DETAILED ACTION
Response to Preliminary Amendment
The preliminary amendment submitted on 14 June 2024 has been entered. After entry of the amendment, claims 1-18 are currently pending in the application.
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.
Claims 2-3, 6-7, 14, 16 and 18 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.
As for claim 2, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “less than 80 g/L”, and the claim also recites “preferably less than 50 g/L, more preferably less than 25 g/L, even more preferably 0 g/L” which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As for claim 3, the claim is indefinite as it recites the broad limitation of “50 to 350 nm” and the claim also recites “preferably 100 to 300 nm” which is a narrower statement of the range/limitation and a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.
As for claim 6, the claim is indefinite as it recites the broad limitation of “400 -150 000” and the claim also recites “preferably 1000 to 140 000, more preferably 5000 - 130 000, even more preferably 10 000 to 120 000 g/mol” which are narrower statements of the range/limitation and a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.
As for claim 7, the claim is indefinite as it recites the broad limitation of “additive oil” and the claim also recites “preferably a hydrophilic modified polysiloxane oil and/or a hydrophobic modified polysiloxane oil” which is a narrower statement of the range/limitation and a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.
As for claim 14, the tern “e.g.”" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
As for claim 16, the claim is indefinite as it recites the broad limitation of “marine structure” and the claim also recites “preferably a marine structure which is submerged when in use” which is a narrower statement of the range/limitation and a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.
As for claim 18, the claim is indefinite as it recites the broad limitation of “marine structure” and the claim also recites “preferably a marine structure which is submerged when in use” which is a narrower statement of the range/limitation and a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.
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 (or as subject to pre-AIA 35 U.S.C. 102) 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.
Claims 1-6, 9, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adehahr et al (US Patent Application Publication No. US 2021/0040323 A1) as evidenced by the DOWSIL TM 8005 technical data sheet.
The reference teaches, in Example 1, a composition comprising:
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202
475
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The instant claims are met by the reference.
As for claim 1, the Adehahr et al reference teaches DOWSIL TM 8005 which meets component (a). The QUARTZENE ® Z1 meets component (b). As for the droplet size, as the reference teaches the use of the same type of polysiloxane material recited in the specification, it would appear to possess the claimed droplet size. The water content of the DOWSIL TM 8005 meets the claimed water content as evidenced by the technical data sheet which teaches a dry content of 45-55%.
As for claim 2, the VOC content of the composition appears to fall within the claimed range as the reference teaches the same material recited in the instant specification.
As for claim 3, as the reference teaches the use of the same type of polysiloxane material recited in the specification, it would appear to possess the claimed droplet size.
As for claim 4, the DOWSIL TM 8005 is branched.
As for claim 5, as the reference teaches the use of the same type of polysiloxane material recited in the specification, it would therefore possess the claimed formula.
As for claim 6, as the reference teaches the use of the same type of polysiloxane material recited in the specification, it would therefore possess the claimed molecular weight.
As for claim 9, the amount falls within the claimed range.
As for claim 14, the reference teaches that the composition may be applied to a substrate by spraying (see paragraph [0199]). Paragraph [0196] teaches that the composition is cured on the substrate. As for the composition being a fouling release coating as the composition is the same it would therefore possess that property. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 15, the reference teaches a coated substrate (see claims 17+).
As for claim 16, paragraph [0196] teaches that the composition can be used for marine purposes.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claims 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Adehahr et al (US Patent Application Publication No. US 2021/0040323 A1) as evidenced by the DOWSIL TM 8005 technical data sheet.
The references were discussed previously, above.
The instant claims are obvious over the reference.
As for claim 7, the reference teaches, in paragraph [0190], the addition of fluids such as Si-based fluids. The silicone based fluid may for example be a trimethylsilyl terminated polydimethylsiloxanes. This meets the additive oil.
As for claim 8, while the reference does not teach the addition of a biocide it is within the level of ordinary skill in the art to include a biocide in order to provide a biocidal effect of the composition. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
As for claim 10, the reference teaches, in paragraphs [0192]-[0194], that the hydrophilic powder (i.e. filler) and/or gel is mixed with the binder comprising the silicon compound. While the reference does not teach the same process it is believed that the result is the same. According to MPEP 2144.04 (IV)(C): The selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); Selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Allowable Subject Matter
Claims 11-13 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and provided that the 112(b) rejection is overcome.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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August 5, 2026
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