taught by Di Giovanni overlap with those of the instant claims. One of ordinary skill in the art would recognize that different types of resins would result in final compositions with differing properties such as viscosity and would select a resin that is appropriate for the desired purpose. Further, based upon the wide ranges of the instant claims, Di Giovanni describes various resins that would meet these requirements. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 17-19,
Di Giovanni teaches that a T resin may contain up to 15% of units that are M, D, or Q (Paragraph 29), indicating that some D or Q units are allowed and thus overlapping with the range requirements of the instant claims. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 20
Di Giovanni teaches that the T resin consists essentially of only T units (Paragraph 29).
Regarding Claim 21,
Di Giovanni teaches a T resin that can contain from 0 up to 15% of units that are not T (Paragraph 29) and further teaches that the R groups attached to the units can be methyl or phenyl (Paragraph 19). Because the language of the instant claim allows for the D units to be incorporated at 0%, these units are therefore optional. Because Di Giovanni teaches the use of phenyl groups, it would have been obvious prior to the effective filing date of the instant application to have chosen phenyl to represent the R substituent on the siloxane units.
Regarding Claims 22-25 and 27-28,
Di Giovanni teaches that up to 2% of terminal units can be reactive groups such as hydroxyl, methoxy, ethoxy, or ketoximo (Paragraph 24), which overlaps with the ranges of the instant claims. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 26,
Di Giovanni teaches a T resin which can contain up to 15% of monomers other than T units (Paragraph 29) and where the R groups can be groups such as methyl or phenyl (Paragraph 19) and further teaches that are preferred to have a molecular weight of at least 1,000 (Paragraph 25), which combined with the teaching about T resins would necessarily require at least one unit of each, meeting the requirements of the instant claim.
Regarding Claim 29,
Di Giovanni teaches that the composition is substantially free of solvent other than water (Abstract).
Regarding Claims 30-31,
Di Giovanni teaches that the composition can be used as a coating such as a decorative coating (Paragraph 118).
Regarding Claims 32-34,
Di Giovanni in view of Chatterjee teaches the composition as required by the instant claims as discussed above in regard to claim 1. Di Giovanni further teaches that the components are mixed to form an emulsion (Paragraphs 84-85) by using a variety of mixing apparatus such as extruders and mixers (Paragraph 86). While Di Giovanni does not specify a temperature, one of ordinary skill in the art would assume that because Di Giovanni does not specify a temperature that the operations can be carried out at room temperature, which would be between 20 and 80 °C, meeting the requirements of the instant claims.
Regarding Claim 35,
Di Giovanni teaches that the aqueous phase is typically the continuous phase (Paragraph 56), which reads upon an oil-in-water emulsion, meeting the requirement of the instant claim.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Di Giovanni (US 20190382581) in further view of Chatterjee (US20220363946, US Patent Application Reference #1 from IDS dated 6/18/2024) as applied to claims 1-11 and 13-35 above as evidenced by Griffin (Journal of the Society of Cosmetic Chemists, volume 5, pages 249-256 (1954)).
Regarding Claim 12,
Di Giovanni teaches a variety of surfactants, but does not teach hydrophilic lipophilic balance (HLB) of the compound to be about 12 to about 30. However, one of ordinary skill in the art would know to use a water soluble surfactant or blend of surfactants in order to form an oil in water emulsion as evidenced by Griffin, which teaches this fact (Page 249, Paragraph 4) and further teaches values of HLB to form oil-in-water emulsions for compounds mentioned by Di Giovanni such as PEG monostearate, PEG laurate, and PEG lauryl ether to have HLB values of 11.4, 12.8, and 13.1 respectively (Page 254, Table 1), which would all be about 12 to 30. As these surfactants are specifically mentioned, one of ordinary skill in the art would be motivated to use the suggested surfactants and it would therefore have been obvious prior to the effective filing date of the instant application to have used these surfactants that meet the requirements of the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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