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 .
Drawings
The drawings filed 4/19/2024 are accepted.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Klein et al (US 5,430,167) in view of Wang (US 2014/023579).
Klein teaches a hydrophilic silane composition comprising compounds of the following formula (abstract):
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wherein R.sup.1, R.sup.2 and R.sup.3 in the molecule are the same or different and represent aliphatic hydrocarbon groups (herein understood to read the claimed R groups comprising an alkyl group); R.sup.4 is a divalent hydrocarbon group with 3 to 14 carbon atoms (herein understood to read on the claimed compound wherein y is 2 to 11), and R.sup.5 is a group having the formula --O(CH.sub.2).sub.b --, wherein b may have a value of 1 (said R5-OH is understood to read on the claimed OCH2CH2OH).
Klein is relied upon as above but does not teach the alky of the R2 group may be replaced by an -OH group. However, Wang teaches silane compositions (074) containing SI-OH groups provide the silane composition with functional groups which can connect with surface hydroxyl groups of organic polymers, metal oxides or other silanol groups to allow such composition to remain on the surface thereof (0074). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to replace the R2 group of Klein with a hydroxy group in order to provide reactivity to a variety or substances including organic polymers, metal oxides or other silanol groups.
With regards to the preamble limitation “an ice mitigating coating,” the examiner takes the position that said limitation is an intended use limitation and does not further limit the claimed invention. Alternatively, the examiner takes the position that the coating of Klein inherently meets said limitation since it is hydrophilic and hydrophilic compounds are known to be useful for mitigating ice.
With regards to claim 2, Klein teaches R.sup.1, R.sup.2 and R.sup.3 are preferably methyl (col 4, lines 1+) (herein understood to read the claimed R groups comprising methyl groups); R.sup.4 is a divalent hydrocarbon group with 3 to 14 carbon atoms (herein understood to read on the claimed compound wherein y is 2 to 11), and R.sup.5 is a group having the formula --O(CH.sub.2).sub.b --, wherein b may have a value of 1 (said R5-OH is understood to read on the claimed OCH2CH2OH).
With regards to claim 3, Klein teaches R.sup.4 is a divalent hydrocarbon group with 3 to 14 carbon atoms (herein understood to read on the claimed compound wherein y is 7, 10, or 11), and a may be zero.
With regards to claim 4, Klein teaches the composition may comprise water (see “Field of Invention”).
With regards to claim 5, Klein teaches R.sup.1, R.sup.2 and R.sup.3 are preferably methyl (col 4, lines 1+) (herein understood to read the claimed R groups comprising methyl groups); R.sup.4 is a divalent hydrocarbon group with 3 to 14 carbon atoms (herein understood to read on the claimed compound wherein y is 2 to 11), and R.sup.5 is a group having the formula --O(CH.sub.2).sub.b --, wherein b may have a value of 1 (said R5-OH is understood to read on the claimed OCH2CH2OH).
With regards to claim to claim 6, Klein teaches R.sup.1, R.sup.2 and R.sup.3 are preferably methyl (col 4, lines 1+) (herein understood to read the claimed R groups comprising methyl groups); R.sup.4 is a divalent hydrocarbon group with 3 to 14 carbon atoms (herein understood to read on the claimed compound wherein y is 5), and R.sup.5 is a group having the formula --O(CH.sub.2).sub.b --, wherein b may have a value of 1 (said R5-OH is understood to read on the claimed OCH2CH2OH).
Claim(s) 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prigge et al (US 4,973,563).
Prigge teaches a process of making a surface hydrophobic comprising applying a reagent comprising organosilane or silanols to the surface (abstract). Said reagent may comprise R3SiOH (col 3, line 42)-herein understood to read on the formula of claim 7. Prigge teaches the R may comprise CH3, C2H5 or C3H7 (col 9, lines 42+).
Prigge does not teach the composition may comprise a blend of said reagents. However, the courts have held that "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) (citations omitted). Thus, it would have been obvious to one of ordinary skill in the art to utilize a mixture of two or more reagents; the motivation for doing so would have been the courts have held that "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."
Prigge teaches the R group may comprise C1-C3, but does not teach longer alkyl groups may be utilized. However, the courts have held a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize longer alkyls in place of the C1-C3 alkyls taught by Prigge as the courts have held such homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
With regards to the preamble limitation “an ice mitigating coating,” the examiner takes the position that said limitation is an intended use limitation and does not further limit the claimed invention. Alternatively, the examiner takes the position that the coating of Prigge inherently meets said limitation since it is compositionally identical to the claimed composition.
With regards to claim 9, Prigge does not teach the claimed “two different silanols” but renders obvious the use of each individually for the reasons noted above. Since the courts have held "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,” the examiner takes the position it would have been obvious to one of ordinary skill in the art to utilize the claimed mixture of two reagents; the motivation for doing so would have been the courts have held that "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."
With regards to claims 10 and 11, the examiner notes that the claims do not require the claimed silanol to react with metal; rather, the claim merely requires the silanol be able to react with metal when applied thereto. The silanols of Prigge are understood to be capable of reacting with metal/aluminum as it is known in the art (see Sano above) that silanols will react with metal surfaces and condense therewith.
Response to Arguments
Applicants’ arguments filed 6/25/2026 have been fully considered, Said arguments are sufficient to overcome the previous rejection based upon the teachings of Sano.
Response to Claim Rejections Under 35 U.S.C. § 103 of Claims 7-11 Over Prigge
With regards to the rejection of claims 7-11 over Prigge, applicant argues the Office Action fails to establish a prima facie case of obviousness as to claim 7 based on Prigge. Specifically, applicant argues Prigge in no manner discloses that the second step generally, or the silanols specifically, are used for the purpose of making a surface hydrophobic. Said argument is noted but is not persuasive as the rejection never took the position that the second step was for the purpose of making a surface hydrophobic.
Applicant argues the Office Action then relies on In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) for the proposition that combining two compositions useful for a common purpose as taught by the prior art would be prima facie obvious when that the two combinations form a third composition useful for that same common purpose Applicant argues Prigge may not be modified under the holding of In re Kerkhoven to arrive at the "ice mitigating surface coating comprising two different silanol compounds" as recited in independent claim 7. The purposes of silanols in Prigge do not overlap with the purpose of the claimed coating of claim 7 or any of the purposes recited in the instant application. Said argument is noted but is not persuasive for reasons of record. Specifically, an intended use limitation does not further limit a claimed invention. Alternatively, the composition of Pigge is understood to inherently meet said limitation since it is compositionally identical to applicant’s claimed composition. Furthermore, the motivation to modify the prior art need not be the same motivation relied upon by the applicant.
For the reasons noted above, applicants’ arguments with respect to the teachings of Prigge are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/ Primary Examiner, Art Unit 1787
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