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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9) and species B (claims 6-8) in the reply filed on 8/1/2025 is acknowledged.
Groups II-IV (claims 10-15) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/1/2025.
The election/restriction requirement for species has been withdrawn since the full scope of the claim 1 species is searched/examined.
Response to Amendment
The amendment filed on 12/2/2025 has been entered. Claim(s) 1, 4, 6 and 8-9 is/are currently amended. Claim(s) 5 has/have been cancelled. Claim 16 is new. Claim(s) 1-4 and 6-16 is/are pending with claim(s) 10-15 withdrawn from consideration. Claim(s) 1-4, 6-9 and 16 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 12/2/2025, with respect to 112(a) rejection has been fully considered and is persuasive. The 112(a) rejection is withdrawn.
Applicant's argument filed on 12/2/2025, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 12/2/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that claim 1 is now amended to incorporate the subject matter of claim 5 which is not rejected as being obvious over the prior art. The prior art does not teach or suggest the subject matter in claim 1.
In response, the previous office action indicated allowable subject matter of claims 5-7 because the prior art does not teach the claimed diallyl tertiary amine which is in the elected species B in claim 1. The office action made a 103 rejection on claim 1 because the prior art teaches species A in claim 1. The current claim 1 recites species A or species B. Therefore, claim 1 remains rejected over the prior art.
Claim Rejections - 35 USC § 103
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-3, 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dueva-Koganov et al (US 20100135936 A1).
Regarding claims 1-2, Dueva-Koganov teaches amphiphilic block copolymers comprising a siloxane segment and a cationic segment [Abstract]. The cationic block may contain zwitterionic monomers [0236]. The siloxane block may be terminated with double bonds (i.e. vinyl groups) [0297]. Examples 5-9 illustrate formation of amphiphilic polymers by reacting diallyldimethylammonium chloride (DADMAC) with vinyl-terminated PDMS [0368].
The siloxane block polymer may be formed from additional ethylenically unsaturated monomers and may be crosslinked [0260]. For example, the siloxane block polymer may comprise a polydivinylsiloxane block and a polydimethylsiloxane block [0291].
It would have been obvious to one of ordinary skill in the art at the time of filing to add additional ethylenically unsaturated monomer such as polydivinylsiloxane in Dueva-Koganov’s composition and introduce crosslinking, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The examiner submits that the vinyl-terminated PDMS reads on the claimed vinyl-terminated poly(dialkylsiloxane). The polydimethylsiloxane block contains dimethyl siloxane.
The DADMAC reads on the claimed diallyl zwitterionic monomer.
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When the siloxane block polymer contains a polydivinylsiloxane block and a polydimethylsiloxane block, the polydivinylsiloxane can act as a crosslinking agent, reading on the claimed curing agent.
Therefore, the recited “mixing a vinyl-terminated poly(dialkylsiloxane) and a diallyl zwitterionic monomer with a curing agent and curing the mixture to introduce a zwitterionic group into the poly(dialkylsiloxane)” is obvious.
Regarding claim 3, Dueva-Koganov teaches triblock copolymers of vinyl terminated polydimethylsiloxane and DADMAC in Examples 5-9 [0368 and Table 1]. Therefore, the molar ratio of the vinyl terminated polydimethylsiloxane to DADMAC is 1:2, falling within the claimed range of 1-5:12.
Regarding claims 9 and 16, the recited “coating an article with the polysiloxane composition” is an intended use limitation that imparts no additional structure beyond the claimed polysiloxane composition and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
Allowable Subject Matter
Claims 4 and 6-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including the elected limitations of the base claim and any intervening claims.
The following is an examiner's statement of reasons for allowance:
Dependent claim 4 is directed to a method of preparing a polysiloxane composition comprising a zwitterionic moiety, the method comprising: mixing a vinyl-terminated poly(dialkylsiloxane) and a diallyl zwitterionic monomer with a curing agent and curing the mixture to introduce a zwitterionic group into the poly(dialkylsiloxane), further comprising reacting a diallyl tertiary amine compound with a substituted saturated heterocylic heterocyclic compound to produce the diallyl zwitterionic monomer. There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Dueva-Koganov et al (US 20100135936 A1). Dueva-Koganov teaches mixing a vinyl-terminated poly(dialkylsiloxane) and a diallyl zwitterionic monomer with a curing agent and curing the mixture to introduce a zwitterionic group into the poly(dialkylsiloxane), as stated in the 103 rejection. However, Dueva-Koganov does not teach reacting a diallyl tertiary amine compound with a substituted saturated heterocylic heterocyclic compound to produce the diallyl zwitterionic monomer.
Dependent claims 6-8 are directed to a method of preparing a polysiloxane composition comprising a zwitterionic moiety, the method comprising: mixing a vinyl-terminated poly(dialkylsiloxane) and a diallyl tertiary amine compound with a curing agent; curing the mixture to form a cross-linked tertiary amine-modified poly(dialkylsiloxane); and reacting the cross-linked tertiary amine-modified poly(dialkylsiloxane) with a substituted saturated heterocyclic compound to introduce a zwitterionic group into the cross-linked tertiary amine-modified poly(dialkylsiloxane). There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Jiang et al (US 20170174907 A1). Jiang teaches copolymerizing polysiloxane with a vinyl tertiary amine, followed by reacting with a heterocyclic compound to forma a zwitterionic moiety [Fig.23]. However, the vinyl tertiary amine is not the claimed diallyl tertiary amine, the amine section being in the side chain, not in the polymer backbone.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762