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 1-17 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-11, in the reply filed on 05/28/26 is acknowledged. The traversal is on the ground(s) that the restriction did not consider the claims in light of the specification which is not persuasive because the claims were considered in light of the specification (though the claims define the patentable scope).
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 12-17 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/28/26.
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanino (U.S. 2015/0299515) in view of Hasegawa (U.S. 2006/0135709) in view of Noh (KR 10-0562748, see machine translation) in view of Mori (JP 2011-084677, see machine translation) in view of Simendinger (U.S. 2002/0010228).
Regarding claims 1-11, Tanino discloses an antifouling coating comprising a polydiorganosiloxane as in claim 6 at an amount overlapping claim 7 (see abstract, [0039], [0062]), silica which may be kneaded into the composition (as in claims 8-9, though this is an immaterial product by process limitation), silane coupling agent as in claim 10, and silicone oil as in claim 11 ([0064], [0096], [0113]). Tanino also calls for additives which are described as anti-sagging/anti-settling/thickening agents and includes ether modified polysiloxanes and fatty acid/alkylsulfonate salts ([0104]). The chemical structure of these ingredients indicates that they are implicitly surfactants (i.e., having hydrophilic and hydrophobic moieties in the same molecule). Tanino does not disclose the claimed glycerin based compound.
However, Hasegawa is also directed to siloxane based antifouling ([0342]) and weather resistant coatings (see abstract, [0082]) and discloses that polyglycerol stearate compounds (with less stearate ester groups than glycerol repeating units, thus having hydroxyl groups in claim 4, [0171]-[0177]) may be included at amounts that overlaps claim 5 to provide good mechanical strength (stress and elongation), and weather and heat resistance ([0177], [0006]). Thus, it would have been obvious to have used the polyglycerol stearate compounds of Hasegawa in Tanino to provide good mechanical strength, and weather and heat resistance.
Hasegawa also discloses that such additives have other benefits (e.g., surfactant, dispersing agent, antifoaming agent, antifogging agent, solubilizer, thickener, lubricant, [0176]) such that these additional benefits provide further (independent) motivation that renders obvious the inclusion of such compounds in Tanino (with thickening being especially compelling since Tanino seeks thickeners, see above), and with the amount of such compounds being obvious to adjust based on this independent motivation provided by Hasegawa (e.g., to optimize the degree of thickening, or the degree of the other benefits described above that are imparted to the coating).
In addition to Hasegawa generally describing such compounds as “surfactants,” both Noh and Mori are also directed to silicone based antifouling/weather resistant compositions and disclose that poly glycerin fatty acid ether compounds (generic to the polyglycerol stearate compounds of Hasegawa) provide coating improvement properties by lowering the surface tension of the composition and improving wettability (Noh- see page 5-6, and 9, Mori- see [0001], [0030], [0130]). It is further noted that the surfactants described by Noh and Mori overlap the chemical compound listed in Tanino as anti-saggin/anti-settling/thickening agents (thus confirming that those compounds in Tanino are also surfactants, which would be independently obvious based on their hydrophilic/hydrophobic nature as discussed above). Thus, Noh and Mori (separately or alone) provide further benefits related to the use of the poly glycerin fatty acid ether compounds of Hasegawa (already recognized as surfactants in Hasegawa) in antifouling compositions like Tanino to lower surface tension and improve wettability.
Further to the above, Simendinger provides an even more compelling reason to use surfactants in silicone based antifouling compositions (see abstract) by explaining that surfactants can also prevent slime growth (as sought by Tanino, see abstract) ([0022]), which makes use of surfactants, like those in Hasegawa, all the more obvious in Tanino (and with another basis for optimizing the amount, i.e., for slime preventing optimization).
In summation, the polyglycerol stearate compounds of Hasegawa are obvious to use in Tanino for the following independent motivations:
to provide good mechanical strength, and weather and heat resistance with an overlapping amount, as taught by Hasegawa,
to provide thickening benefits (as taught by Hasegawa and sought by Tanino) with the amount being obvious based on optimizing thickness,
to provide surfactant properties to improve coating properties (wettability and surface tension, as taught by Noh and Mori) with the amount being obvious based on optimizing wettability and surface tension,
to provide surfactant properties to prevent slime (as taught by Simendinger and sought by Tanino) with the amount being obvious based on optimizing anti-slime properties, and/or
to provide other benefits (e.g., dispersing agent, antifoaming agent, antifogging agent, solubilizer, lubricant) with the amount being obvious based on optimizing such benefits, as taught by Hasegawa
Each of the above motivations provides an independent basis to render obvious the use of the polyglycerol stearate compounds of Hasegawa in Tanino in amounts that render obvious the claimed range.
The above polyglycerol stearate compounds from Hasegawa meet the limitations as claimed except branched/isostearate groups are not disclosed as in claims 2 and 3. However, the claimed branched isostearate groups are prima facie obvious homologues (isomers) of the stearate compounds disclosed by the prior art. See MPEP 2144.09 II. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
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).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights