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 .
Information Disclosure Statement
The two information disclosure statements filed 4/19/2024 have been fully considered. Initialed copies of said IDS are enclosed herein.
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, 2, and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Sano et al (US 2010/0242789).
With regards to claims 1 and 5, Sano teaches a water repellant treatment for aluminum substrates comprising adding a compounds of formula (1) (abstract) to an aluminum substrate and reacting a hydroxyl group present on the surface of the aluminum with said compound of formula (a) (abstract). An acid is added to the compound of formula (1) (0081) resulting in the hydrolysis of the alkoxysilyl group to generate silanol and the opening of the glycidyl group (0083). The resulting hydrolyzed compound is similar to the claimed compound of claim 1 wherein the hydrolyzed alkoxysilyl group reads on the -OH, claimed R is equivalent to R2 of Sano (which may comprise a C1-4 alkyl), r of Sano may be 2-10 and reads on claims y 2-11, and the open glycidyl ring comprises -OCH2CH2CH2OH. While said structure comprises an additional -CH2-, 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 the claimed X comprising -OCH2CH2CH2OH in place of the -OCH2CH2CH2OH taught by Sano 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 Sano inherently meets said limitation since it is compositionally identical to the claimed composition.
With regards to claim 2, Sano teaches R may comprise C1.
With regards to claim 4, Sano teaches the composition may comprise water (e.g. in step g), ethanol (0051), and acetic acid (0051). The examiner takes the position said composition read on the claimed composition wherein methylene chloride is present in amounts of 0%.
With regards to claim to claim 6, Sano teaches R may comprise C1 and Y may be 2-10, herein understood to teach the claimed Y is 5.
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 by 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 Sano 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.
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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/KEVIN R KRUER/ Primary Examiner, Art Unit 1787