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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 13 contains the limitation “the cross-linked silicone rubber particles have an average particle diameter from at least 0.5 mm to at most 5 mm” but the specification only refers to the diameter as being at least 0.1 µm and at most µm.
Claim Interpretation
Claim 13 contains the limitation “the cross-linked silicone rubber particles have an average particle diameter from at least 0.5 mm to at most 5 mm”. However, the specification describes the same average particle diameter for silicone rubber particles as being in the micrometer (µm) range (see Applicant’s specification page 9, lines 3-6). It is not clear if Applicant made a typographical error in the claims or the specification for the units of the average particle diameter of the cross-linked silicone rubber particles. For purposes of examination, the limitations directed to the average particle size will be examined as claimed. (i.e. using “mm” as the unit).
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 1-14 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.
Claims 1 and 14 contains the limitation “in a concentration sufficient to form a stable coating”. It is not clear what could constitute a “stable” coating from one that would be considered stable. How much time would a coating need to maintain substantially the same properties to be considered “stable”?
Claims 2-13 are rejected as being dependent on claim 1.
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.
Claims 1, 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (WO 2019/061011) (cited in the IDS filed on 10/17/2024).
Regarding claims 1 and 14, Liu et al. discloses an aqueous polymer composition comprising an acetoacetoxy functional polymer, a metal pyrithione compound and TEMPO and/or its derivative. (Abstract). The acetoacetoxy functional polymer includes (meth)acrylate monomers (page 4, lines 1-5 and 26-31, page 5, lines 1-15) and would therefore meet the limitation of “an acrylic polymer binder material” as claimed and is contained in an amount of 3% or more by weight of the composition, therefore meeting the limitation of “in a concentration suitable to form a stable coating”. The metal pyrthione compounds are known antifungal materials which would be considered non-toxic. (page 1, lines 6-11). Other non-toxic antifouling additives would include materials like titanium dioxide and zinc oxide pigments (page 7, lines 20-26) which have known photocatalytic properties. Furthermore, extenders such a diatomaceous earth, clays and kaolins (page 7, lines 1-9) would also meet the limitation of “non-toxic antifouling additives
With respect to the limitation “from 0-80 percent weight of other coating components”, given that the range includes a value of “0 percent weight”, the “other coating components” are considered optional. However, Liu et al. does disclose additional components in the form of TEMPO and/or derivatives, defoamers, thickeners, wetting agents, coalescents, additional biocide materials and other additives in amounts which lie within the presently claimed range. (see pages 7-10).
Liu et al. teaches a method of applying the aqueous polymer composition to the surface of a roof and drying the coating composition. (page 10, lines 22-28 and page 11, line 30 – page 12, line 10)
Regarding claim 15, Liu et al. teaches a structure comprising a roof with the aqueous polymer composition on the surface thereof. (Abstract and page 10, lines 22-28 and page 11, line 30 – page 12, line 10)
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.
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.
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO 2019/061011) (cited in the IDS filed on 10/17/2024).
Liu et al. disclose that the glass transition temperatures of the acetoacetoxy functional polymer is in the range of -20 to 60oC, overlapping with the presently claimed range. (page 5, lines 21-23). 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).
Claims 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO 2019/061011) (cited in the IDS filed on 10/17/2024) in view of Shimizu et al. (CA 1 311 328).
Liu et al. is relied upon as described in the rejection of claims 1 and 2, above.
Regarding claim 4, Liu et al. does not teach a non-toxic antifouling additive comprising a silicon-contain material.
Shimizu et al. teaches finely divided cured silicone rubber particles which may be mixed with organic resins and synthetic rubbers to impart water resistance, shock tolerance, strength and internal-stress-relaxation agents. (Abstract and page 3). Since the particles impart water resistance and shock tolerance, the cured silicone rubber particles would be considered to meet the limitations of a “non-toxic antifouling additive” as claimed.
It would have been obvious to one of ordinary skill in the art to include cured silicone rubber particles as taught in Shimizu et al. in the coating composition of Liu et al.
One of ordinary skill in the art would have found it obvious to include cured silicon rubber particles in the coating composition of Liu et al. in order to impart water resistance, shock tolerance, strength and internal-stress-relaxation to the coating composition of Liu et al.
Regarding claims 5-6, the cured silicone rubber particles disclosed in Shimizu et al. includes polydimethysiloxane. (page 12, last paragraph).
Regarding claims 7-8, while Shimizu et al. does not explicitly teach the specific content of the finely divided cured silicone particles in the coating compositions, given that Liu et al. teaches the inclusion of a variety of additive materials which lie in the presently claimed ranges (see pages 7-10), it would have been obvious to one of ordinary skill in the art to optimize the amount of cured silicone rubber particles in the specific composition of Liu et al. to improve the material properties thereof without significantly impacting the other desired physical properties of the coating. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Regarding claim 9, Shimizu et al. teaches that the molecular weight of the polysiloxane should be at least 3,000 to improve the physical characteristics of the cured silicone rubber particles. (page 9, 1st full paragraph).
Regarding claim 10, the cured silicone rubber particles are crosslinked. (page 9, last paragraph).
Regarding claims 11-12, while Shimizu et al. does not explicitly teach the specific content of the finely divided cured silicone particles in the coating compositions, given that Liu et al. teaches the inclusion of a variety of additive materials which lie in the presently claimed ranges (see pages 7-10), it would have been obvious to one of ordinary skill in the art to optimize the amount of cured silicone rubber particles in the specific composition of Liu et al. to improve the material properties thereof without significantly impacting the other desired physical properties of the coating. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Regarding claim 13, the cured silicone rubber particles of Shimizu et al. have an average particle diameter of 1 mm or less, overlapping with the presently claimed range. (Abstract). 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 07/18/2026
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