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 11-18 and 25-27 in the reply filed on April 30, 2026 is acknowledged.
Applicant’s election of Group I in the reply filed on April 30, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 19-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 30, 2026.
Information Disclosure Statement
The information disclosure statements filed 10/21/2024 and 1/15/2026 have been fully considered. Initialed copies of said IDSs are enclosed herein.
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 11-18 and 25-27 (all pending claims) is 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.
With regards to claim 11, said claim is held to e indefinite because it is unclear what is meant by
“ an organosilicon compound that not having nitrogen atoms bonded directly to carbonyl groups.” Said claim would read more clearly if the word “that” was deleted. Furthermore, it is unclear what is meant by “ based on the total amount of the compositions (M) is calculated as 100 wt%”. Said term would read more clearly if the term “based on ” was replaced with “wherein”. Furthermore, it is unclear what is meant by “the compositions (M)”; it is believed the claims should read “composition” as there is only one composition.
With regards to claim 13, the term “preferably” renders the claim indefinite because it is unclear if the claims percentage of component A and component E is required by the claim or not.
With regards to claim 14, said claim is held to be indefinite because it is unclear what is meant by “wherein a may be the same or different and is 0, 1 or 2”. Specifically, there is only one a in the formula, so it is unclear how it can be “The same or different.”
Claim Rejections - 35 USC § 102/103
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.
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) 11-18 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2018/024331 (wherein referred to as Wacker-herein, US 11,059,970 is utilized as an English translation of the WO reference)
Wacker discloses a crosslinkable composition (M) (col 2, lines 53+) comprising a component (A) that is a silane polymer (component A of Wacker); and a component (B) (herein understood to read on the claimed component E) that is a silicone resin;
With regards to the limitation requiring the dosage of hydroxy silicone oil to be less than 1 wt% based on the total amount of the compositions (M) is calculated as 100 wt%; Wacker is understood to read on said limit as Wacker is silent to the present of a hydroxy silicone oil in the composition.
With regards to the sum of the amount of component (A) silane-crosslinking polymer and
component (E) silicone resin is greater than 80wt% and the weight ratio of the component (E) to the component (A) being between 3.3-4.8,, Wacker teaches the coating composition preferably contains (A) 100 parts by weight of compounds of formula (I), (B) 150 to 2500 parts by weight of silicone resins consisting of units of formula (II), (C1) less than 50 parts by weight of compounds of formula (I′), (C2) less than 50 parts by weight of compounds of formula (I″), and a number of optional components (col 16, lines 7+). Wacker further teaches when the composition comprises compounds (C1) or C2), the amounts are preferably altogether not more than 110 parts by weight per 100 parts by weight of the composition (col 10, lines 24+). Said teachings are understood to be sufficiently specific to anticipate the claimed limitations. Alternatively, Wacker teaches “the surprising discovery that coatings based on the inventive compositions (M) based on short-chain silane-terminated polymers (A)…and high mass fractions of silicone resins (B) according to the invention exhibit a markedly better soiling propensity.” Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amounts of components (A) and (B) in order to optimize the soiling properties of the composition.
With regards to claim 12, Wacker teaches that component (B0 is included in amounts preferably between 300-1500pbw per 100 parts by weight of component A (col 7, lines 27+). Said range is understood to anticipate the claimed percentages. Alternatively, Wacker teaches “the surprising discovery that coatings based on the inventive compositions (M) based on short-chain silane-terminated polymers (A)…and high mass fractions of silicone resins (B) according to the invention exhibit a markedly better soiling propensity.” Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amounts of components (A) and (B) in order to optimize the soiling properties of the composition.
With regards to claim 13, Wacker teaches the coating composition preferably contains (A) 100 parts by weight of compounds of formula (I), (B) 150 to 2500 parts by weight of silicone resins consisting of units of formula (II), (C1) less than 50 parts by weight of compounds of formula (I′), (C2) less than 50 parts by weight of compounds of formula (I″), (D) 0.5 to 30 parts by weight of nitrogen-containing organosilicon compound, optionally (E) catalysts, optionally (F) adhesion promoters, optionally (G) water scavengers, optionally (H) fillers, optionally (I) additives and optionally (J) admixture agents (col 16, lines 7+). Wacker further teaches when the composition comprises compounds (C1) or C2), the amounts are preferably altogether not more than 10 parts by weight per 100 parts by weight of the composition (col 10, lines 24+). Said range is understood to anticipate the claimed percentages. Alternatively, Wacker teaches “the surprising discovery that coatings based on the inventive compositions (M) based on short-chain silane-terminated polymers (A)…and high mass fractions of silicone resins (B) according to the invention exhibit a markedly better soiling propensity.” Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amounts of components (A) and (B) in order to optimize the soiling properties of the composition.
