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 .
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 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.
Claims 1-21 are pending.
Election/Restrictions
Applicant’s election, without traverse, of Group I and the following species, claims 1-2, 5-7, 10-13, 19-21 in the reply filed on 05/13/26 is acknowledged. Upon further consideration, the particular R and X variables are not required as part of the election requirement, just the formula indicated below is sufficient.
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Claim(s) 3-4, 8-9 (non elected species) and 14-18 (non elected invention) is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/13/26.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 1-2, 5-7, 10-13, 19-21 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites the siloxane compound with a formula that is vague. For instance, it is unclear if at least one of the Z groups must be present in the compound because the formula indicates they each may be absent and yet requires that the siloxane compound is “quaternary” which can only be provided by the Z group. It is also unclear how A can be Si(CH3)3 because that would require a direct Si to Si bond. The formula is also vague because it recites “such as” which makes the limitation that follows unclear in terms of whether it is optional or not.
Claim 13 recites that the composition is substantially free of silated quaternary ammonium compounds which is vague because it appears that the siloxane compound as recited is a silated quaternary ammonium compound. If applicant means to exclude all siloxane/silated quaternary ammonium compounds outside the scope of the claimed formula, this should be recited in the claims.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-2, 5-7, 10-13, is/are rejected under 35 U.S.C. 103 as being unpatentable over MacLaughlin (U.S. 2019/0291132) in view of Chouai (U.S. 2010/0163424) in view of Lindemann (U.S. 5,169,884) as evidenced by Huang (U.S. 2014/0175685).
Regarding claims 1-2, 5-7, 10-13, MacLaughlin discloses a paint composition for steel substrates that includes solvent, polymer, and Silquat Di-10 which is the same siloxane compound used in the present examples and corresponds to the elected species (see as evidence, [0070] of Huang, also see interview summary) and inherently is a compound as in claims 2, 5-7, and 10, at an amount overlapping claim 12 and without requiring any of the compounds of claim 13 (see abstract, [0031], [0032], [0038], [0051], [0058]). In addition to the disclosed amount of the siloxane compound overlapping the claimed range, it is also disclosed with an effect (i.e., activating the substrate, [0021]) such that the amount of the ingredient in the composition would have been obvious to adjust, including to the values of claim 12, as part of optimizing the degree of surface activation functionality imparted to the paint.
The composition is not explicitly disclosed as being anti-corrosive when applied to the steel, however, this is inherently the case to at least some degree based on the same siloxane compound being taught by MacLaughlin as in the present application. In addition to this being inherent based on MacLaughlin, Chouai (see abstract, [0006], [0052]) is also directed to polymer based paints applied to metal substrates and discloses that such coatings may be (explicitly) anticorrosive and may include compounds/polymers within the scope of claim 11 in order to achieve this anticorrosive effect (i.e., phosphate ester polymers [0007], with quaternary ammonium and/or amine catalysts, [0027], and/or acrylamide cationic resins [0043], and/or imidazole crosslinker [0046], and/or carboxylic emulsifying acids [0048]). Such that it would have been obvious to have used the phosphate ester polymer (and associated catalyst, cationic resin, crosslinker, and emulsifying acid ingredients described above) as the polymer paint component in MacLaughlin because MacLaughlin calls for suitable polymers generally and Chouai discloses a particular polymer system for painting metal substrates that provides (explicitly) anticorrosive effects
Regarding claims 19-21, modified MacLaughlin teaches all of the above subject matter including applying the coating to metal/steel substrates with an amount of the siloxane compound that renders obvious the amount in claim 20, but does not disclose that such substrates are a “containment” used in the industries recited in claim 21. However, Chouai discloses that the steel substrates benefiting from such anticorrosive paints include automotive body panels ([0052], such that it would have been obvious to have used the paint of modified MacLaughlin for such automotive body panels to apply the coating to as many commercially viable application as possible), which inherently constitute a “containment” as in claim 19 for the interior contents of the automobile and an automobile is inherently capable of being “used in” transportation in the recited industries (i.e., the “used in” limitation of claim 21 is merely an intended use that is not given patentable weight because the body of the claim sets forth all of the limitations of the claimed invention, see MPEP 2111.02 II).
In addition to the containment limitation being met by modified MacLaughlin as set forth above (based on MPEP 2111.02 II), Lindemann is also directed to anticorrosive coating compositions for steel substrates and further teaches that oil tanks and pipelines (within the scope of claim 21) also benefit from such anticorrosive coatings (see abstract, col. 3, line 20-50, col. 6, lines 25-30, col. 11, lines 50-60), such that it would have been obvious to have used the paint of modified MacLaughlin for such oil tanks/pipelines as in Lindemann to apply the coating to as many commercially viable application as possible.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights