DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 3, 9 and 25 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.
In claim 3, language such as “including”, “as well as” and “like” renders this claim
indefinite as it is unclear what weight to give the limitation and/or language that follows.
In claim 9, indicating an average molecular weight without specifying what type of molecular weight it is (Mn, Mw, Mz, etc.) renders this claim indefinite.
For claim 25, including the addition language of the CAS number and “also referred to” confuses the scope of this claim. The two silanes in this claim are known in the art and do not need further elaboration. The Examiner suggests that this language be removed.
Applicant is advised that should claims 13 and 14 be found allowable, claims 15 and 16 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Note that a hydroxy terminated siloxane is the same as a silanol terminated siloxane. Both a represented by HO-Si groups.
Claim Rejections - 35 USC § 102 and 103
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.
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 1 to 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dierdorf et al. 2009/0286086.
Diedorf et al. teach a polysilazane coating composition.
As taught in paragraphs 28 to 32, the coating can be applied to a surface that
has already been painted (by a basecoat or a primer or clearcoat). This meets the claimed requirement of a painted surface.
In paragraphs 9 to 16 Diedorf et al. teach applying a polysilazane coating to the substrate. This meets the requirement of a first layer of a semi-polar polymer, as instant claims 2 and 3 embrace polysilazanes as the semi-polar polymer. This meets the semi-polar polymer in each of claims 1 to 3 is found in Diedorf et al.
Finally, see paragraph 37 which teaches that the coating may be followed by further after treatment, producing a hydrophobic surface. This meets the claimed outer layer of a non-polar material, as a non-polar material will necessarily be hydrophobic.
To this extent note that nonpolar molecules are hydrophobic because they lack the partial charges necessary to form favorable electrostatic interactions, such as hydrogen bonds, with highly polar water molecules. In fact applicants’ specification states that the non-polar material enhances the hydrophobic properties of the coating (paragraph 6).
Since the hydrophobic surface meets the requirement of a non-polar material, each requirement in claim 1 is anticipated by Diedorf et al.
As noted above, claims 2 and 3 are met by the polysilazane structure as shown in paragraphs 9 to 16.
Claims 4 to 10 are rejected under 35 U.S.C. 103 as being unpatentable over Diedorf et al. 2009/0286086.
For claims 4 to 8, Diedorf et al. teach a general formula that embraces the poly-
silazanes (PSZ) of these claims in paragraphs 9 to 16. Note for instance that in formula 3, the R3 is preferably triethoxysilyl propyl (such that the repeating “q” group meets the “z” group in claim 5), R*** is hydrogen (such that the repeating “p” groups meets the claimed “y” group in claims 3 and 5) and R’ is hydrogen (such that the repeating “n” group meets the claimed “x” group in claims 3 and 5). Furthermore see the copolymers in paragraph 42 which have the same repeating units as found in claim 4 (albeit the proportion of each unit is not disclosed).
In summary, the teachings in Diedorf et al. differ from these claims only in that they do not specifically teach the required “x, “y” and “z” values.
In view of that which is taught in Diedorf et al., one having ordinary skill in the art would have found the selection of a PSZ meeting the claimed formulas to have been obvious and well within routine experimentation, in an effort to optimize the properties associated with the PSZ as disclosed by Diedorf et al. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
The above is true particularly in view of the fact that PSZ meeting these claimed requirements are commercially available. This makes the selection of such a PSZ more convenient and cost effective.
In this manner each of claims 4 to 8 are rendered obvious.
For claim 9, note that Diedorf et al. teach an Mn range of from 150 to 150,000 (paragraph 15) which completely embraces the claimed range. From this the skilled artisan would have found the selection of an average molecular weight within the claim-ed range to have been obvious.
Claims 1 to 18 are rejected under 35 U.S.C. 103 as being unpatentable over Diedorf et al. 2009/0286086, further in view of WO 2009/144495.
The teachings in Diedorf et al. were noted supra. This reference fails to teach
specific non-polar material as required by claims 10 and on. Diedorf et al. give a more general teaching of a further hydrophobic surface.
The WO reference teaches hydrophobic coatings that prevent or reduce contam-ination on a surface. See the abstract. See also page 12, lines 21 to 25, which teaches painted surfaces as suitable surfaces.
As can be seen, this hydrophobic coating is prepared from polydimethylsiloxane which has been crosslinked with a methyl oximino silane. See page 5, line 18, through page 7, line 24. See the compositions found in the working examples as well. These meet the requirement of each of claims 10 to 17.
As such one having ordinary skill in the art would have found the use of a hydro-phobic coating composition as found in the WO reference as the hydrophobic material used in the after treatment of the coated substrate in Diedorf et al. to have been obvious with the expectation of obtaining a hydrophobic (i.e. non-polar) layer that has the many benefits disclosed by the WO reference. In this manner these claims are rendered obvious.
For specific claim 18, the Examiner notes that the WO reference uses a dimethyl ketoxime silane but the skilled artisan would have found such a difference to have been obvious over the total teachings in the WO reference which include the general teaching of a ketoxime silane, and the fact that methyl and ethyl are adjacent homologs in the alkyl series.
Claims 19, 20 and 22 to 25 are rejected under 35 U.S.C. 103 as being unpatent-able over Diedorf et al. 2009/0286086, further in view of WO 2009/144495, evidenced by Evonik DYNASYLAN® data sheet, attached hereto.
Page 5, lines 7-15 of the WO reference teaches the presence of silane adhesion promoter. Such a promoter is designed to bond to the surface of a substrate and forms a layer that improves adhesion of the subsequent layer. Such compounds are known as coupling agents and meet claim 19.
To support the statement above, the Examiner refers to Evonik DYNASYLAN® data sheet. This states that organofunctional silanes form molecular bridges between inorganic and organic materials. This is the equivalent of the claimed bridging layer.
Page 7, line 26, through page 8, line 15, of the WO teaches organofunctional silanes that can be used as adhesion promoters. This includes a polyfunctional amino silane that has a plurality of both amino functional groups and an alkoxy leaving group. This is also the aminosilane found in the compositions of the working examples. From this the skilled artisan would have found it obvious to employ such a functional silane as the adhesion promoter in the WO reference with the expectation of obtaining the known properties thereof. This silane meets the requirement of claims 20, 22, 23 and 24, thus rendering these claims obvious.
Finally, for claim 25, the Examine recognizes that these specific aminosilanes are not taught by the WO reference but they are described in the Evonik DYNASYLAN® data sheet as useful silane adhesion promoters that offer various benefits and desirable
properties. Note that claim 25 confirms that such silanes are met by the DYNASYLAN® silanes. In view of the teachings in the Evonik data sheet, the fact that these silanes are readily and commercially available and are well known as adhesion promoters, the skilled artisan would have found such an adhesion promoter to have been obvious in the composition of the WO reference. In this manner claim 25 is rendered obvious.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
3/30/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765