DETAILED ACTION
Claim(s) 1-2, 4-7, 9-11, 18-22 is/are pending.
Claim(s) 1-2, 4-7, 9-11, 21-22 is/are rejected.
Claim(s) 18-20 is/are withdrawn from consideration
Claim(s) 3, 8, 12-17, 23 is/are cancelled by Applicant.
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.
Response to Election/Restrictions
Claim(s) 18-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (Group III) as set forth in the Restriction Requirement mailed 10/29/2021, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/29/2021.
Specification
The objections to the specification in the previous Office Action mailed 12/12/2025 have been withdrawn in view of the Claim Amendments filed 10/30/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (new matter) in the previous Office Action mailed 12/12/2024 have been withdrawn in view of the Claim Amendments filed 10/30/2025.
Claims 1-2, 4-7, 9-11, 21-22 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (a) a limited range of formulations for fingerprint-resistant coatings; does not reasonably provide enablement for the entire compositional range of formulations encompassed by the present claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to make fingerprint-resistant coatings simultaneously exhibiting:
the recited properties in claim 1:
(a) delta E of less than 0.7;
(b) coefficient of friction (COF) of less than about 0.2;
optionally with the additional properties in claims 2, 10:
(c) initial oil angle;
and further optionally with the additional properties in claims 2, 11:
(d) initial water angle;
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
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(A) The breadth of the claims;
(B) The nature of the invention;
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(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A) the claims are relatively broad -- for example, but not limited to:
• the claims do not contain any limitations on the composition of the fingerprint-resistant coatings as a whole;
• the claims do not contain any limitations regarding the minimum individual or the minimum combined amounts of the recited component(s) (i.e., the recited halogenated C11 alkyl silane; optionally combined with the recited POSS of claim 6) on the formulation of the fingerprint-resistant coatings as a whole;
• the claims do not contain any limitations regarding the type(s) or amount(s) of other materials (e.g., polymeric, non-polymeric, organic, inorganic, etc.) in the formulation of the fingerprint-resistant coatings as a whole;
• the majority of the claims do not contain any limitations on the type of halogenated C11 alkyl in the formulation of the fingerprint-resistant coatings, as long as the halogenated C11 alkyl conforms to the recited formula (RA)3SiRB and contains at least one of the specified halogen atoms;
• the majority of the claims do not contain any limitations on the type of POSS in the formulation of the fingerprint-resistant coatings, as long as the POSS conforms to the formula in claim 6;
• etc.
With respect to Wand factor (B), the specification provide evidence that the inventive fingerprint-resistant coatings containing specific chlorine-substituted C11 alkyl silanes and functionalized POSS exhibit (a) delta E values of 0.1-0.5, optionally combined with (c) initial oil angle of 35° or less, while commercially available anti-fingerprint formulations do not.
With respect to Wand factor (C)-(E), the prior art does not specifically teach fingerprint-resistant coatings containing the recited specific halogen-substituted C11 alkyl silanes which simultaneously exhibit the recited (a) delta E and (b) coefficient of friction (claim 1).
With respect to Wand factors (F)-(G), the disclosure as originally filed only discloses a very limited range of formulations which produce fingerprint-resistant coatings which simultaneously exhibit the recited combination of: (a) delta E and (b) coefficient of friction; optionally with (c) initial oil angle (claims 2, 10); and further optionally with (d) initial water angle (claims 2, 11).
NOTE: the Examples in the Specification appears to contain significant omissions and/or typographical errors which makes it difficult to determine the specific composition(s) of the coatings used in Table 7, which is the only source of data for (a) delta E values. For example, the description for Table 7 mentions “surfaces prepared as described in Example 12”. However, Example 12 does not contain any descriptions of surface preparation and merely refers to a formulation “as described above in Example 15”, while Example 15 only refers to the “Synthesis of PDMS-TEOS” and therefore contains no information with respect to the amounts of 11-chloroundecyl triethoxy silane and POSS used in the coating formulations used to generate the data of Table 7. Additionally, Example 16 states that the amount of POSS in the coating is “100 mg/ml” (i.e., 100 g/l). For the purposes of the present Office Action, the reference to “Example 15” in Example 12 is assumed to refer to either Example 11 or Example 16 (i.e., a coating formulation containing 3.75 g/l silane and 100 mg/l POSS).
