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.
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 12 and 13 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.
Regarding claim 12, the repeated usage of the term “optionally” renders the scope of the claim overly broad and creates ambiguity as to whether the stated polyorganosiloxanes, substituted hydrocarbyl radicals, nonionic emulsifiers, or alkaline or acidic catalysts or reaction products thereof are within the scope of the claim. For examination purposes, the term “optionally” has been interpreted as an alternative limitation.
Regarding claims 12 and 13, the term “involvement” is indefinite. It is unclear whether the recited ingredients are intended to be present yet unreactive or absent from the composition entirely, rendering the scope of the claim indefinite. For examination purposes, “involvement” has been interpreted as being present in the composition.
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 17 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 17 recites that R3 “has the definition given in claim 1”, which has been canceled in the instant application. 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.
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.
Claims 12-23 are rejected under 35 U.S.C. 103 as being unpatentable over Akinaga et al (EP 4056248 A1) in view of Brehm et al (US 20160121239 A1).
Regarding claims 12, 14-17, 19- 21, and 23, Akinaga teaches use of a water-soluble silicone defoaming composition [0009] comprising polydimethylsiloxanes analogous to those disclosed in formula (I) [0015], silica fillers [0028], organopolysiloxanes analogous to those disclosed in formula (III) modified with a hydrophobic functional group [0030], triethylene glycol alkyl ethers [0020], and polypropylene glycol [0033] as a nonaqueous solvent. Akinaga particularly discloses triethylene glycol mono-n-butyl ether and triethylene glycol butyl methyl ether [0020]. Akinaga further discloses use of said defoaming composition for aqueous foaming solutions [0038] at concentrations ranging from 0.01 to 2.0 mass percent [0041].
The species of triethylene glycol alkyl ethers anticipates the genus of trialkoxy alkyl ethers in component (F). Further, the species of polypropylene glycol anticipates the genus of a nonaqueous solvent in component (G). The principle is well established that the disclosure of a species in a cited reference is sufficient to prevent a later applicant from obtaining a "generic claim." In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989); In re Slayter, 276 F.2d 408, 125 USPQ 345 (CCPA 1960).
Akinaga does not disclose organopolysiloxane resins, fillers other than silica, nonionic emulsifiers, or an alkaline or acidic catalyst or reaction product thereof. Akinaga also does not specifically disclose the lack of involvement of 2,2,4-trimethyl-1,3-diisobutyryloxypentane or polyethersiloxanes. Further, Akinaga does not disclose the presence of their defoamer compositions in liquid washing media or aqueous surfactant formulations.
Brehm discloses a process for defoaming aqueous surfactant compositions (Abstract) comprising organopolysiloxane resins analogous to those disclosed by formula (II) of the instant application [0078-0083] which consist essentially of R33SiO1/2(M) and SiO4/2(Q) units and that said resins may contain up to 10% by weight of free Si- bonded hydroxy or C1-4-alkoxy groups [0114]. Brehm further discloses the inclusion of nonionic emulsifiers [0133], an alkaline or acidic catalyst or reaction product thereof [0096], and fillers such as silica, titanium dioxide, and aluminum oxide [0109]. Brehm further discloses the use of said defoamer formulation in aqueous emulsions [0131-0132].
Brehm further discloses the optional inclusion of polyether-modified siloxanes [0094] yet provides no preference for their inclusion. The optional inclusion of said polyether-modified siloxanes also teaches embodiments wherein said polyether-modified siloxanes are excluded. "The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . .." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP 2123.
Akinaga and Brehm are directed towards defoaming compositions and therefore are analogous to applicant’s claimed invention.
Brehm further discloses that the inclusion of these organopolysiloxane resins [0078] and emulsifiers [0133] are preferred embodiments and notes that the inclusion of basic catalysts can improve defoamer activity [0007]. Brehm further teaches that their defoamer composition is highly efficient in surfactant-containing aqueous systems (Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the defoaming compositions of Akinaga and Brehm, as the two are considered to be equivalents known for the same purpose. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 13, Akinaga does not disclose the involvement or lack thereof of amino-functional polysiloxanes and polysiloxanes having long-chain SiC-bonded C8-30-alkyl radicals.
Brehm discloses a preference for amino-functionalized polysiloxanes [0063], which does not preclude defoamer compositions which explicitly do not contain amino-functionalized polysiloxanes. A teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Regarding claim 18, Brehm discloses a particular preference for natural oils, polyisobutylenes, fatty acid esters, fatty alcohols, and waxes [0121] as water-soluble inorganic compounds.
It would have been obvious to substitute the polypropylene glycol taught by Akinaga with the water-soluble inorganic compounds disclosed by Brehm because such simple substitution of known elements will obtain predictable results.
Regarding claim 22, Brehm discloses an example embodiment wherein the defoamer formulation is present at 0.1 wt % of a washing formulation (Table 4). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are sufficiently close that one of ordinary skill in the art would expect the ranges to yield products having the same properties. See MPEP 2144.05(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Huber (US 4477371 A) discloses a composition containing organopolysiloxane resins (page 3, column 4, lines 45-60), said resins consisting of SiO4/2 and R3SiO1/2 units wherein R3 is a methyl group. Huber further discloses an example with 2 percent Si-bonded hydroxyl groups (page 4, column 6, line 67) and discloses the presence of acidic or alkaline catalysts (page 2, column 2, lines 64-66). Innertsberger (US 4919843 A) discloses antifoam compositions containing an essentially linear organopolysiloxane (page 2, column 1, lines 50-56), silica fillers (page 3 column 4, lines 28-30), and a silicone resin (page 2, column 1, lines 57-62), wherein at least 80% of the Si-C bonded hydrocarbon radicals in the organopolysiloxanes are methyl radicals (page 2, column 2, lines 4-11). Innertsberger further discloses that it is preferred that the antifoam compositions do not contain 2,2,4-trimethyl-1,3-diisobutyryloxypentane (page 3, column 3, lines 53-55). Boylan (US 4377493 A) discloses a silica defoaming composition dispersed in a water insoluble hydrophobic organic liquid (Abstract). Song (WO 2013181948 A1) discloses a foam control composition comprising silica, titania, and alumina fillers [0013]. Policello (US 5968872 A) discloses Example 1, wherein the defoaming composition is prepared with an acid catalyst (page 3, column 4, lines 10-11). Ferrari (US 10010813 B2) discloses a polyorganosiloxane antifoam emulsion, water, nonionic surfactant, and a hydrophobic solvent. Creutz (JP 2007514544 A) discloses a foam control composition comprising a branched siloxane resin, a particulate filler, a flowing polysiloxane, a liquid hydrocarbon polymer (preferentially polyisobutylene), a non-polar organic material, and a polar component. Falana (US 20120071370 A1) discloses an aqueous defoamer composition comprising polydimethylsiloxane.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-F 8-5 ET.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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