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 information disclosure statement (IDS) submitted on 2/26/2025 has been considered by the examiner.
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 1-15 and 20-21 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.
Claim 1 requires clarification of what appears to be a Markush group. The list which is not numbered appears to recite a first group of
Group I of Markush
siloxane OR
silicone OR
3-[2-aminoehtyl)amino]propyl Me di-Me methoxy terminated AND a poly (oxy 1,2 ethanediyl alpha istotridecyl omega hydrox amino polysiloxane emulsion
Group II of Markush
A mixture of siloxane and silicone (this differs from the first group which does not need to be a mixture) OR
3-[aminoethyl0amino]propyl Me di-Me methoxy terminated AND 3-[(2-aminoethyl)amino]propyl Me di-Me hydroxy terminated
Group III of Markush – Group I and Group II
It is unclear if applicant is attempting to claim a siloxane and/or silicone having the recited terminal groups and what combination is intended and if the siloxane and/or silicone is an amino siloxane or amino silicone etc.
MPEP 702.01 the examiner has afforded the claims the broadest reasonable interpretation in view of the specification and has provided a reasonable search in accordance therewith. For purposes of examination the claimed composition is interpreted to be amino silicone and or amino siloxane having a methoxy terminal group and the same but possessing a hydroxy terminal group used in combination.
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.
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) 1-7, 10, 14, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takewaki (CN 113661223A)
Regarding Claims 1-7, 10, 14, and 20:
Takewaki discloses a composition of an emulsion hydrophobing agent composition comprising:
20- 100 pbw hydroxyl or alkoxy terminated amino modified silicone (4-38 % wt.)
and
20-80 pbw Amino modified organic silicon (3-38 % wt.) and
2 to 100 pbw of a surfactant (3-4 % wt.)
1 to 25 pbw of a specific polyether modified silicone (1-1.8 wt.%) and
10-2000 pbw water (18.8-86.7 wt. %)
to provide hydrophobic durability coating to a surface of glass (Abstract)(claim 1 of reference)
(overlapping the claimed ranges of active compound and solvent and surfactant)
SEE CLAIMS OF REFERENCE TEACHING THE CLAIMED SILOXANE AND/OR SILICONE WITH OVERLAPPING ALKYL/METHOXY GROUPS AND THE CLAIMED TERMINAL GROUP OF HYDROXYL AND METHOXY WHERE THE SILOXANE/SILANE ARE AMINO and the R groups overlap and encompass the claimed alkyl and methoxy /alkoxy groups of instant claim 1:
1. An emulsion hydrophobizing agent composition comprising the following components (A) to (E):
20 to 80 parts by mass of (A) an amino-modified silicone end-capped with a hydroxyl group or an alkoxy group represented by the following general formula (1) having a viscosity of 30 to 2,000 mPas at 25 ℃ and having an amino equivalent of 300 to 3,000g/mol,
[ chemical formula 1]
In the formula (1), R 1 Independently of one another, an unsubstituted monovalent hydrocarbon radical having 1 to 20 carbon atoms, R 2 Independently of one another, of the general formula (2): -R 4 -(NH-R 5 -) p NH 2 A group represented by the formula (2), R 4 R is R 5 Are each independently a divalent organic group having 1 to 6 carbon atoms, p is 0 or 1, R 3 Are independently hydroxyl or groups selected from methoxy and ethoxy, a, b, c, d and e are real numbers which satisfy the ranges of 2-10 a, 10-1,000 b, 1-50 c, 0-5 d and 0-5 e;
20 to 80 parts by mass of (B) an amino-modified silicone represented by the following general formula (3) having a viscosity of 50 to 5,000 mPas at 25 ℃ and an amino equivalent of 300 to 4,000g/mol, wherein the total amount of the component (A) and the component (B) is 100 parts by mass,
[ chemical formula 2]
In the formula (3), R 1 、R 2 With R as above 1 、R 2 Identical, R 6 Are independently of each other selected from R 1 R is R 2 F, g, h, i and j are real numbers satisfying the ranges of 2.ltoreq.f.ltoreq.10, 10.ltoreq.g.ltoreq.1,000, 0.ltoreq.h.ltoreq.50, 0.ltoreq.i.ltoreq.5, 0.ltoreq.j.ltoreq.5, respectively, wherein, when h=0 in the above formula (3), R 6 Is selected from R 2 A group in the option (a);
2 to 100 parts by mass of (C) at least 1 or more surfactants selected from nonionic surfactants, anionic surfactants, cationic surfactants and amphoteric surfactants;
1 to 25 parts by mass of (D) a polyether-modified silicone represented by the following average composition formula (4) having a viscosity of 10 to 10,000 mPas at 25 ℃ and having an HLB of 5 to 13,
[ chemical formula 3]
In the formula (4), R 1 With R as above 1 Identical, R 7 Independently of one another, of the general formula (5): -R 9 -O-(C 2 H 4 O) x -(C 3 H 6 O) y -(C 4 H 8 O) z -R 10 Polyether group represented by the formula (5), R 9 Is a divalent organic group having 1 to 6 carbon atoms, R 10 Is selected from-H, -CH 3 、-C 2 H 5 、-C 3 H 7 、-C 4 H 9 - (C=O) CH 3 Wherein x, y and z are real numbers satisfying the ranges of x is not less than 5 and not more than 30, y is not less than 0 and not more than 30, and z is not less than 0 and not more than 30, R 8 Is selected from the group consisting of R 1 R is R 7 Or a group selected from the group consisting of-OH, -OCH 3 -OC 2 H 5 Wherein q and R are real numbers satisfying the ranges of 0.ltoreq.q.ltoreq.100 and 0.ltoreq.r.ltoreq.40, respectively, where r=0, R 8 Is R 7
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The reference teaches both methoxy terminated and hydroxy terminated as such it would have been obvious to one of ordinary skill in the art at the time of filing the invention to use them in combination. "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) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
The reference teaches ranges which overlap and/or encompass the instantly claimed ranges. See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The composition comprises C a surfactant of
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alcohol polyoxyethylene ether
The disclosed non-ionic surfactants of the reference render obvious the claimed surfactants with overlapping alkyl groups and are obvious to one of ordinary skill in the art at the time of filing the invention to try.
The composition may further comprise additives In addition, as other additives, it also can comprise thickening agent, anti-freezing agent, preservative, anti-rust agent, antioxidant and ultraviolet absorbing agent and so on. (P10)
The composition is used for coating surface or glass surface of the vehicle (P11)(meeting claims 14 and 20)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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