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 1-2, 9, 13-26, 28-34 and Specie III, Claims 28-33 in the reply filed on 07/01/2026 is acknowledged.
Claims 15-19 and 36-38 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-III and Species I-II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/01/2026.
Specification
The use of the term “irgacure 819” as disclosed in specification at [0022] and [0063], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 31 lines 3-9 reciting “a) 30-70% silane-grafted polyurethane; b) 20-70% boron nitride; c) 1-5% siloxane; d) 1-3% surfactant; and e) 10-30% sodium metasilicate pentahydrate; wherein the sum of the components of the composition are combined to reach 100 wt%” is disclosed in specification at [0037].
However, claim 1 line 3 recites “encapsulated sodium and/or lithium silicate”, specification at [0026] discloses in some embodiments, the sodium… metasilicate hydrate is in the form of… sodium metasilicate pentahydrate, and specification at [0072] discloses that sodium metasilicate hydrates (SMS)… can be incorporated as a filler… these metasilicates can be incorporated in their original forms as long as they do not leach out from the binder… in certain instances where its concentration in the binder is high (e.g. >20 wt%), the leaching out of metasilicate is possible… in such instances, the metasilicate particles can be surface treated or encapsulated… surface treatments of metasilicates can be performed by exposing the particles to acid… a thin layer of crosslinked silica gel would eventually form upon such treatment preceded by neutralized porous silicic acid layer.
Claim 31 recites the original form of the sodium metasilicate pentahydrate, not the encapsulated (or surface treated) as recited in claim 1. As such, claim 31 is not supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitations are supported.
Claim 32 lines 3-8 reciting “a) 30-70% water-based acrylic; b) 20-70% boron nitride; c) 1-3% surfactant; and d) 10-30% sodium metasilicate pentahydrate; wherein the sum of the components of the composition are combined to reach 100 wt%” is disclosed in specification at [0038].
However, claim 1 line 3 recites “encapsulated sodium and/or lithium silicate”, specification at [0026] discloses in some embodiments, the sodium… metasilicate hydrate is in the form of… sodium metasilicate pentahydrate, and specification at [0072] discloses that sodium metasilicate hydrates (SMS)… can be incorporated as a filler… these metasilicates can be incorporated in their original forms as long as they do not leach out from the binder… in certain instances where its concentration in the binder is high (e.g. >20 wt%), the leaching out of metasilicate is possible… in such instances, the metasilicate particles can be surface treated or encapsulated… surface treatments of metasilicates can be performed by exposing the particles to acid… a thin layer of crosslinked silica gel would eventually form upon such treatment preceded by neutralized porous silicic acid layer.
Claim 32 recites the original form of the sodium metasilicate pentahydrate, not the encapsulated (or surface treated) as recited in claim 1. As such, claim 32 is not supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitations are supported.
Claim 33 lines 3-9 reciting “a) 30-70% silicone rubber RTV; b) 10-50% boron nitride; c) 20-50% siloxane; d) 1-3% surfactant; and e) 10-30% sodium metasilicate pentahydrate; wherein the sum of the components of the composition are combined to reach 100 wt%” is disclosed in specification at [0039].
However, claim 1 line 3 recites “encapsulated sodium and/or lithium silicate”, specification at [0026] discloses in some embodiments, the sodium… metasilicate hydrate is in the form of… sodium metasilicate pentahydrate, and specification at [0072] discloses that sodium metasilicate hydrates (SMS)… can be incorporated as a filler… these metasilicates can be incorporated in their original forms as long as they do not leach out from the binder… in certain instances where its concentration in the binder is high (e.g. >20 wt%), the leaching out of metasilicate is possible… in such instances, the metasilicate particles can be surface treated or encapsulated… surface treatments of metasilicates can be performed by exposing the particles to acid… a thin layer of crosslinked silica gel would eventually form upon such treatment preceded by neutralized porous silicic acid layer.
Claim 33 recites the original form of the sodium metasilicate pentahydrate, not the encapsulated (or surface treated) as recited in claim 1. As such, claim 33 is not supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitations are supported.
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 1-2, 9, 13-14, 20-22, 26 and 28-34 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.
