DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 5/26/26 is acknowledged.
Please note that, as a result of this election, the application has been transferred
to Examiner Margaret Moore.
Claim Rejections - 35 USC § 102 and 103
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.
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.
Claims 10 and 13 to 17 are rejected under 35 U.S.C. 102(a)(1) as being antici-pated by CN 108517161, as interpreted by the English language translation, attached.
CN ‘161 teaches a super-hydrophobic coating composition. As can be seen on
the second page of the translation, in the section “Contents of the Invention” this coating composition contains an inorganic weak base, vinyl trialkoxysilane, a glycol homologue, tetra orthosilicate and a perfluoroalkyl triethoxysilane (found in the totality of steps a) to 4). This meets each of the components found in claim 10. Note that the claims use the term “comprising” such that this allows for the presence of the additional components found in CN ‘161.
For claims 13 to 15, see the preferred components found on the top of the 3rd page of the translation. These meet the instant claims.
For claim 16, see the preferred glycol homologues found near the bottom of the 2nd page of the CN ‘161 translation which specifically teaches ethylene glycol, propylene glycol and butanediol.
In addition to the above, note that the working examples include each of the com-ponents required in claims 13 to 16.
For claim 17, a weak base is taught on the 2nd page of the translation, in the line starting with “Preferably in step 1… weak inorganic base… sodium bicarbonate…”. Note too that the composition uses ammonium water to adjust the pH, which also meets this claim requirement.
Claims 11, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over CN ‘161.
For each of these claims, the Examiner recognizes that these particular values
are not specifically disclosed by CN ‘161 but each of these components are disclosed as being necessary to the coating composition. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
From this the skilled artisan would have been motivated to adjust the amount of diol, the amount of each silane compound and the amount of basic catalyst in an effort to determine the optimal or most useful coating composition particularly designed for the final intended use. In this manner these claims are rendered obvious.
Claims 10 to 18 are rejected under 35 U.S.C. 103 as being obvious over CN 109320097 (‘097) in view of KR 20210081872 (‘872), as interpreted by the English language translations, attached.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
CN ‘097 teaches a coating composition that contains each of the claimed first, second and third silane compounds. See for instance the middle of the page under “Description”, the paragraph starting with B. which teaches tetraethoxy silane (Formula 3), vinyltriethoxysilane (Formula 1) and a perfluorinated silane (Formula 2). In addition this contains water. This differs from that claimed in that it teaches n-propyl alcohol as a solvent rather than a diol curing aid.
KR ‘872 teaches a comparable silane coating composition in which a diol is added to the coating composition. The diol can maximize the flexibility of the coating, as well as relieve or reduce shrinkage. See the 4th page of the attached translation, the paragraph starting with “More specifically, according to an embodiment…”.
As such one having ordinary skill in the art would have been motivated to include a diol such as ethylene glycol or 1,3-propane diol to the composition of CN ‘097 in an effort to obtain the benefits and properties associated therewith. In this manner claim 10 is rendered obvious.
For claim 11, ‘872 teaches a molar ratio of “about 1:1.9 to 1:2.1” silane to diol. While this does not specifically teach an amount within the claimed range, the Examiner notes that the term “about” allows for leeway such that “about 1.9” would suggest and render obvious an amount of 1.18. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
For claims 13 to 15, note that the TEOS, perfluorocapryl (i.e. perfluorooctyl) and vinyl silane found in ‘097 meets these requirements.
For claim 16, the diols mentioned in above meet these claims.
For claim 12, the Examiner acknowledges that ‘097 do not teach the silanes in these amounts. The only amounts taught are the specific ones found in the working examples. This skilled artisan would have recognized that other amounts would be useful even though not specifically shown or described and would have been motivated to adjust the amounts in an effort to determine the operable properties and amounts associated with each silane. Note for instance on page 3 of this translation, under “Specific embodiment” the inventors state that the skilled artisan can make various modifications on the composition therein.
For claims 17 and 18, the Examiner recognizes that CN ‘097 teaches acetic acid (acetum Hac) as an acid catalyst.
As can be seen in KR ‘872, both acid and base catalysts are known to be useful in the hydrolysis and condensation of alkoxysilanes. In ‘872 see the 5th page of the translation, starting with “In the reaction for forming siloxane, … as a catalyst, an acid catalyst. A base catalyst… may also be used.”.
From this one having ordinary skill in the art would have found the use of a basic catalyst rather than an acidic catalyst in the method of CN ‘097 to have been obvious, with a reasonable expectation of obtaining useful and predictable results.
Note that CN ‘097 teaches an amount of catalyst that falls within the range of claim 18 (1.7 wt%). Likewise, adjusting the amount of catalyst in an effort to optimize or adjust the cure rate, viscosity or cure temperature would have been within routine experimentation for the skilled artisan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
6/26/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
Prosecution Insights