With regards to claim 14, Wacker teaches the component (a) may be represented by the formula (I-1) (claims 6, lines 8+) wherein Y is a divalent polymer radical (col 2, lines 61+), wherein R may be the same or different and is a monovalent, optionally substituted hydrocarbyl radical (col 2, lines 61+), wherein R¹ may be the same or different and is a hydrogen atom or a monovalent (col 3, lines 1+),
wherein R² may be the same or different and is a hydrogen atom or a monovalent, optionally substituted hydrocarbyl radical (col 3, lines 5+), wherein X (as taught) is 1 or 2, equating to the claimed X is 0 or 1, wherein a may be the same or different and is 0, 1 or 2, wherein b1 is 1 or 3; (col 3, lines 1+). With regards to component (A) including less than 15 mol%, preferably less than 10 mol% of polymers of the formula (I-1) with x=1, Wacker teaches the formula may consists of compounds wherein x is 0. Thus, said reference is understood to anticipate the claimed formula.
With regards to claim 15, Wacker teaches component (E) may be represented by the formula (II) (col 3, lines 14+): wherein R³ can be the same or different, and represents a hydrogen atom, wherein R⁴ may be the same or different and represents a hydrogen atom or an optionally substituted monovalent hydrocarbon group, wherein C is 0, 1, 2 or 3, and wherein d is 0, 1, 2 or 3; wherein the sum of c+d is less than or equal to 3 (col 3, lines 14+). With regards to the limitation requiring that c is equal to 0 or 1 in at least 50 wt%, Wacker teaches such components are preferable (col 8, lines 30+)
With regards to claim 16, Wacker teaches a composition (M) wherein the composition contains (A) 100 parts by weight of compounds of formula (I), (B) 150 to 2500 parts by weight of silicone resins consisting of units of formula (II), (C1) less than 50 parts by weight of compounds of formula (I′), (C2) less than 50 parts by weight of compounds of formula (I″), (D) 0.5 to 30 parts by weight of nitrogen-containing organosilicon compound, optionally (E) catalysts, optionally (F) adhesion promoters, optionally (G) water scavengers, optionally (H) fillers, optionally (I) additives and optionally (J) admixture agents (col 16, lines 7+). Said teaching is understood to anticipate the claimed composition comprising s 10-25 parts of the component (A); 0.1-10 parts of the component (C); 65-89 parts of the component (E); and wherein the total amount of all compositions (M) is calculated as 100 parts. Alternatively, Wacker teaches “the surprising discovery that coatings based on the inventive compositions (M) based on short-chain silane-terminated polymers (A)…and high mass fractions of silicone resins (B) according to the invention exhibit a markedly better soiling propensity.” Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amounts of components (A) and (B) in order to optimize the soiling properties of the composition.
With regards to claim 17, Wacker teaches the composition (M) may be coated d onto at least a portion of a concrete surface (col 17, lines 62+)
With regards to claim 18, Wacker teaches the composition may be applied as a coating to various substrates such as wood concrete and floors (col 6, lines 61+). The examiner takes the position that any coating applied to a surface will function as a waterproofing coating since any coating will inherently inhibit water from contacting the substrate to which itis i applied.
Claim Rejections - 35 USC § 103
Claim(s) 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018/024331 (wherein referred to as Wacker-herein, US 11,059,970 is utilized as an English translation of the WO reference), as applied to claims above, and further in view of US 2019/0153166 (herein referred to as Scheim).
Wacker is relied upon as above, but does not teach that the composition may be applied to a brick substrate. However, Scheim teaches a similar crosslinkable composition as disclosed in Wacker (abstract). Scheim teaches such coatings are useful as anti-soiling compositions on various substrates including masonry, mortar, plaster, bricks and natural stone (0198). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the coating disclosed in Wacker to brick substrates. The motivation for doing so would have been that Scheim teaches such anti-soiling coatings are useful for application to brick substrates.
With regards to claim 27, Wacker teaches the composition may be applied as a coating to various substrates such as wood concrete and floors (col 6, lines 61+). The examiner takes the position that any coating applied to a surface will function as a waterproofing coating since any coating will inherently inhibit water from contacting the substrate to which itis i applied.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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 at (571) 272-1123. 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.
KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/Primary Examiner, Art Unit 1787
Prosecution Insights