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 with traverse of claims 1-3, 6-11, 14-15 in the reply filed on 5/27/2026 is acknowledged. The traversal is on the ground(s) that simultaneous examination of all curable resins and surface modifying agents does not impose a search burden. This is not found persuasive because the grounds for restriction are based on a lack of unity of invention, not a burden of search.
The requirement is still deemed proper and is therefore made FINAL.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it includes the implied phrase “The present disclosure provides” in line 1. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
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 1-3, 6-8, and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al US20020155286A1.
Regarding claims 1-3, 6-8, and 14-15, Kobayashi teaches an adhesive composition comprising components (A) epoxy resin, (B) phonolic resin, (C) epoxidized styrene-butadiene-styrene block copolymer and (D) diaminosiloxane compound, abstract.
The epoxy resins include a tetraglycidyl diphenyl methane type epoxy resin Epikote 604 (A-1) and a bifunctional epoxy YX4000H (A-3), ¶[0096] table 2, these are used in the examples shown in table 1 ¶[0095], which reads on the curable resin of claims 1-3.
Kobayashi teaches the diaminosiloxane has the formula (1) and is an amino terminated polydimethylsiloxane where R1 is alkylene and n is 1-10, ¶¶[0066-0067]. This diaminopolydimethylsiloxane reads on the reactive siloxane of claim 1 and anticipates the structures of claims 6 and 8 formula (3) where Y1 and Y3 are the amino containing group and where Y2 is X which is a methyl group and reads on claim 7. The diaminosiloxanes are exemplified as TSL9306 and TSL9886, see ¶[0069] and the examples table 2 ¶[0096].
PNG
media_image1.png
200
400
media_image1.png
Greyscale
The diaminosiloxanes are used in the amount of 1.7 wt.% and 4.6 wt.%, table 1 various examples, components D-1 or D-2 ¶[0095], which anticipates the range of claim 14.
Additionally, Kobayashi includes a curing accelerator, in ¶[0072] and table 1 examples ¶[0095], which reads on the curing agent. Epoxidized styrene-butadiene-styrene copolymer ¶[0053], and inorganic filler are also included, ¶[0074] and table 1 examples ¶[0095], which read on the toughening agent and rheology modifier of claim 15.
Claims 1-3, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chavan et al US20140303284A1.
Regarding claims 1-3, 15, Chavan teaches a resin composition comprising a blend of: (1) an epoxy polysiloxane resin; (2) an epoxyfluorosilicone resin; and (3) a fluorinated (or non-fluorinated) silane-modified polyacrylic resin and a curing agent, abstract. The epoxy polysiloxane resin has two or more epoxy groups ¶[0010], and is exemplified as Silikopon EW or EF from Degussa, which reads on the curable epoxy resin of claims 1-3. The epoxy-fluorosilicone ¶[0012] reads on the reactive siloxane of claim 1, and the amine curing agents, ¶¶[0034-0036], read on the curing agent of claim 1. It is further taught that additional ingredients such as thixotropic agents, fillers such as fumed silica, and solvents are added, ¶¶[0038, 0050] see paint example table of ingredients, these read on the claimed rheology modifier and toughening agent.
Claims 1 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardman et al US20040209784A1.
Regarding claims 1 and 15, Hardman teaches a composition comprising an acrylate functional polysiloxane (reactive polysiloxane), a photinitiator (curing agent), and an aminofunctional silicone (curable resin), abstract. The composition cures by UV, abstract and see table 6 examples. Examples 6-8 have an acrylated silicone mixed with a methacryloxypropyltrimethoxysilane crosslinking agent, amino functional silicone, and photinitiators, all dispersed in non-reactive PDMS then UV cured to form a catheter coating ¶[0073]. The amino functional silicone reads on the curable resin because it is a polymer with curable amino groups.
The non-reactive PDMS reads on the rheology modifier of claim 15 because Hardman teaches the low viscosity PDMS acts like a solvent, delivering the film forming coating to the substrate, and the high viscosity polymer provides lubricity ¶[0012].
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chavan et al US20140303284A1.
Regarding claim 14, Chavan teaches the invention according to claim 1 as explained above. Chavan does not exemplify the epoxyfluorosilicone in an amount from 0.0001-8 wt.%, but teaches the amount is from 0-50wt.% in part A ¶[0050] table, or 5-30 wt.% see claim 4.
These ranges overlap with the claimed weight percent ranges; therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Chavan because selection of the overlapping portion of ranges has been held to be prima facie obvious. 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).
Claims 6, 9, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chavan et al US20140303284A1 in view of Eckberg et al US5178959.
Regarding claims 6, 9 and 11, Chavan teaches the invention according to claim 1 as explained above. Chavan teaches a general structure for the epoxyfluorosilicone, ¶[0013], and teaches preparation of an epoxyfluorosilicone, ¶[0041] but Chavan does not give the structure of the finished fluorosilicone. Chavan teaches that epoxyfluorosilicones can also be prepared by methods found in Eckberg, which are suitable for the resin composition, ¶[0012].
Eckberg discloses novel epoxy terminated fluoro functional polysiloxanes, abstract and Col. 2 structures. The structures of the epoxyfluorosilicones are labeled A-D in Col. 2, where a is 1-100, R is an alkyl group of 1-10 carbons, and R1 is a perfluoroalkyl group, lines 44-50. Structure A shown below has epoxy terminal groups and a pendant perfluoroalkyl group, which reads on the formula (2) of claim 6, and the Y groups of claims 9 and 11.
PNG
media_image2.png
200
400
media_image2.png
Greyscale
It is prima facie obvious to substitute one material for another to obtain predictable results when the materials fulfill the same use and function. “[I]t is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances.” In re Ruff 118 USPQ 343; In re Jezel 158 USPQ 99; “the express suggestion to substitute one equivalent for another need not be present to render the substitution obvious.” In re Font, 213 USPQ 532.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Chavan substituting the epoxyfluorosilicone of Chavan for the epoxy fluorosilicone of Eckberg that matches structure (A) with the motivation of producing the predictable result of another permutation of a curable composition for coatings with improved weatherability as taught by Chavan.
Claims 6-7, 10, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hardman et al US20040209784A1.
Regarding claims 6-7, 10, and 14, Hardman teaches the invention according to claim 1 as explained above. Hardman exemplifies the acrylate functional polysiloxane of Tego Rad 2700 (table 6 ¶[0072]), but does not teach the formula of the Rad 2700. In the broader disclosure, Hardman teaches the following acrylate functional polysiloxanes are preferred, ¶[0034]. These structures read on formula (2) of claim 6 where Y1 and Y3 are X, which is methyl and reads on claim 7; and Y2 is the acrylate containing group which reads on claim 10.
PNG
media_image3.png
200
400
media_image3.png
Greyscale
Hardman teaches the x and y subscripts are from 1-1500, ¶[0032]; the x is within the claimed range for m and the y encompasses the claimed range for n.
Furthermore, Hardman exemplifies it in amounts greater than the claimed amount in examples 6-8, but in the broader disclosure teaches the reactive silicone is typically present from 5-40 wt.% based on the total weight of the composition, which overlaps with the claimed range of claim 14.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Hardman because selection of the overlapping portion of ranges has been held to be prima facie obvious. 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
Prosecution Insights