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 § 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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Standke et al., U.S. Patent Application Publication No. 2008/0187673
Standke discloses an emulsion composition having application for imparting hydrophobicity to mineral substrates. The composition comprises generally organosilicon compounds as defined by the abstract either together, or in the alternative although all of the exemplifications feature a blend of an alkoxysilane and an organoalkoxysiloxane oligomer. Paragraph [0033] outlines the most preferred embodiments of an alkoxysilane; there being only 5 unique non-hydrolyzable groups of which n-butyl, and iso-butyl represent two. Paragraph [0041] delineates the most favored permutations of the oligomer including ones that, like the aforementioned silanes, bear one of n-propyl, n-butyl, iso-butyl, n-octyl, iso-octyl, or vinyl substituents. Surfactants anticipatory of that depicted in formula (E) of claim 3 are mentioned in [0065] as alkylpolyglycol ethers with 8-20 carbon atoms in the alkyl terminal group an ethylene oxide repeating units or random ethylene oxide/propylene oxide copolymers. Paragraph [0064] indicates that the emulsifier is generally added in amounts of 0.02% to 2% by weight, which is encompassed within the range of claim 9. Anionic emulsifiers (claim 11), such as salts of carboxylic acids, are contemplated alongside the polyoxyalkylene compound in [0065].
Regarding claim 12, the emulsification at mixture over two stages performed at different pressures is disclosed in [0114].
As for claim 6, [0036] states that the oligomer content is between 5% and 45% by weight of the solids content. Curiously, a range of suitable values is not taught in association with the quantity of the silane but it is noted that the silane component is, in all of the examples consistent with that stipulated by claims 7 and 19. Likewise, the silane-to-oligomer ratio conforms with the weight ratio mandated by claim 8.
The amount of water incorporated into each of the exemplified emulsions is compliant with the limitation of claim 10.
The Examiner expects that Applicant may attempt to argue that there are no exemplifications of an emulsion where the silane compound is n-butyl/iso-butyl tri(m)ethoxysilane and, therefore, a holding of anticipation is not proper but the Examiner would disagree. The broader Specification provides really quite limiting disclosures of the most preferred embodiments of the silane [0033] and the siloxane oligomer [0041] and it is the Examiner’s position that an emulsion composition containing any combination of said silanes and oligosiloxanes from said limiting disclosures would be at once envisaged by a practitioner of the prior art invention.
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).
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.
Claims 1-2, 4-11, an 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,7, and 9 of U.S. Patent No. 8,795,784. Although the claims at issue are not identical, they are not patentably distinct from each other.
As an initial matter, it is appreciated that, whereas the named Applicant is Evonik Operations GMBH, the patent is said to be assigned to Degussa. The Examiner understands Evonik to be a spinoff of the chemicals business of Degussa and presumes that all Degussa chemical patents are, thus, assigned to Evonik.
Patent claim 1 is directed to an emulsion composition that contains as solids content, totaling 1 to 70% by weight, an alkylalkoxysilane/condensates thereof or an organoalkoxysiloxane, or combinations thereof where the former correlates with claimed (A) and the latter with claimed (B). In the alternative, the condensates of the silane can also be correlated with claimed (B). Patent claim 7 requires that the alkyl groups of the alkylalkoxysilane contain at least 3 and no more than 18 carbon atoms and both n-butyl and isobutyl groups would be obvious permutations of alkylalkoxysilanes within this definition. Patent claim 9, likewise, requires the alkyl groups of the oligomer condensation product to contain 3 to 18 carbon atoms.
As for claims 2 and 11, there are a multitude of emulsifiers/surfactants disclosed in patent claim 1, some of which are nonionic and others being anionic.
Regarding claims 4, 16, and 17, the formulaic representation of the aforementioned condensation product of patent claim 1 reflects that there are between 2 an 20 repeating units.
Concerning claims 6-8 and 19, the patent claim only indicates the overall contribution of the combination of the alkylalkoxysilane and oligomeric compounds. On the other hand, this description is encompassing of myriad compositions for which the requirements of claims 6-8 an 19 would be satisfied. The amount of water is that which is not contributed by the oil components of the emulsion and the surfactant and, again, claim 1 embraced numerous compositions wherein the amount of water would constitute up to 60% of the total.
Other references encountered during the Examiner’s survey of the prior art include CN 109354952, CA 2115622, CA1277891, U.S. 2015/0240125, and lastly US 5,449,712, which also represents a weaker basis for rejection than does Standke.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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June 9, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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