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 1-6, in the reply filed on 06/01/26 is acknowledged. Claims 7-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
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 3 and 4 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.
The terms "hydrophilic" and "hydrophobic" in claims 3 and 4 are relative terms which renders the claim indefinite. The terms "hydrophilic" and "hydrophobic" are not defined by the claim as no composition is provided other than that it is a silicone oil and as currently claimed the terms "hydrophilic" and "hydrophobic" have no unambiguous meaning in the art, e.g. because one and the same molecule may comprise polar and non-polar substituents which would render the composition hydrophobic or hydrophillic. The instant specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant’s disclosure at ¶¶ 0099-0101 compositionally alludes to what the respective oils can be and it is suggested that Applicant claim the same. For the purposes of examination any silicone will read on the limitations.
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by JP 2018-080275A issued to Chugoku Marine Paints Ltd.
JP 2018-080275 A [Applicant is directed to the claims, ¶¶ 0009, 0044-0047, 0057, 0063-0073, 0090-0094, 0096-0099, examples]. JP 2018-080275A describes a fishing net dyed with an antifouling coating material composition containing a polyether-modified silicone oil (A), an antifouling agent (B) containing medetomidine (B1), and a coating film-forming resin (C). For example, JP 2018-080275A [example 23] describes a fishing net that has a coating film, and that is obtained by heating, mixing, and reacting 20 parts by mass of propylene glycol monomethyl ether, 82 parts by mass of xylene, 7 parts by mass of zinc dimethacrylate, 7 parts by mass of zinc diacrylate, 6 parts by mass of methyl methacrylate, 45 parts by mass of ethyl acrylate, 0.5 parts by mass of pure water, 16 parts by mass of propylene glycol monomethyl ether, 35 parts by mass of methacryloxypropyl polydimethylsiloxane (Silaplane FM-0711, number-average molecular weight: about 1,000), and 3 parts by mass of azobisisobutyronitrile to obtain a reaction mixture (varnish A3) containing a polysiloxane block- containing metal salt copolymer having an NV of 45.2%, mixing 30 mass% of varnish A3 is obtained, 1 mass % of an EO/PO type polyether-modified silicone oil (KF-945, HLB: 4.0), 1 mass% of an EO type polyether- modified silicone oil (KF-6016, HLB: 4.5), 6 mass% of polybutene (LV-50), 2 mass% of a polyethylene oxide wax (Disparlon 4200-20), 1 mass% of a fatty acid amide wax (Disparlon 6900-20X), 1 mass% of butyl acetate, 1 mass% of propylene glycol monomethyl ether, and 53.5 mass% of a xylene/ethylbenzene liquid mixture to obtain an antifouling coating material composition, and then, immersing, for about 1-3 minutes, a fishing net (knot-less net made of polyethylene) in the antifouling coating material composition thus obtained, and after removing the net, air-drying the net for 7 days in a room. Here, the polysiloxane block-containing metal salt copolymer described in the instant reference is considered to correspond to a type of silicone resin and the fishing net is the fibrous structure.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3778 812A1 issued to Takenouchi et al. in view of WO 2008/081789 A1 issued to Amidaiji et al.
Takenouchi et al., teach an antifouling film coating composition comprising a silicone resin [¶¶ 0057, 0069], a hydrophilic and a hydrophobic silicon oil in a mass ratio of 0.5 to 20, more preferably 0.5 to 15 [¶¶ 0017-0019, 0059-0070, claims 1 and 4-6], and a solvent in a preferred amount of 30-80 mass % and most preferably 40 ta 75 mass% [¶¶ 0052-0053]. Exemplary formulations with a crosslinking agent- KE118 [¶ 0101]) are provided in Table 1 on p. 11 [see Examples 4-9].
Takenouchi et al., teach at ¶ 0080-0081 that the antifouling layer composition maybe applied to a plethora of surfaces structures but do not expressively suggest that they are fibrous in nature.
This is remedied by the teachings of WO 2008/081789 A1 issued to Amidaiji et al. who disclose making antifouling compositions for fishing nets or aquaculture nets comprising silicone resin including a crosslinker, silicone oil and an organic solvent [see claims 1, 4 and 6].
Therefore, a person having ordinary skill in the art before the effective filing date of the invention would have found it obvious to applied an antifouling composition comprising silicone resin including a crosslinker, silicone oil and an organic solvent onto a fibrous structure. One would be motivated to do so to provide antifouling coating film having an excellent long-term antifouling property as taught by Amidaiji et al [see abstract].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP H01 190612 A - disclose antifouling compositions for fishing nets comprising a silicone or rubber resin, silicone oil and organic solvent [¶ 0001, claim 1 and Table 2].
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
asp
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