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
Restriction Requirement:
Applicant’s election without traverse of Group I, claims 1-40, in the reply filed on 01/20/2026 is acknowledged.
Claims 41-48 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/20/2026.
Election of Species Requirement:
Applicant’s election without traverse of the following species in the reply filed on 01/20/2026 is acknowledged. Claims 1, 2, 11-14, 16-24, 28, 30-40 read on the elected species. The applicants elected the following species for the components of the claimed composition:
a) Siloxane-modified resin composition: polyurea-siloxane resin composition with (1) an amino functional alkoxy silane of N-butyl-3-aminopropyltrimethoxysilane, (2) no difunctional amine present, and (3) a solvent of butyl propionate;
b) Silicone oil additive: siloxane homopolymer with repeating units of poly(dimethylsiloxane);
c) Hardener: methyltrimethoxysilane;
d) Catalyst: dibutyltin diacetate; and
e) Solvent: ethyl-3-ethoxypropionate (EEP).
The election of species requirement regarding the at least one solvent (e) of instant claim 39 has been withdrawn.
Claims 3-10, 15, 25-27, and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/20/2026.
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 20 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 20 recites the limitation " silicone resin (a3)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Silicone resin (a3) is recited in claim 3, however, claim 20 does not depend on claim 3.
Claim Rejections - 35 USC § 112
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 20 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 20 recites, “The curable coating composition of claim 11, wherein the at least one silicone resin (b2) may be the same or different as the at least one silicone resin (a3)”. These limitations fail to further limit the silicone resin (b2). 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 32 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 32 depends on claim 31 and claim 32 recites the same limitations to the silicone oil additive as claim 31. 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 § 102
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 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.
Claim(s) 1, 2, 23, 24, 28, 31, 32, 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aizenberg (US 2015/0152270 A1).
Aizenberg exemplifies a gel-like coating comprising a urea based supramolecular polymer system (uPDMS) swollen in silicone oil (PDMS), wherein the uPDMS is prepared from an isocyanate and an aminosiloxane [p. 0158, 0180, 0237-0240]. Aizenberg discloses the uPDMS swollen with silicone oil forms a tough coating that is not only slippery, but also mechanically robust [p. 0240].
Aizenberg exemplifies a swollen slippery uPDMS film made by curing a mixture of 10 g uPDMS and 4 g silicone oil (PDMS) (71 wt. % uPDMS, 28 wt. % PDMS silicone oil; see instant claims 23 and 33) [see instant claims 24 and 28 regarding PDMS silicone oil] [p. 0261].
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.
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.
Claim(s) 1, 2, 11-12, 21, 23, 24, 28, 30-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gommans et al (herein ‘Gommans’, US 2009/0076217 A1).
Gommans is directed toward a one-component low temperature, moisture curable, storage stable coating composition comprising a silanol-functional silicone; an alkoxy-functional silicone; and a flexibilizer comprising a reaction product of two or more reactants [p. 0006].
For clarity, the components of the composition of Gommans read over the components of applicants claimed composition as follows:
The silanol-functional silicone corresponds to applicant’s silicone oil additive (b), referenced in instant claims 1, 24, 28, and 30-33
The alkoxy-functional silicone corresponds to the silicone resin (b2), referenced in instant claims 11, 20, 21, 22
The flexibilizer corresponds to the siloxane-modified resin composition (a) referenced in instant claim 1, particularly the alkoxy silane functional polyurea resin (b1) as referenced in instant claims 2, and 11, 18-20, wherein the flexibilizer is prepared from components (b1.1) and (b1.2), as referenced in instant claims 12, 13, 16, and 17.
Regarding the alkoxy silane functional polyurea resin (see instant claims 1, 2, 11 and 12):
Gommans teaches the flexibilizer (b1) of the present invention comprises a reaction product of a polyisocyanate (b1.1) and an aminosilane (b1.2) [p. 0079, claim 11].
Gommans teaches examples of aminosilanes (b1.2) which are suitable for use in the flexibilizers of the present invention include gamma-aminopropyltrialkoxysilane species [p. 0060,0082]
Furthermore, Gommans teaches the polyisocyanate (b1.2)comprises an aliphatic diisocyanate, such as 1,6-hexamethylene diisocyanate [p. 0080]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a polyurea rein flexibilizer from a polyisocyanate and an amino-functional alkoxysilane as taught by Gommans.
Regarding the silicone resin (see instant claims 11 and 21):
Gommans teaches alkoxy-functional silicones (b2) which are suitable for use in the present invention are commercially available and include, but are not limited to, for example, methoxy-functional silicones, including DC-3074 and DC-3037, commercially available from Dow Corning; and GE SR 191, SY-550, and SY-231, commercially available from Wacker Silicones located in Adrian, Mich [p. 0027]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the coating composition with a methoxy-functional silicone, as taught by Gommans.
Regarding the silicone oil additive (see instant claims 1, 24, 28, 30-33):
Gommans teaches the silanol-functional silicone (b) may be a poly(dimethylsiloxane) and has a weight average molecular weight in the range of 200 to 300,00 Da [p. 0017]. Gommans teaches the previously described silanol-functional silicone may be present in the coating compositions of the present invention in an amount ranging from 20 to 65 percent by weight, such as from 30 to 60 percent by weight, or in some cases, 50 to 55 percent by weight, with the weight percents being based on the total weight of the coating composition [p. 0022].
In light of this it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a coating composition comprising a poly(dimethylsiloxane) with a weight average molecular weight in the range of 200 to 300,00 Da. Furthermore, Gommans teaches embodiments wherein the silicone oil additive comprises 20 to 65 wt. % if the composition, which reads over applicants claimed range of 0.01-60 wt. %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding instant claim 23: Gommans teaches the flexibilizer is present in the coating composition in an amount ranging from 0.5 to 30 percent by weight, such as 3 to 25 percent by weight, or, in some cases, 5 to 15 percent by weight, with the weight percents being based on the total weight of the coating composition [p. 0041]. Gommans further teaches the previously described alkoxy-functional silicone may be present in the coating compositions in an amount ranging from 5 to 25 percent by weight, such as from 5 to 15 percent by weight, or, in some cases, 8 to 12 percent by weight, with the weight percents being based on the total weight of the coating composition [p. 0029].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a coating composition comprising the flexibilizer and alkoxy-functional silicone as taught by Gommans (corresponding to applicants (a), or (b1) and (b2)) wherein the combined weight of both components comprises 40-99.9 wt. % of the composition, as claimed by applicants. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding instant claims 34 and 35: Gommans teaches the coating compositions may comprise any of a variety of additional optional components [p. 0098].
Gommans teaches alkoxy-functional silicones are an optional ingredient in the coating composition [p. 0101].
Gommans teaches certain embodiments of the coating compositions comprise a alkoxy-functional silane comprising a compound represented by the general formula:
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140
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wherein each R16, R17 and R18 is independently selected from the group consisting of a hydrogen, an alkyl group, an aryl group, a cycloalkyl group, an alkoxy group, an aryloxy group, a hydroxyalkyl group, an alkoxyalkyl group, and a hydroxyalkoxyalkyl group, wherein each of the aforementioned groups may contain up to six carbon atoms; R19 is independently selected from the group consisting of a hydrogen, an aryl group having up to six carbon atoms, and an alkyl group having up to six carbon atoms [p. 0099]. A skilled artisan would appreciate the general teachings of Gommans regarding the alkoxy-functional silane obviously embrace methyltrimethoxy silane. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the coating composition of Gommans with a methyltrimethoxy silane component.
Regarding instant claims 36 and 37: Gommans teaches, in certain embodiments, the coating compositions comprise a catalyst, such as an organometallic catalyst. Example catalysts include organotin materials such as dibutyl tin dilaurate, dibutyl tin diacetate, dibutyltin diacetyldiacetonate, and organotitanates [p. 0104]. Gommans further teaches, in certain embodiments, the catalyst is present in the coating composition in an amount of up to 10 percent by weight, such as 0.02 to 5 percent by weight, or, in some cases, 0.08 to 2 percent by weight, with the weight percents being based on the total weight of the coating composition [p. 0106]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Gommans with up to 10 wt. % dibutyl tin diacetate, which reads over applicants claimed range of 0.01-10 wt. %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding instant claims 38-40: Gommans teaches organic solvents can be added if desired. Suitable solvents include, for example, esters, ethers, alcohols, ketones, glycols and the like. In certain embodiments, the coating compositions comprise up to 60 percent by weight organic solvent, based on the total weight of the coating composition [p. 0112]. Furthermore, Gommans exemplifies the use of xylene and aromatic 100 as organic solvents [table 1]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition with up to 60 wt. % of an organic solvent, such as xylene, wherein up to 60 wt. % solvent reads over applicants claimed range of 0.01-90 wt. %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gommans et al (herein ‘Gommans’, US 2009/0076217 A1) as evidenced by Dow (DOWSIL™3074 Intermediate).
Gommans teaches alkoxy-functional silicones (b2) which are suitable for use in the present invention are commercially available and include, but are not limited to, for example, methoxy-functional silicones, including DC-3074 and DC-3037, commercially available from Dow Corning [p. 0027]. DC-3074 has a viscosity at 25 °C of 90-180 cST and a molecular weight range of 1200-1700 Da as evidenced by Dow. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Gommans with a methoxy-functional silicone resin satisfying the ranges of instant claim 22. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 13-14, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gommans et al (herein ‘Gommans’, US 2009/0076217 A1), as applied to claims 1, 2, 11-12, 21-24, 28, 30-40 above, and further in view of Iezzi (US 2011/0319555 A1).
The disclosure of Gommans is above and is applied here as such.
Regarding the alkoxy silane functional polyurea resin:
Gommans is directed towards a one-component polysiloxane coatings that offer unique features good weatherability; abrasion resistance; corrosion resistance; and a low volatile organic content (VOC) [p. 0003]. The composition of Gommans comprises a silanol-functional silicone; an alkoxy-functional silicone; and a flexibilizer comprising a reaction product of two or more reactants [p. 0006].
Gommans teaches the flexibilizer (b1) of the present invention comprises a reaction product of a polyisocyanate (b1.1) and an aminosilane (b1.2) [p. 0079, Iezzi claim 11]. Gommans teaches the polyisocyanate (b1.1)comprises an aliphatic diisocyanate, such as 1,6-hexamethylene diisocyanate [p. 0080]. Gommans teaches examples of suitable aminosilanes (b1.2) include gamma-aminopropyltrialkoxysilane species, but suitable aminosilanes are not limited to the examples [p. 0082]. However, Gommans is silent with respect to gamma-aminosilanes further substituted at the N-position as well as suitable solvents for the preparation of the flexibilizer.
Iezzi is directed toward the synthesis of an alkoxysilane-terminated N-substituted urea resins and their application in one-component coatings having good weatherability and low VOC content [p. 0001-0002]. Iezzi exemplifies the preparation of a trimethoxysilane-terminated N-butyl urea resin, 1,1',1''-(6,6',6''-(2,4,6-trioxo-1,3,5-triazinane-1,3,5-triyl)tris(hexane- -6,1-diyl))tris(3-butyl-3-(trimethoxysilyl)propyl)urea) [corresponding to applicants component (b1), see instant claims 18-19][p. 0018]. Iezzi teaches the urea resin is prepared from the reaction of an isocyanate (HDI trimer, Desmodur 3600) (b1.1) and a N-substituted amino-functional alkoxysilane (N-butyl-3-aminopropyltrimethoxysilane, Dynasylan 1189 or SIB1932.2) (b1.2) in a butyl propionate solvent [see instant claims 13-14 and 16-17] [p. 0014-0016] as shown below:
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.
Iezzi discloses the coating composition further comprises a methoxy-functional silicone resin as an alkoxysilane-functional diluent, which corresponds to the alkoxy functional siloxane taught by Gommans as well as applicants component (b2) [p. 0024-0025].
Iezzi teaches the terminal alkoxysilane groups of the N-butyl urea resins are moderate-to-fast reacting due to inclusion of a substituent on a nitrogen atom of the urea linkage. Iezzi teaches that if a urea linkage has a substituent on a nitrogen atom, as is the case with the described resins, then the urea linkage would no longer remain planar as the substituted nitrogen fragment rotates to alleviate unfavorable steric interactions, and the nitrogen's lone pair would now become available to aid with hydrolysis of the tethered alkoxysilane group. Iezzi further teaches that greater rotation within the urea linkages, resulting from the N-substitution, also leads to less intermolecular hydrogen bonding, thereby yielding coatings with greater flexibility and lower viscosity [p. 0019].
The general teachings of Gommans embrace the preparation of a flexibilizer from HDI and N-butyl-3-aminopropyltrimethoxysilane in a butyl propionate solvent, as taught by Iezzi. Iezzi teaches the coating composition further comprises a methoxy-functional silicone resin, indicating that the urea resin of Iezzi is compatible with the coating system of Gommans. Furthermore, Iezzi teaches that the urea resins prepared from alkoxysilanes having substituent on a nitrogen atom result in coatings with improved flexibility [p. 0019, 0036]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the coating composition of Gommans with a flexibilizer prepared according to the teachings of Iezzi.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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