Claim 1 reciting “an additional or other” is indefinite because the metes and bounds the recitation is unclear. The limitation “additional” means extra, more, or added to what already exist; while the limitation “other” means different, additional, or the remaining one of a set.
Examiner will treat the recitation as “… composition comprising: encapsulated sodium and/or lithium silicate, and filler or binder including a thermally conductive filler…”.
Examiner suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claim 2 lines 4-6 reciting “wherein the filler material comprises one or more of a pore-forming agent, rheology modifier… wherein the pore-forming agent is a starch… wherein the rheology modifier is a starch” is indefinite because the metes and bounds the recitation is unclear. Is starch both a pore-forming agent and a rheology modifier? Or, is it either a pore-forming agent and a rheology modifier?
Examiner will treat the recitation as “wherein the filler material comprises one or more of a pore-forming agent, rheology modifier”.
Examiner suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claim 2 line 6 reciting “a starch derived from… fume silica” is indefinite because starch is not from fumed silica, as evidenced by Donnet et al. (Chapter 8, Reinforcement of Elastomers by Particulate Fillers) (“Donnet” hereinafter) (see Donnet at page 385, section (ii) evidencing fumed silicas are obtained by high temperature oxydecomposition of SiH4, or other methyl hydride precursors… coming out of the furnace, fumed silicas are obtained in a fluffy form).
Examiner will treat the recitation as “wherein the filler material comprises one or more of a pore-forming agent, rheology modifier”.
Examiner suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claim 26 reciting “further comprising a thermal conductive filler” is indefinite because it is not clear if the “thermal conductive filler” in claim 26 is the same or different from the “thermal conductive filler” recited in claim 1 line 4.
Examiner is treating the “thermal conductive filler” in claim 26 to be the same as the “thermal conductive filler” in claim 1.
Examiner suggests amending the claim to either: i) replace “a” in claim 26 with “the”; or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
Claims 9, 13-14, 20-22 and 28-34 are rejected due to their dependency on claim 1.
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.
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 1-2, 13-14, 20, 22, 26, and 28-33 are rejected under 35 U.S.C. 103 as being unpatentable over Endres et al. (US 2007/0082190 A1) (“Endres” hereinafter) in view of in view of Müller et al. (US 2017/0348730 A1) (“Muller” hereinafter); as evidenced by EKI (Safety Data Sheet, Sodium Silicate Solution, 2015) (“EKI” hereinafter) with respect to claims 13 and 20.
Regarding claim 1, Endres teaches a fire protection and insulation composition (see Endres at [0001] teaching an insulation material, see Endres at [0092] teaching specific possible applications are insulation against heat and cold, e.g. for refrigerators, ovens, laboratory equipment and for industrial purposes as in metallurgy or in the glass industry, a combination of insulation and fire protection, thermal encapsulation of heat-sensitive components in the electronics sector and of cables). The insulation material is taken to meet the claimed composition based on the structure, comprising:
encapsulated silicate (see Endres at [0005] teaching an insulation material which comprises an inorganic, porous matrix… obtainable from a composition comprising a binder which forms the porous matrix and a pore-forming filler… the binder comprises a sol which contains nanoparticles… another form of the stabilization of the sol is surface modification of the sol particles., e.g. by means of one or more silanes, see Endres at [0016] teaching the nanoparticles can be composed of… silicates, see Enders at [0018] teaching these nanosize particles can be produced in a customary fashion… sol-gel processes, see Enders at [0040] teaching examples of silanes of the formula (II) are… tetraalkoxysilanes… tetraethoxysilane (TEOS)). The silane surface modified silicate nanoparticles are taken to meet the claimed “encapsulated silicate” based on specification at [0072]-[0073] disclosing sodium and lithium silicate… can be surface treated or encapsulated… in order to further stabilize the metasilicate particle surface, the particles can be encapsulated by using a sol-gel approach… a predetermined amount of metasilicate is added… in the next step, sol-gel precursors are added… the choice of precursor may include… tetraethylorthosilicate (TEOS)), and
and… filler… including a thermally conductive filler (see 112 rejection, see Endres at [0053]-[0054] teaching the composition can further comprise refractory components… refractory components are components which can improve the thermal stability, see Endres at [0057] teaching preferred examples of refractory components… are… aluminum oxide). Aluminum oxide is taken to meet the claimed “additional filler including a thermally conductive filler” based on specification at [0013] disclosing the thermal conductive filler is selected from… one… of the following…aluminium oxide),
wherein the composition, when applied to a battery cell, acts as a thermally conductive coating at normal working temperatures of the battery cell (this recitation is being treated as being taught Endres because the insulation material as taught by Endres is expected to be capable of acting as a thermally conductive coating at normal working temperatures of the battery cell when applied to a battery cell). Alternatively, since the insulation material as taught by Endres and the claimed composition comprising an encapsulated silicate as recited in claim 1 employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., when applied to a battery cell, acts as a thermally conductive coating at normal working temperatures of the battery cell) would have naturally flowed following the teaching of Endres (see MPEP 2112.01).
Endres does not explicitly teach wherein the silicate is sodium and/or lithium silicate, and wherein the sodium and/or lithium silicate undergoes hydrothermal crystallization into amorphous silica when exposed to higher temperatures such that the coating acts as a thermally insulative barrier for the battery cell.
Like Endres, Muller teaches a silane surface modified silicate compound (see Muller at [0002]-[0003] teaching the disclosure relates to a passivation composition comprising silane-modified silicate compounds… in known passivation compositions for the anti-corrosive coating of metallic substrates, silicates and silanes are frequently used… it has been found that silane-modified silicate compounds are more suitable for anti-corrosive coatings than a mixture of the individual silanes and silicates).
Muller further teaches lithium polysilicate is used in aqueous solution to prepare a silane-modified silicate compound… however, water glasses such as sodium, NH4 and/or potassium silicate are also suitable to used, both on their own or in a mixture with one another, but especially in a mixture with lithium polysilicate (see Muller at [0012])… alkylalkoxysilanes… are suitable individually or in a mixture in combination with silicates, to form an anti-corrosive coating (see Muller at [0013]). Sodium silicate is taken to meet the claimed “wherein the silicate is… sodium silicate”. Sodium silicate as taught by Muller is expected to be capable of the claimed “undergoes hydrothermal crystallization into amorphous silica when exposed to higher temperatures such that the coating acts as a thermally insulative barrier for the battery cell”. Alternatively, the sodium silicate as taught by Endres in view of Muller and the claimed composition comprising an encapsulated silicate as recited in claim 1 employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., undergoes hydrothermal crystallization into amorphous silica when exposed to higher temperatures such that the coating acts as a thermally insulative barrier for the battery cell) would have naturally flowed following the teaching of Endres in view of Muller (see MPEP 2112.01).
Furthermore, Muller teaches that the passivation composition, comprising the silane-modified silicate compound… according to the disclosure… can be used as an effective anti-corrosive coating at pH values of pH 7 or lower… which can be achieved and maintained without precipitation of flocculation of the silane-modified silicate compound (see Muller at [0008]).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that sodium silicate is a suitable silicate in a silane-modified silicate composition.
As such, one of ordinary skill in the art would appreciate that Muller teaches that silane modified sodium silicate is a suitable silicate in a silane-modified silicate composition and is as an effective anti-corrosive coating at pH values of pH 7 or lower without precipitation of flocculation of the silane-modified silicate compound, and seek those advantages by using sodium silicate as the silicate in the composition as taught by Endres.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use sodium silicate as taught by Muller as the silicate in the composition as taught by Endres because it is a suitable silicate in a silane-modified silicate composition, and is as an effective anti-corrosive coating at pH values of pH 7 or lower without precipitation of flocculation of the silane-modified silicate compound.
Regarding claim 2, Endres in view of Muller teach the limitations as applied to claim 1 above, and Endres further teaches wherein the filler material comprises… one… thermal conductive filler… wherein the thermal conductive filler is selected from… one… of the following… aluminium oxide (see Endres at [0053]-[0054] teaching the composition can further comprise refractory components… refractory components are components which can improve the thermal stability, see Endres at [0057] teaching preferred examples of refractory components… are… aluminum oxide).
Examiner notes that the recitation “derived from corn, tapioca, wheat or rice, fumed silica and/or cellulose or cellulose derivatives” is a product by process limitation.
