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 .
Claims 1-30 are pending in the Claim set filed 8/14/2026.
Applicant’s election with traverse the species in the reply filed on 1/14/2026 is acknowledged. The traversal is on the ground(s) that the search and examination of the entire application and all species could be made without serious burden. Applicants’ arguments are moot because the restriction requirement is herein withdrawn.
Herein, claims 1-30 are for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/14/2025 has been considered by the examiner and an initialed copy of the IDS is included with the mailing of this office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
Claims 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-30 of U.S. Patent No. 12599132 (herein ‘132). Issued Patent has not yet been published: See ‘Issue Notification’ filed 4/01/2026. Herein, U.S. Patent 12599132 claims are based on Allowed Claims 1-7 and 9-30 in the Application 19/419,851 of Corrected Notice of Allowability filed 2/27/2026.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to common subject matter.
Instant Claims are directed to 1. An anti-fungal and/or algae resistant clear coating comprising:(a) a clear film;(b) a biocide dispersed within the clear film in an effective amount to prevent and/or reduce fungal and/or algal growth on and within the anti-fungal and/or algae resistant coating; and (c) a stabilizing agent dispersed within the clear film. 2. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the coating includes less than 0.01 wt% heavy metal containing components and less than 0.01 wt% fluoro containing components. 3. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the clear film is an organic, inorganic hybrid resin. 4. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the clear film comprises a siloxane component and organic component. 5. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the clear film comprises a polysiloxane-acrylic resin and polysiloxane-urethane resin. 6. The anti-fungal and/or algae resistant clear coating according to claim 5, wherein the polysiloxane-acrylic resin comprises a shell-core configuration in which the polysiloxane is encapsulated by the acrylic. 7. The anti-fungal and/or algae resistant clear coating according to claim 3, wherein the clear film is an organic, inorganic hybrid film at a concentration of 40 wt% to 95 wt% of the anti-fungal and/or algae resistant clear coating. 8. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the biocide comprises encapsulated and non-encapsulated biocides. 9. The anti-fungal and/or algae resistant clear coating according to claim 8, wherein the encapsulated biocide is configured to release the biocide from the anti-fungal and/or algae resistant coating for 6 months to 5 years. 10. The anti-fungal and/or algae resistant clear coating according to claim 8, wherein the encapsulated biocide comprises 0.2 wt% to 7.5 wt% of the anti-fungal and/or algae resistant clear coating. 11. The anti-fungal and/or algae resistant clear coating according to claim 10, wherein the non-encapsulated biocide comprises 0.2 wt% to 6 wt% of the anti-fungal and/or algae resistant clear coating. 12. The anti-fungal and/or algae resistant clear coating according to claim 8, wherein the encapsulated and non-encapsulated biocide comprise at least a carbamate having biocidal activity. 13. The anti-fungal and/or algae resistant clear coating according to claim 12, wherein the encapsulated and non-encapsulated biocide comprise at least a butylcarbamate having biocidal activity. 14. The anti-fungal and/or algae resistant clear coating according to claim 12, wherein the non-encapsulated biocide further comprises an aromatic biocide. 15. The anti-fungal and/or algae resistant clear coating according to claim 14, wherein the aromatic biocide comprises an aromatic urea compound and an aromatic carbamate. 16. The anti-fungal and/or algae resistant clear coating according to claim 14, wherein the aromatic biocide comprises 3-(3,4-dichlorophenyl)-1,1-dimethylurea, methyl 1H- benzimidazol-2-ylcarbamate, or any combination thereof. 17. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the stabilizing agent comprises 0.3 wt% to 22 wt% of the anti-fungal and/or algae resistant clear coating. 18. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the stabilizing agent comprises an ultraviolet (UV) stabilizing agent. 19. The anti-fungal and/or algae resistant clear coating according to claim 18, wherein the UV stabilizing agent comprises a first UV stabilizing agent, a second UV stabilizing agent, or a combination thereof. 20. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the first UV stabilizing agent is a heterocycle. 21. The anti-fungal and/or algae resistant clear coating according to claim 20, wherein the first UV stabilizing agent is a triazine compound. 22. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the first UV stabilizing agent comprises 2-[4-[(2-Hydroxy-3-dodecyloxypropyl)oxy]-2- Page 4 of 6 hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, 2-[4-[(2-Hydroxy-3- tridecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, or any combination thereof. 23. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the second UV stabilizing agent comprises an ultraviolet (UV) stabilizing agent that includes a hindered amine and/or heterocyclic. 24. The anti-fungal and/or algae resistant clear coating according to claim 23, wherein the second UV stabilizing agent comprises hindered amine light stabilizers (HALS). 25. The anti-fungal and/or algae resistant clear coating according to claim 23, wherein the second UV stabilizing agent comprises a derivative of tetramethylpiperidine. 26. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the first and second UV stabilizing agents are present at a ratio ranging from 1:1 to 5:1 relative to one another. 27. The anti-fungal and/or algae resistant clear coating according to claim 26, wherein the anti-fungal and/or algae resistant coating includes the biocide and the clear film at a ratio ranging from 1:3 to 1:60 relative to one another. 28. The anti-fungal and/or algae resistant clear coating according to claim 27, wherein the anti-fungal and/or algae resistant clear coating includes the non-encapsulated biocide and the encapsulated biocide at a ratio ranging from 3:1 to 1:7 relative to one another. 29. The anti-fungal and/or algae resistant clear coating according to claim 28, the anti-fungal and/or algae resistant clear coating includes the polysiloxane-acrylic resin and the polysiloxane-urethane resin at a ratio ranging from 9:1 to 1.1:1 relative to one another. 30. A substrate having the anti-fungal and/or algae resistant clear coating according to claim 1 applied thereon; wherein the substrate is porous or non-porous material and/or the substrate is a non- functionalized substrate, an electrostatically neutral substrate, or a combination thereof; wherein the anti-fungal and/or algae resistant clear coating retains 100% gloss retention after 500 hours of UV exposure, 95% gloss retention after 1000 hours of UV exposure, 93% gloss retention after 1500 hours of UV exposure, and 93% gloss retention after 2000 hours of UV exposure.
‘132 claims are directed to 1. A liquid anti-fungal and/or algae resistant composition that forms a clear coating on a substrate post-application comprising: (a) water at a concentration of up to 70 wt% of the composition; (b) a biocide dispersed within the water present in an effective amount to prevent and/or reduce fungal and/or algal growth on the substrate post-application; (c) a stabilizing agent dispersed within the water; and (d) a film forming composition dispersed within the water present in an effective amount to form a clear film on the substrate post-application; wherein the liquid anti-fungal and/or algae resistant composition includes the biocide and the stabilizing agent at a ratio ranging from 8:1 to 1:4 relative to one another, wherein the biocide comprises encapsulated and non-encapsulated biocides. 2. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the composition includes less than 0.01 wt% heavy metal containing components and less than 0.01 wt% fluoro containing components. 3. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the film forming composition is an organic, inorganic hybrid resin. 4. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the film forming composition comprises a siloxane component and organic component. 5. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the film forming composition comprises a polysiloxane-acrylic resin and polysiloxane-urethane resin.6. The liquid anti-fungal and/or algae resistant composition of claim 5, wherein the polysiloxane-acrylic resin comprises a shell-core configuration in which the polysiloxane is encapsulated by the acrylic. 7. The liquid anti-fungal and/or algae resistant composition of claim 3, wherein an organic, inorganic hybrid film forming composition comprises 10 wt% to 45 wt%. 9. The liquid anti-fungal and/or algae resistant composition of claim 1 wherein the encapsulated biocide is configured to release the biocide from the coating on a substrate post- application for 6 months to 5 years. 10. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the encapsulated biocide comprises 0.1 wt% to 2 wt% of the composition. 11. The liquid anti-fungal and/or algae resistant composition of claim 10, wherein the non-encapsulated biocide comprises 0.1 wt% to 1 wt% of the composition. 12. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the encapsulated and non-encapsulated biocide comprise at least a carbamate having biocidal activity. 13. The liquid anti-fungal and/or algae resistant composition of claim 12, wherein the encapsulated and non-encapsulated biocide comprise at least a butylcarbamate having biocidal activity. 14. The liquid anti-fungal and/or algae resistant composition of claim 12, wherein the non-encapsulated biocide further comprises an aromatic biocide. 15. The liquid anti-fungal and/or algae resistant composition of claim 14, wherein the aromatic biocide comprises an aromatic urea compound and an aromatic carbamate. 16. The liquid anti-fungal and/or algae resistant composition of claim 14, wherein the aromatic biocide comprises 3-(3,4-dichlorophenyl)-1,1-dimethylurea, methyl 1H-benzimidazol- 2-ylcarbamate, or any combination thereof.17. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the stabilizing agent comprises 0.5 wt% to 6 wt% of the composition.18. The liquid anti-fungal and/or algae resistant composition of the liquid anti-fungal and/or algae resistant composition of wherein the stabilizing agent comprises an ultraviolet (UV) stabilizing agent. 19. The liquid anti-fungal and/or algae resistant composition of claim 18, wherein the UV stabilizing agent comprises a first UV stabilizing agent, a second UV stabilizing agent, or a combination thereof. 20. The liquid anti-fungal and/or algae resistant composition of claim 19, wherein the first UV stabilizing agent is a heterocycle. 21. The liquid anti-fungal and/or algae resistant composition of claim 20, wherein the first UV stabilizing agent is a triazine compound. 22. The liquid anti-fungal and/or algae resistant composition of The liquid anti-fungal and/or algae resistant composition of wherein the first UV stabilizing agent comprises 2-[4-[(2-Hydroxy-3-dodecyloxypropyl)oxy]-2- hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, 2-[4-[(2-Hydroxy-3- tridecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, or any combination thereof. 23. The liquid anti-fungal and/or algae resistant composition of claim 19, wherein the second UV stabilizing agent comprises an ultraviolet (UV) stabilizing agent that includes a hindered amine and/or heterocyclic. 24. The liquid anti-fungal and/or algae resistant composition of claim 23, wherein the second UV stabilizing agent comprises hindered amine light stabilizers (HAL S). 25. The liquid anti-fungal and/or algae resistant composition of claim 23, wherein the second UV stabilizing agent comprises a derivative of tetramethylpiperidine. 26. The liquid anti-fungal and/or algae resistant composition of claim 19, wherein the first and second UV stabilizing agents are present at a ratio ranging from 1:1 to 5:1 relative to one another. 27. The liquid anti-fungal and/or algae resistant composition of claim 26, wherein the liquid anti-fungal and/or algae resistant composition includes the biocide and film forming composition at a ratio ranging from 1:3 to 1:60 relative to one another. 28. The liquid anti-fungal and/or algae resistant composition of claim 27, wherein the liquid anti-fungal and/or algae resistant composition includes the unencapsulated biocide and the encapsulated biocide at a ratio ranging from 3:1 to 1:7 relative to one another. 29. The liquid anti-fungal and/or algae resistant composition of claim 28, wherein the liquid anti-fungal and/or algae resistant composition includes the polysiloxane- acrylic resin and polysiloxane-urethane resin at a ratio ranging from 9:1 to 1.1:1 relative to one another. 30. A method of coating a substrate comprising:(a) applying the composition of claim 1 to a substrate; and (b) after step (a), drying and/or curing the composition to the substrate thereby forming the coated substrate, wherein the substrate is porous or non-porous material and/or the substrate is a non-functionalized substrate, an electrostatically neutral substrate, or a combination thereof
‘132 claims differ from the Instant claims in that the ‘132 claims recite a liquid, anti-fungal and/or algae resistant composition that forms a clear coating on a substrate post-application comprising water a concentration of up to 70 wt % of the composition. However, Instant claims recite the transitional phrase ‘comprising’ that is open-ended and does not exclude additional, unrecited elements or method steps. See, e.g. Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) and do not exclude a clear coating that comprises water in a concentration of up to 70 wt % of the composition. Both ‘851 claims and Instant Claims recite that the clear film comprise a biocide dispersed within the clear film and a stabilizing agent dispersed within the clear film. Further, ‘132 claims and instant Claims recite that the clear film comprises a polysiloxane-acrylic resin and polysiloxane-urethane resin, wherein the polysiloxane-acrylic resin comprises a shell-core configuration in which the polysiloxane is encapsulated by the acrylic. Furthermore ‘132 claims recite that the clear coating comprises 10 wt % to 45 wt % of the and Instant Claims recite that the clear coating comprises a concentration of 40 wt% to 95 wt% the polysiloxane-acrylic resin and polysiloxane-urethane resin, of which overlap in concentration of the film forming agent. 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. Additional, both ‘Instant Claims and ‘‘851 Patent claims recite that the encapsulated and non-encapsulated biocide comprise at least a carbamate having biocidal activity, the encapsulated and non-encapsulated biocide comprise at least a butylcarbamate having biocidal activity, wherein the non-encapsulated biocide further comprises an aromatic biocide, wherein the aromatic biocide comprises an aromatic urea compound and an aromatic carbamate, and wherein the aromatic biocide comprises 3-(3,4-dichloro phenyl)-1,1-dimethylurea, methyl 1H-benzimidazol-2-ylcarbamate, or any combination thereof. Further, Instant claims and ‘‘132 claims recite an ultraviolet (UV) stabilizing agent, wherein the UV stabilizing agent comprises a first UV stabilizing agent, a second UV stabilizing agent, or a combination thereof, wherein the first UV stabilizing agent is a heterocycle, wherein the first UV stabilizing agent is a triazine compound, wherein the first UV stabilizing agent comprises 2-[4-[(2-Hydroxy-3-dodecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, 2-[4-[(2-Hydroxy-3-tridecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, or any combination thereof, wherein the second UV stabilizing agent comprises an ultraviolet (UV) stabilizing agent that includes a hindered amine and/or heterocyclic, wherein the second UV stabilizing agent comprises a derivative of tetramethylpiperidine, wherein the first and second UV stabilizing agents are present at a ratio ranging from 1:1 to 5:1 relative to one another, i.e., the claimed ratios for Instant claims and the ‘851 claims are the same (identical) relative ratios. Additionally, it would have been prima facie obvious to provide a substrate having the anti-fungal and/or algae resistant clear coating according to instant claim 1 applied thereon; wherein the substrate is porous or non-porous material and/or the substrate is a non- functionalized substrate, an electrostatically neutral substrate, or a combination thereof; wherein the anti-fungal and/or algae resistant clear coating retains 100% gloss retention after 500 hours of UV exposure, 95% gloss retention after 1000 hours of UV exposure, 93% gloss retention after 1500 hours of UV exposure, and 93% gloss retention after 2000 hours of UV exposure as recited in in view of the ‘132 claims that recite a substrate that is porous or non-porous material and/or the substrate is a non-functionalized substrate, an electrostatically neutral substrate, or a combination thereof wherein the clear coating film composition of claim 1 is applied to the substrate. Furthermore, it would necessarily follow that the clear coating as claimed in the ‘132 claims would provide anti-fungal and/or algae resistant clear coating retains 100% gloss retention after 500 hours of UV exposure, 95% gloss retention after 1000 hours of UV exposure, 93% gloss retention after 1500 hours of UV exposure, and 93% gloss retention after 2000 hours of UV exposure.
Claims 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,520,841 (herein ‘841 Patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to common subject matter.
Instant Claims are directed to 1. An anti-fungal and/or algae resistant clear coating comprising:(a) a clear film;(b) a biocide dispersed within the clear film in an effective amount to prevent and/or reduce fungal and/or algal growth on and within the anti-fungal and/or algae resistant coating; and (c) a stabilizing agent dispersed within the clear film. 2. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the coating includes less than 0.01 wt% heavy metal containing components and less than 0.01 wt% fluoro containing components. 3. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the clear film is an organic, inorganic hybrid resin. 4. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the clear film comprises a siloxane component and organic component. 5. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the clear film comprises a polysiloxane-acrylic resin and polysiloxane-urethane resin. 6. The anti-fungal and/or algae resistant clear coating according to claim 5, wherein the polysiloxane-acrylic resin comprises a shell-core configuration in which the polysiloxane is encapsulated by the acrylic. 7. The anti-fungal and/or algae resistant clear coating according to claim 3, wherein the clear film is an organic, inorganic hybrid film at a concentration of 40 wt% to 95 wt% of the anti-fungal and/or algae resistant clear coating. 8. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the biocide comprises encapsulated and non-encapsulated biocides. 9. The anti-fungal and/or algae resistant clear coating according to claim 8, wherein the encapsulated biocide is configured to release the biocide from the anti-fungal and/or algae resistant coating for 6 months to 5 years. 10. The anti-fungal and/or algae resistant clear coating according to claim 8, wherein the encapsulated biocide comprises 0.2 wt% to 7.5 wt% of the anti-fungal and/or algae resistant clear coating. 11. The anti-fungal and/or algae resistant clear coating according to claim 10, wherein the non-encapsulated biocide comprises 0.2 wt% to 6 wt% of the anti-fungal and/or algae resistant clear coating. 12. The anti-fungal and/or algae resistant clear coating according to claim 8, wherein the encapsulated and non-encapsulated biocide comprise at least a carbamate having biocidal activity. 13. The anti-fungal and/or algae resistant clear coating according to claim 12, wherein the encapsulated and non-encapsulated biocide comprise at least a butylcarbamate having biocidal activity. 14. The anti-fungal and/or algae resistant clear coating according to claim 12, wherein the non-encapsulated biocide further comprises an aromatic biocide. 15. The anti-fungal and/or algae resistant clear coating according to claim 14, wherein the aromatic biocide comprises an aromatic urea compound and an aromatic carbamate. 16. The anti-fungal and/or algae resistant clear coating according to claim 14, wherein the aromatic biocide comprises 3-(3,4-dichlorophenyl)-1,1-dimethylurea, methyl 1H- benzimidazol-2-ylcarbamate, or any combination thereof. 17. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the stabilizing agent comprises 0.3 wt% to 22 wt% of the anti-fungal and/or algae resistant clear coating. 18. The anti-fungal and/or algae resistant clear coating according to claim 1, wherein the stabilizing agent comprises an ultraviolet (UV) stabilizing agent. 19. The anti-fungal and/or algae resistant clear coating according to claim 18, wherein the UV stabilizing agent comprises a first UV stabilizing agent, a second UV stabilizing agent, or a combination thereof. 20. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the first UV stabilizing agent is a heterocycle. 21. The anti-fungal and/or algae resistant clear coating according to claim 20, wherein the first UV stabilizing agent is a triazine compound. 22. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the first UV stabilizing agent comprises 2-[4-[(2-Hydroxy-3-dodecyloxypropyl)oxy]-2- Page 4 of 6 hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, 2-[4-[(2-Hydroxy-3- tridecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, or any combination thereof. 23. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the second UV stabilizing agent comprises an ultraviolet (UV) stabilizing agent that includes a hindered amine and/or heterocyclic. 24. The anti-fungal and/or algae resistant clear coating according to claim 23, wherein the second UV stabilizing agent comprises hindered amine light stabilizers (HALS). 25. The anti-fungal and/or algae resistant clear coating according to claim 23, wherein the second UV stabilizing agent comprises a derivative of tetramethylpiperidine. 26. The anti-fungal and/or algae resistant clear coating according to claim 19, wherein the first and second UV stabilizing agents are present at a ratio ranging from 1:1 to 5:1 relative to one another. 27. The anti-fungal and/or algae resistant clear coating according to claim 26, wherein the anti-fungal and/or algae resistant coating includes the biocide and the clear film at a ratio ranging from 1:3 to 1:60 relative to one another. 28. The anti-fungal and/or algae resistant clear coating according to claim 27, wherein the anti-fungal and/or algae resistant clear coating includes the non-encapsulated biocide and the encapsulated biocide at a ratio ranging from 3:1 to 1:7 relative to one another. 29. The anti-fungal and/or algae resistant clear coating according to claim 28, the anti-fungal and/or algae resistant clear coating includes the polysiloxane-acrylic resin and the polysiloxane-urethane resin at a ratio ranging from 9:1 to 1.1:1 relative to one another. 30. A substrate having the anti-fungal and/or algae resistant clear coating according to claim 1 applied thereon; wherein the substrate is porous or non-porous material and/or the substrate is a non- functionalized substrate, an electrostatically neutral substrate, or a combination thereof; wherein the anti-fungal and/or algae resistant clear coating retains 100% gloss retention after 500 hours of UV exposure, 95% gloss retention after 1000 hours of UV exposure, 93% gloss retention after 1500 hours of UV exposure, and 93% gloss retention after 2000 hours of UV exposure.
‘841 Patent claims are directed to 1. A liquid, anti-fungal and/or algae resistant composition that forms a clear coating on a substrate post-application comprising: (a) water a concentration of up to 70 wt % of the composition; (b) a biocide dispersed within the water present in an effective amount to prevent and/or reduce fungal and or algal growth on the substrate post-application; (c) a stabilizing agent dispersed within the water; and (d) a film-forming composition dispersed within the water present in an effective amount to form a clear film on the substrate post-application; wherein the film-forming composition comprises a polysiloxane-acrylic resin and a polysiloxane-urethane resin, and wherein the polysiloxane-acrylic resin comprises a shell-core configuration in which the polysiloxane is encapsulated by the acrylic. 2. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the composition includes less than 0.01 wt % heavy metal containing components and less than 0.01 wt % fluoro containing components. 3. The liquid, anti-fungal and/or algae resistant composition of claim 1, wherein the film-forming agent composition comprises 10 wt % to 45 wt % of the composition. 4. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the biocide comprises encapsulated and non-encapsulated biocides. 5. The liquid anti-fungal and/or algae resistant composition of claim 4 wherein the encapsulated biocide is configured to release the biocide from the coating on a substrate post-application for 6 months to 5 years. 6. The liquid anti-fungal and/or algae resistant composition of claim 4, wherein the encapsulated biocide comprises 0.1 wt % to 2 wt % of the composition. 7. The liquid anti-fungal and/or algae resistant composition of claim 6, wherein the non-encapsulated biocide comprises 0.1 wt % to 1 wt % of the composition. 8. The liquid anti-fungal and/or algae resistant composition of claim 4, wherein the encapsulated and non-encapsulated biocide comprise at least a carbamate having biocidal activity. 9. The liquid anti-fungal and/or algae resistant composition of claim 8, wherein the encapsulated and non-encapsulated biocide comprise at least a butylcarbamate having biocidal activity. 10. The liquid anti-fungal and/or algae resistant composition of claim 8, wherein the non-encapsulated biocide further comprises an aromatic biocide. 11. The liquid anti-fungal and/or algae resistant composition of claim 10, wherein the aromatic biocide comprises an aromatic urea compound and an aromatic carbamate. 12. The liquid anti-fungal and/or algae resistant composition of claim 10, wherein the aromatic biocide comprises 3-(3,4-dichlorophenyl)-1,1-dimethylurea, methyl 1H-benzimidazol-2-ylcarbamate, or any combination thereof. 13. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the stabilizing agent comprises 0.5 wt % to 6 wt % of the composition. 14. The liquid anti-fungal and/or algae resistant composition of claim 1, wherein the stabilizing agent comprises an ultraviolet (UV) stabilizing agent. 15. The liquid anti-fungal and/or algae resistant composition of claim 14, wherein the UV stabilizing agent comprises a first UV stabilizing agent, a second UV stabilizing agent, or a combination thereof. 16. The liquid anti-fungal and/or algae resistant composition of claim 15, wherein the first UV stabilizing agent is a heterocycle. 17. The liquid anti-fungal and/or algae resistant composition of claim 16, wherein the first UV stabilizing agent is a triazine compound. 18. The liquid anti-fungal and/or algae resistant composition of claim 15, wherein the first UV stabilizing agent comprises 2-[4-[(2-Hydroxy-3-dodecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, 2-[4-[(2-Hydroxy-3-tridecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, or any combination thereof. 19. The liquid anti-fungal and/or algae resistant composition of claim 15, wherein the second UV stabilizing agent comprises an ultraviolet (UV) stabilizing agent that includes a hindered amine and/or heterocyclic. 20. The liquid anti-fungal and/or algae resistant composition of claim 19, wherein the second UV stabilizing agent comprises hindered amine light stabilizers (HALS). 21. The liquid anti-fungal and/or algae resistant composition of claim 19, wherein the second UV stabilizing agent comprises a derivative of tetramethylpiperidine. 22. The liquid anti-fungal and/or algae resistant composition of claim 15, wherein the first and second UV stabilizing agents are present at a ratio ranging from 1:1 to 5:1 relative to one another. 23. The liquid anti-fungal and/or algae resistant composition of claim 22, wherein the liquid anti-fungal and/or algae resistant composition includes the biocide and film forming composition at a ratio ranging from 1:3 to 1:60 relative to one another. 24. The liquid anti-fungal and/or algae resistant composition of claim 23, wherein the liquid anti-fungal and/or algae resistant composition includes the unencapsulated biocide and the encapsulated biocide at a ratio ranging from 3:1 to 1:7 relative to one another. 25. The liquid anti-fungal and/or algae resistant composition of claim 24, wherein the liquid anti-fungal and/or algae resistant composition includes the polysiloxane-acrylic resin and polysiloxane-urethane resin at a ratio ranging from 9:1 to 1.1:1 relative to one another. 26. A method of coating a substrate comprising: (a) applying the composition of claim 1 to a substrate; and (b) after step (a), drying and/or curing the composition to the substrate thereby forming the coated substrate, wherein the substrate is porous or non-porous material and/or the substrate is a non-functionalized substrate, an electrostatically neutral substrate, or a combination thereof
‘‘841 Patent Claims differ from the Instant claims in that the ‘841 claims recite a liquid, anti-fungal and/or algae resistant composition that forms a clear coating on a substrate post-application comprising water a concentration of up to 70 wt % of the composition. However, Instant claims recite the transitional phrase ‘comprising’ that is open-ended and does not exclude additional, unrecited elements or method steps. See, e.g. Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) and do not exclude a clear coating that comprises water in a concentration of up to 70 wt % of the composition. Both ‘841 claims and Instant Claims recite that the clear film comprise a biocide dispersed within the clear film and a stabilizing agent dispersed within the clear film. Further, ‘841 claims and instant Claims recite that the clear film comprises a polysiloxane-acrylic resin and polysiloxane-urethane resin, wherein the polysiloxane-acrylic resin comprises a shell-core configuration in which the polysiloxane is encapsulated by the acrylic. Furthermore, ‘841 claims recite that the clear coating comprises 10 wt % to 45 wt % of the and Instant Claims recite that the clear coating comprises a concentration of 40 wt% to 95 wt% the polysiloxane-acrylic resin and polysiloxane-urethane resin, of which overlap in concentration of the film forming agent. 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. Additional, both ‘Instant Claims and ‘841 claims recite that the encapsulated and non-encapsulated biocide comprise at least a carbamate having biocidal activity, the encapsulated and non-encapsulated biocide comprise at least a butylcarbamate having biocidal activity, wherein the non-encapsulated biocide further comprises an aromatic biocide, wherein the aromatic biocide comprises an aromatic urea compound and an aromatic carbamate, and wherein the aromatic biocide comprises 3-(3,4-dichlorophenyl)-1,1-dimethylurea, methyl 1H-benzimidazol-2-ylcarbamate, or any combination thereof. Further, Instant claims and ‘841 Patent claims recite an ultraviolet (UV) stabilizing agent, wherein the UV stabilizing agent comprises a first UV stabilizing agent, a second UV stabilizing agent, or a combination thereof, wherein the first UV stabilizing agent is a heterocycle, wherein the first UV stabilizing agent is a triazine compound, wherein the first UV stabilizing agent comprises 2-[4-[(2-Hydroxy-3-dodecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, 2-[4-[(2-Hydroxy-3-tridecyloxypropyl)oxy]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-1,3,5-triazine, or any combination thereof, wherein the second UV stabilizing agent comprises an ultraviolet (UV) stabilizing agent that includes a hindered amine and/or heterocyclic, wherein the second UV stabilizing agent comprises a derivative of tetramethylpiperidine, wherein the first and second UV stabilizing agents are present at a ratio ranging from 1:1 to 5:1 relative to one another, i.e., the claimed ratios for Instant claims and the ‘841 Patent Claims are the same (identical) relative ratios. Additionally, it would have been prima facie obvious to provide a substrate having the anti-fungal and/or algae resistant clear coating according to instant claim 1 applied thereon; wherein the substrate is porous or non-porous material and/or the substrate is a non- functionalized substrate, an electrostatically neutral substrate, or a combination thereof; wherein the anti-fungal and/or algae resistant clear coating retains 100% gloss retention after 500 hours of UV exposure, 95% gloss retention after 1000 hours of UV exposure, 93% gloss retention after 1500 hours of UV exposure, and 93% gloss retention after 2000 hours of UV exposure as recited in in view of the ‘841 Patent claims that recite a substrate that is porous or non-porous material and/or the substrate is a non-functionalized substrate, an electrostatically neutral substrate, or a combination thereof wherein the clear coating film composition of claim 1 is applied to the substrate. Furthermore, it would necessarily follow that the clear coating as claimed in the ‘841 Patent claims would provide anti-fungal and/or algae resistant clear coating retains 100% gloss retention after 500 hours of UV exposure, 95% gloss retention after 1000 hours of UV exposure, 93% gloss retention after 1500 hours of UV exposure, and 93% gloss retention after 2000 hours of UV exposure.
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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 16 and 19-29 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 pre-AIA the applicant regards as the invention.
Claim 16 recites (in part): wherein the aromatic biocide comprises 3-(3,4-dichlorophenyl)-l, 1-dimethylurea, methyl lHbenzimidazol-2-ylcarbamate, or any combination thereof.
Claim 19 recites (in part): wherein the UV stabilizing agent comprises a first UV stabilizing agent, a second UV stabilizing agent, or a combination thereof.
Claim 22 recites (in part): wherein the first UV stabilizing agent comprises 2-[4-[(2-Hydroxy-3-dodecyloxypropyl)oxy]-2-hydroxyphenyl ]-4,6-bis(2,4-dimethylphenyl)-l ,3,5-triazine, 2-[ 4-[ (2-Hydroxy-3-tridecyloxypropyl)oxy ]-2-hydroxyphenyl]-4,6-bis(2,4-dimethylphenyl)-l,3,5-triazine, or any combination thereof.
Claim 16 is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.
Similarly, for claim 19 and 22.
See MPEP 2173.05(h) for proper Markush language. MPEP 2111.03 stating in part that, 'comprising' is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.
The examiner suggests Applicants adopt the transitional phrase:
For example, claim 16: wherein the aromatic biocide is selected from the group consisting of 3-(3,4-dichlorophenyl)-l, 1-dimethylurea, methyl lHbenzimidazol-2-ylcarbamate, or any combination thereof.
Similarly, for claim 19 and 22.
The remaining claims do not resolve the issues with instant claim 19, as described above
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, 2, 3, 4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al. (JPHll-293153A; reference to English Translation (IP.com: attached herein) [Kobayashi].
Regarding claims 1, 2, 3, 4 and 7,
Kobayashi teaches a clear coating composition having anti-algal and anti-mold (i.e., anti-fungal) properties, which becomes transparent when dried and formed into a film (i.e., clear film), wherein the clear coating has resistance to algae and or fungi. Kobayashi teaches that the composition contains 0.3 to 5 parts by weight of an anti-algal and fungicide containing a triazine-based compound and an imidazole-based compound with respect to 100 parts by weight (Abstract; p.2, [0005]; p.4, first para.; p.9, fourth para.; See entire document). Thus, it would necessarily follow that the biocides are dispersed within the clear film in an effective amount to prevent and/or reduce fungal and/or algal growth on and within the anti-fungal and/or algae resistant coating. Further, Kobayashi teaches that the clear film comprises an anti-setting agent. Kobayashi does not explicitly teach that anti-setting agent is a stabilizing agent, however, a compound cannot be separated from its properties, regardless of what it types of excipients it is classified as. See MPEP 2112.01 II which discloses ‘Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Moreover, it well established that anti-setting agent acts as a stabilizing agent that ensures uniformity of a composition, i.e., prevents particles from setting to the bottom of the composition. Further, it would necessarily follow that the clear coating includes less than 0.01 wt% heavy metal and less than 0.01 wt% fluoro containing components, of which reads on 0% by weight. Kobayashi teaches that the clear coating composition comprises a synthetic resin that is acryl-silicon (p.2, fifth para. [0005]) (i.e., reads on siloxane component and an organic component and organic, inorganic hybrid).
Kobayashi that 0.3- 5 wt% of the biocide is coated with acrylic-silicon resin. Therefore. it necessarily follows that the encapsulation of the biocide using the acrylic-silicon resin would include at least 0.3 wt% of the biocide, of which overlaps with the claimed amount of 0.2-7.5 wt%, wherein it would necessarily follow that the non-encapsulated would comprise about 0.2-6 wt% of the clear film. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Furthermore, it would necessarily follow that the clear coating composition as taught by Kobayashi would consist of an organic, inorganic hybrid) that lies between 40 wt% to 95 wt% of the clear coating composition having anti-algal and anti-mold (i.e., anti-fungal) coating.
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 of this title, 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:
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 1-4, 6-15 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (JP Hll-293153A; reference to English Translation (IP.com: attached herein) [Kobayashi] in view of Wang et al (Biocide-encapsulated core-shell polymer microspheres: A novel approach for preparing long-lasting antimicrobial coatings, Progress in Organic Coatings p. 1 (p.108722) August, 2024) [Wang], Trzaskowska et al (silicone-acrylic hybrid aqueous dispersions of core–shell particle structure and corresponding silicone-acrylic nanopowders designed for modification of powder coatings and plastics. Part I – Effect of silicone resin composition on properties of dispersions and corresponding nanopowders, Progress in Organic Coatings p.568 Dec 2013) [Trzaskowska], Patel et al (USP5,585,407) [Patel] and Santos et al (Biocides and techniques for their encapsulation: a review, Soft Matter, p.5340 June, 2022) [Santos].
The teachings of Kobayashi regarding claims 1, 2, 3, 4 and 7 are discussed above.
Kobayashi differs from the claims in that the document does not teach the clear film comprises wherein a polysiloxane-acrylic resin and polysiloxane-urethane resin (i.e., a film forming organic, inorganic hybrid(s)); wherein the polysiloxane-acrylic resin comprises encapsulated and non-emasculated biocide, e.g. butylcarbamate and/or aromatic biocide, or a UV stabilizing agent comprises a first UV stabilizing agent and/or a second UV stabilizing agent.
However, Wang, Trzaskowska , Patel and Santos, as a whole, cure the deficiencies.
Wang teaches biocide-encapsulated core-shell polymer designed with a hydrophilic shell and a hydrophobic core, wherein the microspheres predominantly stored the hydrophobic biocides within the core, thus reducing the biocide concentration at the shell. Wang teaches that core-shell microspheres are excellent carriers for drug release, where it is advantageous for sequestering the biocide within the core, thereby maintaining a reduced concentration in the shell even under conditions of high overall biocide loading. This core–shell architecture is anticipated to bolster the rate of biocide encapsulation during the synthesis process, as hydrophobic biocides are efficiently transferred from the aqueous reaction medium to the relatively hydrophilic shell and subsequently to the hydrophobic core. Moreover, Wang teaches that encapsulated can be provided to achieve an effective encapsulation efficiency. Thus, it would have been obvious to modify the teachings Kobayashi to provide a clear coating comprising a biocide that is both encapsulated and unencapsulated. One skilled in the art would have been motivated to do so in order to provide a clear coating composition having anti-algal and anti-mold (i.e., anti-fungal) that provides controlled release of the biocide, thereby maintaining a reduced concentration in the shell even under conditions of high overall biocide loading having a reasonable expectation of success. Moreover, it would have been well within the purview of one of ordinary skill in art to optimize the amount of biocide encapsulated in the core-shell microsphere to best achieve a targeted goal, e.g., 0.2 wt % to 7.5 wt% of the clear coating by adjusting the amount of biocide and time for process to take place to certain amount of biocide that is encapsulated, 0.2 wt % to 7.5 wt, and the non-encapsulated biocide comprises 0.2 wt% to 6 wt% of the clear coating, wherein the microspheres are configured to release of the biocide from the coating for 6 months to 5 years without undue experimentation. Wang teaches after 298 days, the coating on the glass substrate was tested using the previously described methods to test the changes of antibacterial activity. The results indicated that the coating maintained a high level of activity. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine the optimum amount based on the intended use of the coating. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success; See In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) (Title; Abstract; p.2, left col. last para., right vol. first para.; p.5, right col. second para.; p.7, right col. second para,; p.10, left col. last para.; see entire document).
In addition, Kobayashi that 0.3- 5 wt% of the biocide is coated with acrylic-silicon resin. Therefore. it necessarily follows that the encapsulation of the biocide using the acrylic-silicon resin would include at least 0.3 wt% of the biocide, of which overlaps with the claimed amount of 0.2-7.5 wt%, thus, it would be obvious that the non-encapsulated would comprise about 0.2-6 wt% of the clear film. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Trzaskowska teaches silicone-acrylic hybrid aqueous dispersions of core–shell particle structure and corresponding silicone-acrylic nanopowders, where the nanopowders. Trzaskowska teaches that aqueous silicone-acrylic dispersions with core–shell particle structure was obtained in the process of emulsion polymerization of acrylic or methacrylic (Title; Abstract). Trzaskowska teaches aqueous dispersions comprising a silicone core were obtained by emulsion polymerization (p.569, right col., third para.), of which, a silicon core makes obvious that the polysiloxane is encapsulated by the acrylic. Moreover, Trzaskowska teaches that all of the dispersions obtained in the designed experiment were very low viscosity transparent liquids showing slight opalescence, wherein the particles were round shaped (See Section 3.2.1, p.572; Fig. 12; Conclusions, p.578). Trzaskowska teaches that it was confirmed that the particles have core–shell structure and it appeared that actual particle size is lower than 100 nm (50–100 nm) (p.573, left col., second paragraph. Thus, on skilled in the art would have recognized that these silicone-acrylic particles are most suitable for treating a fungus (i.e., 2-100 nm range are most effective, since these nano-sized particles provide a high surface-area-to volume ratio, allowing them to effectively disrupt fungal cell membranes).
Accordingly, it would have been prima facie obvious to provide a clear film using a polysiloxane-acrylic hybrid to for encapsulation and non-encapsulation of a biocide to provide an anti-fungal and/or algae resistant clear coating having a reasonable expectation that they would effectively disrupt fungal and/or cell membranes having a reasonable expectation before the effective filing date of the claimed invention.
Patel teaches a composition comprising an acrylate-organosilane polymeric coating, wherein the coating composition is applied to the surface of a substrate and allowed to dry to provide durable adherent polymeric coatings which slowly release biocide to the surrounding surface for extended periods of time, wherein the acrylic-silicon polymeric composition provides long lasting protection from the growth of any of a variety of microbes such as mold, mildew, algae, fungi, and the like, and may be applied to a suitable substrate, wherein the polymeric coating is durable, glossy film which protects the substrate without detracting from its appearance, wherein the coating composition is applied to a substrate that prevents growth of microbes thereon (Abstract; col.2, lns.30-52; col.5 to col.7: Acrylate and Organosilane). Patel teaches that "Biocide" refers to any antimicrobial agent including without limitation mildewcide, antimicrobial, antiseptic, disinfectant, sanitizer, germicide, algaecide, slimicide, antifouling agent, and preservative. An "effective amount" of biocide refers to an amount of biocide effective in preventing the visible growth of microbe colonies. The term "substrate" refers to a surface to which the coating composition may be applied. "Controlled release" refers to the gradual release of biocide from the polymeric coating to the surrounding substrate to provide effective antimicrobial activity for a longer period of time than for the same biocide applied to the substrate without an acrylic-silicon polymeric coating (col.3, lns.24-45). Patel teaches that the biocide to prevent the growth of visible microbe colonies is not limited to any particular biocide, wherein the selection of a suitable biocide for inclusion within the compositions of the invention is believed to be within the skill of those practicing in the field (Biocide, col.7). Patel teaches that the biocide comprises carbamates including 3-iodo-2-propynyl butylcarbamate (e.g. a butylcarbamate) and benzimidazolyl carbamates, (i.e., encompasses aromatic biocides) and ureas and combinations thereof (col.8, lns.1-34). The biocide is present within the coating compositions at a concentration ranging from about 0.5 to 4.0 wt%, and preferably ranging from about 1.0 to 2.0 wt% (col.8, lns.1-34; claims 1-19).
Santos teaches encapsulation plays an important role in the safety and toxicity of biocide applications. First, biocides must be toxic to a target species that is causing some damage and whose extermination is desired. However, it is problematic when biocides are also toxic to nontarget species. Encapsulation helps to overcome this issue by reducing the toxicity of traditional biocides through their controlled release by enabling the utilization of natural compounds as green biocide. Further, Santos teaches that the reduction can be explained because the encapsulation offers protection for the encapsulated compound against the external medium, along with the controlled release of the biocide from the capsule so that the amount of biocide in the encapsulated form is less than that in the free form required for the same biocidal performance. Moreover, Santos teaches that encapsulation can also decrease the risks of antimicrobial resistance development (p.5341, See Section 3, right col.). in addition, Santos teaches an microemulsion process comprising encapsulation of biomolecules wherein the emulsion remained stable for eight months (p.5346; right col.)
Thus, it would have obvious to one skilled in the art to modified the teachings of Kobayashi in view of the teachings of Wang, Trzaskowska, Patel and Santos, as a whole, to provide a clear film comprising a biocide that encapsulated (i.e., enclosing the biocide) with an acrylic-silicon resin. One skilled in the art would have been motivated to do so in order to potentially reduce the toxicity of the biocide through their controlled release so that the amount of biocide in the encapsulated form is less than that in the free form required for the same biocidal performance. wherein encapsulation would be expected to decrease the risks of antimicrobial resistance development having a reasonable expectation of success.
It would have been well within the purview of one of ordinary skill in art to modify the relative weight percent amounts of the biocide to the weight percent amounts of the acrylic-silicon resin to provide and effective amount of non-encapsulated biocide in order to provide a mixture comprising a encapsulated biocide and a non-encapsulated biocide. One skilled in the art would have been motivated to do so in order to optimized the effective release of the biocide to provide an immediate release of the biocide and further comprise a sustained release of biocide having a reasonable expectation of success. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success; See In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955). As MPEP 2144.05 recites ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges of a biocide by routine optimization. Moreover, the anti-fungal and/or algae resistant clear coating as taught by Kobayashi, Wang, Trzaskowska , Patel and Santos, as a whole, would be chemically indistinguishable from the claimed clear coating, so that it would necessarily follow that so that the anti-fungal and/or algae resistant clear composition as taught by Wang, Trzaskowska, Patel and Santos, as a whole, would be configured to release the biocide from the anti-fungal and/or algae resistant clear coating for at least 6 months having a reasonable expectation of success. This property would be the natural result of the combination of the prior art elements. Inherency is appropriate in an obviousness analysis "when the limitation at issue is the 'natural result' of the combination of prior art elements." PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (quoting In re Oelrich, 666 F.2d 578,581 (CCPA 1981)). Moreover, it would necessarily follow that clear film coating as taught by Wang, Trzaskowska , Patel and Santos, as a whole, makes prima facie obvious a substrate having the anti-fungal and/or algae resistant clear coating according to instant claims applied thereon; wherein the substrate is porous or non-porous material and/or the substrate is a nonfunctionalized substrate, an electrostatically neutral substrate, or a combination thereof; wherein the anti-fungal and/or algae resistant clear coating retains 100% gloss retention after 500 hours of UV exposure, 95% gloss retention after 1000 hours of UV exposure, 93% gloss retention after 1500 hours of UV exposure, and 93% gloss retention after 2000 hours of UV exposure, where there is no unobvious distinction between the structural and functional characteristics of the claimed composition and the composition of the prior art.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide instantly claimed antimicrobial composition and one of ordinary skill would have had a reasonable expectation of success in producing the claimed invention. Therefore, in the absence of evidence to the contrary, the claimed invention as a whole would have been obvious to one of ordinary skill as evidenced by Kobayashi, Wang, Trzaskowska, Patel and Santos, as a whole.
Claims 16-28 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (JP Hll-293153A; reference to English Translation (IP.com: attached herein) [Kobayashi] in view of Wang et al (Biocide-encapsulated core-shell polymer microspheres: A novel approach for preparing long-lasting antimicrobial coatings, Progress in Organic Coatings p. 1 (p.108722) August, 2024) [Wang], Trzaskowska et al (silicone-acrylic hybrid aqueous dispersions of core–shell particle structure and corresponding silicone-acrylic nanopowders designed for modification of powder coatings and plastics. Part I – Effect of silicone resin composition on properties of dispersions and corresponding nanopowders, Progress in Organic Coatings p.568 Dec 2013) [Trzaskowska], Patel et al (USP5,585,407) [Patel] and Santos et al (Biocides and techniques for their encapsulation: a review, Soft Matter, p.5340 June, 2022) [Santos] as applied to claims 1-4, 6-15 and 30 above and further in view of Finance {EP0982356) [Finance].
The teachings of Kobayashi, Wang, Trzaskowska , Patel and Santos, as a whole, are described above.
Kobayashi, Wang, Trzaskowska , Patel and Santos fail to teach UV stabilizing agent(s).
However, Finance cures the deficiencies.
Regarding claims 18-
Finance teaches improved stabilized coating film forming polymer compositions comprising at least one UV stabilizer and hindered amine stabilizer HALS (Abstract; p.1, 10). In particular, Finance teaches 2-[2-hyd roxy-4-( (2-hydroxy-3-dodecyloxy)propyloxy)-phenyl]-4, 6-bis-(2, 4-dimethylphenyl)-1 , 3, 5-triazine and 2-[2-hydroxy-4-( (2-hydroxy-3-tridecyloxy)propyloxy)-phenyl]-4, 6-bis-(2,4-dimethylphenyl)-1, 3, 5-triazine (first UV stabilizing agent) (p.5, [0017]). (First stabilizer). Finance teaches HALS-Ill are for example bis-(2,2,6,6-tetramethylpiperidyl) sebacate, i.e., tetramethyl piperidine derivative (p.6, [0025]). Further, Finance teaches a ratio of HALS to UV absorber(s) typically is kept in a range of from 1:2 to 3:1 [0068] (Second stabilizer), of which overlaps with the claimed ratio. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, Finance teaches a coating where hindered amine stabilizer HALS is present at 0.75 wt% and UV stabilizer is 0.75 wt%. So the toal amount of stabilizer would be about 1.5 wt%, of which lies within the claimed amount. 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); In re Woodruff, 91 9 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05
Kobayashi teaches that the composition contains 0.3 to 5 parts by weight of an anti-algal and fungicide containing a triazine-based compound and an imidazole-based compound with respect to 100 parts by weight. As discussed above, the teachings of Kobayashi make obvious that the resin is present in about 40-95 wt. Thus, the ratio of biocide to coating would be at least be about 1:19, which overlaps with the claimed amount.
As discussed above, it would have been obvious to modify the teachings Kobayashi to provide a clear coating comprising a biocide that is both encapsulated and unencapsulated. One skilled in the art would have been motivated to do so in order to provide a clear coating composition having anti-algal and anti-mold (i.e., anti-fungal) that provides controlled release of the biocide, thereby maintaining a reduced concentration in the shell even under conditions of high overall biocide loading having a reasonable expectation of success. Moreover, it would have been obvious optimize the amount of biocide encapsulated in the core-shell microsphere to best achieve a targeted goal, further, it would have well within the skill of those skilled in the art to optimize the amount of unencapsulated biocide of the clear coating by adjusting the amount of biocide and time for process to take place to certain amount of biocide that is encapsulated, 0.2 wt % to 7.5 wt, and the non-encapsuled biocide comprises 0.2 wt% to 6 wt% of the clear coating, Moreover, it would have been well within the purview of one of ordinary skill in art to optimized the amount of modify the relative weight percent amounts of the biocide to the weight percent amounts of the acrylic-silicon resin to provide and effective amount of non-encapsulated biocide in order to provide a mixture comprising a encapsulated biocide and a non-encapsulated biocide. One skilled in the art would have been motivated to do so in order to optimized the effective release of the biocide to provide an immediate release of the biocide and further comprise a sustained release of biocide having a reasonable expectation of success. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success; See In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955). Along these lines, one of ordinary skill in the art would have been motivated to optimize the relative amounts of the encapsulated biocide to the amount of non-encapsulated to provide a clear coating that provided the best possible potential of minimized the fungus and algae without undue exportation, so to provide a ratio of non-encapsulated biocide to encapsulated biocide to provide a ratio ranging from 3:1 to 1:7 that would obviously be routine optimization having a reasonable expectation of success. Moreover, it would have been obvious to provide a lesser amount of non-encapsulated biocide than encapsulated (1:7) in order to provide sustained release coating that would maintain microbial activity for at least 6 months.
Claims 5 and 29 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (JP Hll-293153A; reference to English Translation (IP.com: attached herein) [Kobayashi] in view of Wang et al (Biocide-encapsulated core-shell polymer microspheres: A novel approach for preparing long-lasting antimicrobial coatings, Progress in Organic Coatings p. 1 (p.108722) August, 2024) [Wang], Trzaskowska et al (silicone-acrylic hybrid aqueous dispersions of core–shell particle structure and corresponding silicone-acrylic nanopowders designed for modification of powder coatings and plastics. Part I – Effect of silicone resin composition on properties of dispersions and corresponding nanopowders, Progress in Organic Coatings p.568 Dec 2013) [Trzaskowska], Patel et al (USP5,585,407) [Patel] and Santos et al (Biocides and techniques for their encapsulation: a review, Soft Matter, p.5340 June, 2022) [Santos] and Finance {EP0982356) [Finance] as applied to claims 1-4, 6-28 and 30 above and further in view of Patel (5990188) [Patent (188)].
The teachings of Kobayashi, Wang, Trzaskowska , Patel, Santos and Finance, as a whole, are described above.
Kobayashi, Wang, Trzaskowska , Patel, Santos and Finance, as a whole, fail to teach the clear film comprises a polysiloxane-acrylic resin and polysiloxane-urethane resin, wherein anti-fungal and/or algae resistant clear coating includes the polysiloxane-acrylic resin and the polysiloxane-urethane resin at a ratio ranging from 9: I to 1.1: I relative to one another.
However, Patel (‘188) teaches a polysiloxane urethane resin comprising a radiation curable coating, wherein the composition further comprises silylate acrylate, wherein the at least one photoinitiator is used to induce curing of said composition. Thus, the polymerized product produced thereby would necessarily provide a polysiloxane urethane, wherein the coating are used to coat solid articles comprising decreasing yellowing and the formation of microcracks and improve wettability (Title; Abstract; col. 2, lns.25-36; col.3, lns.35-67; col.5, lns.1-15; col.7, lns.1-20; See entire document), wherein the coating comprises UV light stabilizers and Hindered amine light stabilizers (HALS) (col.6, lns.1-25). Moreover, the coating comprise Tinuvin 400 and tinuvin 123, similar to coating as taught by Kobayashi, Wang, Trzaskowska , Patel, Santos and Finance. Thus, the polysiloxane urethane resin and siloxane acrylate s are directed to common subject matter, thus, the claims are subject to an In re Kerkhoven analysis (In re Kerkhoven, 626, F.2s 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)). The court held that it is obvious to combine two compositions, in order to form a third composition, when each of the two compositions is taught by the prior art to be useful for the same purpose. The idea of combining them flows logically from there having been individually taught in the prior art (MPEP 2144.06). Thus, it would have been prima facie obvious to one of ordinary skill in the art at the time the claimed invention was made to have provided a coating comprising a polysiloxane-acrylic resin and the polysiloxane-urethane. Moreover, it would have been well within the purview of one of ordinary skill in art to optimized the amount of modify the relative weight percent amounts of each to provide a ratio of 9:1 to 1.1:1 since both resins would be expected to have similar uses, wherein to provide and effective amount of non-encapsulated biocide in order to provide a mixture comprising a encapsulated biocide and a non-encapsulated biocide. One skilled in the art would have been motivated to do so in order to optimized the effective release of the biocide to provide an immediate release of the biocide and further comprise a sustained release of biocide having a reasonable expectation of success. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success; See In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955). Moreover, one skilled in the art would be motivated to optimize the ratios in the range of 9:1 to 1.1:1 by balancing the hardness of and weather resistance of polysiloxane-acrylic resin (i.e., acrylate moiety) with the flexibility and toughness of the polysiloxane-urethane resin (i.e., urethane moiety) , wherein it would have been obvious too start with a5):50 ratio, of which can be fine-tuned based on the application needs having a reasonable expectation of success without undue experimentation.
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide instantly claimed antimicrobial composition and one of ordinary skill would have had a reasonable expectation of success in producing the claimed invention. Therefore, in the absence of evidence to the contrary, the claimed invention as a whole would have been obvious to one of ordinary skill as evidenced by Kobayashi, Wang, Trzaskowska , Patel, Santos, Finance and Patel (‘188), as a whole.
Conclusions
No claim is allowed.
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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/T.W./ Examiner, Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619
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