Regarding claim 13, Endres in view of Muller teach the limitations as applied to claim 1 above, and Muller further teaches wherein the… sodium… silicate… in in the range of 35-60 Baume (see Muller at [0012] teaching… in aqueous solution… water glasses such as… sodium… silicate are also suitable to used), as evidenced by EKI (see EKI at page 1, section 1 evidencing product name… sodium silicate solution, 42 Baume).
Regarding claim 14, Endres in view of Muller teach the limitations as applied to claim 1 above, and Endres further teaches wherein the sodium and/or lithium silicate is in the form of a powder (see Endres at [0019] teaching the nanoparticles can be used in the form of… a powder).
Regarding claim 20, Endres in view of Muller teach the limitations as applied to claim 1 above, and Muller further teaches wherein the… sodium… silicate… is in the form of a… sodium… metasilicate hydrate (see Muller at [0012] teaching… in aqueous solution… water glasses such as… sodium… silicate are also suitable to used), as evidenced by EKI (see EKI at page 2, section 3… composition/information on ingredients… water… sodium metasilicate).
Regarding claims 11 and 28-33, Endres in view of Muller teach the limitations as applied to claims 1 and 20 above, Endres in view of Muller is being treated as teaching the limitations of claims 22 and 28-33 (see claim 1 rejection, wherein the claimed filler is met by Endres (see MPEP 2111.04.II)).
Regarding claim 26, Endres in view of Muller teach the limitations as applied to claims 1 and 20 above, and Endres teaches comprising the thermal conductive filler, wherein the thermal conductive filler is selected from one… of the following… aluminum oxide (see Endres at [0057] teaching preferred examples of refractory components… are… aluminum oxide).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Endres in view of Muller as applied to claim 1 above, and further in view of Bohlander (US 2011/0283916 A1) (“Bohlander” hereinafter).
Regarding claim 9, Endres in view of Muller teach the limitations as applied to claim 1 above, but Endres in view of Muller do not explicitly teach further comprising a UV curing agent, cellulose, a surfactant, and/or gypsum.
Like Endres, Bohlander teaches a silane surface modified silicate compound (see Bohlander at Title teaching solvent-free water-soluble silane-modified silicates, see Bohlander at [0020] teaching the silicate solutions prepared in accordance with the disclosure… suitable for coating purposes… preferably for high-temperature coatings).
Bohlander further teaches further comprising… surfactant (see Bohlander at [0019] teaching the modified silicate mixtures… are preferably used as such as the coating material… to improve the wetting of substrates, it may be advisable additionally to add small amounts… of wetting, for example… surfactants). Surfactant is taken to meet the claimed “further comprising a… surfactant”.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that surfactant is suitable for its intended use.
As such, one of ordinary skill in the art would appreciate that Bohlander teaches that surfactants improves the wetting of substrates, and seek those advantages by adding surfactant in the composition as taught by Endres in view of Muller.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add surfactant as taught by Bohlander in the composition as taught by Endres in view of Muller so as to improve the wetting of substrates and the surfactant is suitable for its intended use.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Endres in view of Muller as applied to claims 1 and 20 above, and further in view of Global Chemical Resources (Material Safety Data Sheet, 2015) (“Global” hereinafter).
Regarding claim 21, Endres in view of Muller teach the limitations as applied to claims 1 and 20 above, and as mentioned, Muller teaches in aqueous solution… water glasses such as… sodium… silicate are also suitable to used (see Muller at [0012]). However, Endres in view of Muller do not explicitly teach “wherein the sodium… metasilicate hydrate in in the form of sodium metasilicate pentahydrate, sodium metasilicate nonahydrate…”.
Like Muller, Global teaches sodium silicate (see Global at page 1, Title teaching Sodium metasilicate pentahydrate), which is taken to meet the claimed “wherein the sodium… metasilicate hydrate in in the form of… sodium metasilicate pentahydrate”.
The claimed “wherein the sodium… metasilicate hydrate in in the form of… sodium metasilicate pentahydrate” is being treated as being taught by Endres in view of Muller and Global because there is no evidence indicating that the claimed “sodium metasilicate pentahydrate” is critical, absent new and unexpected results. Additionally, it is within the ability of one skilled in the art, with the benefit of the teachings of Endres in view of Muller and Global to choose an appropriate sodium metasilicate hydrate to use in the insulation material comprising a silicate as taught by Endres in view of Muller and Global.
Claims 22 and 28-33 are rejected under 35 U.S.C. 103 as being unpatentable over Endres in view of Muller as applied to claims 1 and 20 above, and further in view of Ranganathan et al. (US 2018/0112077 A1) (“Bohlander” hereinafter).
Examiner notes that this is an alternative rejection to the one outlined above.
Regarding claim 22, Endres in view of Muller teach the limitations as applied to claims 1 and 20 above, but Endres in view of Muller do not explicitly teach wherein the binder is silicone rubber RTV, silane-grafted polyurethane, water-based acrylic, or siloxane.
However, Endres teaches the insulation material can be used as a coating or a molding, so that the above-described composition can serve as coating composition or as molding composition… naturally, the composition can be adapted for the desired application in a manner known to those skilled in the art, e.g. in respect of the viscosity (see Endres at [0077]).
Like Endres, Ranganathan teaches a coating composition comprising a silicate (see Ranganathan at [0007] teaching a coating composition includes a silicate binder, a filler, a crosslinking agent, and a film forming lubricant). Ranganathan further teaches that to reduce ice adherence and the accumulation of ice on desired articles substantially coated with the coating composition, it has been discovered that a film forming lubricant can be added… film forming lubricants impart high lubricity and low friction to the resultant coatings which reduces ice adherence… suitable film forming lubricants for the coating compositions can include film forming silicone polymers and fluoropolymers that have high lubricity… examples of suitable film forming lubricants can include… polysiloxane resin modifiers, polydimethylsiloxane (see Ranganathan at [0020]-[0021]), which is taken to meet the claimed “wherein the binder is… siloxane”.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that polysiloxane resin modifiers, polydimethylsiloxane are suitable for coating compositions comprising silicates.
As such, one of ordinary skill in the art would appreciate that Ranganathan teaches that film forming lubricants such as polysiloxane resin modifiers, polydimethylsiloxane impart high lubricity and low friction to the resultant coatings which reduces ice adherence and the accumulation of ice on desired articles substantially coated with the coating composition, and seek those advantages by adding film forming lubricants such as polysiloxane resin modifiers, polydimethylsiloxane in the coating compositions as taught by Endres in view of Muller.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add film forming lubricants such as polysiloxane resin modifiers, polydimethylsiloxane as taught by Ranganathan in the coating compositions as taught by Endres in view of Muller so as to impart high lubricity and low friction to the resultant coatings which reduces ice adherence and the accumulation of ice on desired articles substantially coated with the coating composition.
Regarding claims 28-33, Endres in view of Muller and Ranganathan teach the limitations as applied to claims 1, 20 and 22 above, Endres in view of Muller and Ranganathan is being treated as teaching the limitations of claims 28-33 (see claim 22 rejection, wherein the claimed siloxane is met by Ranganathan (see MPEP 2111.04.II)).
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Endres in view of Muller as applied to claim 1 above, and further in view of Chollet (US 4,066, 463) (“Chollet” hereinafter).
Regarding claim 34, Endres in view of Muller teach the limitations as applied to claim 1 above, Enders teaches further comprising reinforcement material, wherein the reinforcement material is selected from one… of the following… fibers (see Endres at [0075] teaching apart from the components mentioned, further additives… can be added if required… for example, a fiber material, e.g. glass fibers, can be added in order to increase the strength).
However, Endres in view of Muller do not explicitly teach that the reinforcement material is “5 to 30 wt%”.
Like Endres, Chollet teaches a silicate containing composition (see Chollet at Abstract teaching this disclosure relates to a silicate-containing flame resistant adhesive composition comprising an inorganic component consisting, with respect to the weight of the total composition, of (a) 20-90 wt% of a concentrated aqueous alkali metal silicate solution… 2-7 wt% of deflocculated asbestos fibres). The 2-7 wt% fibres is taken to meet the claimed reinforcement material is “5 to 30 wt%” (see MPEP 2144.05(I)).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected 2-7 wt% fibres as taught by Chollet in the insulation material comprising silicates as taught by Endres in view of Muller because there is a reasonable expectation of success that the disclosed amount would be suitable, and additives can be added if required, for example, a fiber material can be added in order to increase the strength.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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