With respect to Wand factor (H), in view of the evidence in the specification indicating that the type of alkyl silane is critical and essential for obtaining fingerprint-resistant coatings exhibiting the (a) delta E; it is the Examiner’s position that undue experimentation would be required to produce fingerprint-resistant coatings which simultaneously exhibit the recited: (a) delta E of less than 0.7 and (b) coefficient of friction (COF) of less than about 0.2; (claim 1); optionally with (c) initial oil angle (claims 2, 10); and further optionally with (d) initial water angle (claims 2, 11); using formulations which are encompassed by the present claims, but are materially different from those used in the working Examples in the specification -- for example, but not limited to:
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• the type of halogenated C11 alkyl silane in the formulation of the fingerprint-resistant coatings -- the disclosure as originally filed only clearly discloses producing fingerprint-resistant coatings which simultaneously exhibit: the recited: (a) delta E and (b) COF; optionally with (c) initial oil angle (claims 2, 10); and further optionally with (d) initial water angle (claims 2, 11); using formulations containing:
(1) 3.75 g/l of a single chlorinated C11 alkyl silane (i.e., 11-chloroundecyl triethoxy silane (CAS# 120786315), wherein the silane contains a single terminal chlorine atom;
and
(2) 100 mg/l POSS functionalized with hydroxy groups;
wherein the combined amount of the two recited components (i.e., the recited halogenated C11 alkyl silane and the recited OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
The Examiner has reason to believe that the type of halogenated C11 alkyl silane used in a coating would be reasonably expected to materially affect the surface properties (e.g., polarity; hydrophobic or hydrophilic nature; oleophilic or oleophobic nature; surface tension; surface energy; spreading or wetting characteristics of various compounds; etc.) of said coating, which in turn would be reasonably expected to materially affect:
• the anti-fingerprint properties (as represented by (a) delta E, (c) initial oil angle, and/or initial water angle, etc.) of a coating;
and
• the frictional properties (as represented by (b) COF) of a coating.
For example:
• the type and degree of halogenation in the halogenated C11 alkyl silane (e.g., the number of halogen substituent(s) present in the silane; the type of halogen atom(s) present; the placement of the halogen atom(s) etc.). Different types of halogens can exhibit significant differences in polarity, surface energies, etc. -- for example: the presence of multiple fluorine substituents commonly produce surfaces which are both highly hydrophobic and oleophobic, which is not necessarily advantageous for reduction of fingerprint visibility, given that fingerprints are a mixture of oils and water. In contrast, certain iodine-containing compounds, instead of repelling fingerprints and/or reducing fingerprint visibility, are known to have an affinity for fingerprint oils (e.g., being commonly used for fingerprint visualization and development; etc.);
• the structure of the C11 alkyl group (e.g., linear or branched, etc.) which can affect the degree of polarity or non-polarity of a compound, which in turn can affect surface properties (e.g., hydrophobic or hydrophilic nature, oleophilic or oleophobic nature, surface tension, surface energy, and/or spreading characteristics for various compounds, etc.) of a coating;
• the presence and amount of non-hydrogen substituent groups (e.g., -OH, -CN, -COOH, nitrogen-containing groups, phosphorus-containing groups, etc.) -- different types of substituent groups exhibit different polarity and/or non-polarity characteristics -- for example, a halogenated C11 alkyl silane containing one or more carboxylic acid groups and/or amino groups and/or phosphorus groups would be reasonably expected to exhibit notably different polar (or non-polar) behavior compared to a silane containing (with the exception of a single terminal chlorine in the C11 alkyl group) only unsubstituted alkyl groups. In turn, the polarity (or non-polarity) of a surface or coating are well known to sometimes have a substantial effect on frictional properties and other surface properties (e.g., affinity or repellency to water and/or oil, contact angles, wetting characteristics, surface energy, etc.) of a coating containing a halogenated alkyl silane; etc.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to obtain fingerprint-resistant coatings with the recited: (a) delta E and (b) COF (claim 1); optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); using formulations for fingerprint-resistant coatings which contain other types of halogenated C11 alkyl silanes which are encompassed by the present claims, but are materially different from 11-chloroundecyl triethoxy silane (CAS# 120786315) used in the single working Example in the Specification and the single evidentiary Example in the ZHANG Declaration filed 03/19/2025 -- for example: halogenated C11 alkyl silanes conforming to the recited formula (RA)3SiRB but containing:
• containing other types of halogens (e.g., fluorine, bromine, iodine) in the C11 alkyl group of RB or in one or more RA groups;
• containing multiple halogen substituents (e.g., two or more halogen atoms; perhalogenation; etc.) in the C11 alkyl group of RB;
• containing one (or more) halogen atoms positioned on a non-terminal carbon atom in the C11 alkyl group of RB;
• containing one (or more) halogen atoms positioned on a terminal or non-terminal carbon atom in one or more RA groups;
• containing one or more non-hydrogen substituent groups on one or more carbons (e.g., -OH, -CN, -COOH, nitrogen-containing groups, phosphorus-containing groups, etc.) in the C11 alkyl group of RB or in one or more RA groups; etc.;
without undue experimentation, particularly:
(1) when the Examiner has reason to believe that differences in the chemical structure in a halogenated C11 alkyl silane can materially affect the surface properties (e.g., hydrophobic or hydrophilic nature, oleophilic or oleophobic nature, surface tension, surface energy, and/or spreading characteristics for various compounds, polarity, etc.) of a coating containing said silane, which in turn can materially -- and potentially unpredictably -- affect the: (a) delta E and/or (b) COF and/or (c) initial oil angle and/or optionally (d) initial water angle of said coating; and
(2) in view of the limited evidence in the specification which only show fingerprint-resistant coatings exhibiting the recited: (a) delta E and (b) COF; and optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); using a very limited range of formulations -- i.e., wherein the combined amount of the 1-2 components (i.e., 11-chloroundecyl triethoxy silane, and optionally the OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
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• the type of POSS in the formulation of the fingerprint-resistant coatings -- -- the disclosure as originally filed only clearly discloses producing fingerprint-resistant coatings which simultaneously exhibit: the recited: (a) delta E and (b) COF; optionally with (c) initial oil angle (claims 2, 10); and further optionally with (d) initial water angle (claims 2, 11); using formulations containing:
(1) 3.75 g/l of a single chlorinated C11 alkyl silane (i.e., 11-chloroundecyl triethoxy silane (CAS# 120786315), wherein the silane contains a single terminal chlorine atom;
and
(2) 100 mg/l POSS functionalized with hydroxy groups;
wherein the combined amount of the two recited components (i.e., the recited halogenated C11 alkyl silane and the recited OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
The Examiner has reason to believe that the: (a) delta E (claim 1); (b) COF (claim 1); optionally (c) initial oil angle (claims 2, 10); or optionally (d) initial water angle (claims 2, 11); of a fingerprint-resistant coating would be materially affected by the type of POSS used in the formulation of the fingerprint-resistant coatings.
For example:
• the presence of unsubstituted C1-C6 alkyl groups in one or more of the R group(s) of the POSS;
• the presence and type(s) and number of non-hydrogen substituents on one or C1-C6 alkyl groups in one or more R group(s) of the POSS; etc.
would be reasonably expected to materially affect the polarity and therefore the surface properties (e.g., hydrophobic nature, oleophilic nature, surface tension and/or spreading characteristics for various compounds, etc.) of a coating containing said POSS.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to obtain fingerprint-resistant coatings with the recited: (a) delta E (claim 1); (b) COF (claim 1); optionally (c) initial oil angle (claims 2, 10); and optionally (d) initial water angle (claims 2, 11); using formulations for fingerprint-resistant coatings which contain other types of POSS which are encompassed by the present claims, but materially differ from the OH-functionalized POSS used in the single working Example in the Specification which satisfies both the recited (a) delta E and (b) COF -- for example:
• POSS compounds conforming to the recited formula of claim 6 but containing R groups containing only unsubstituted C1-C6 alkyl groups;
• POSS compounds conforming to the recited formula of claim 6 but containing R groups containing C1-C6 alkyl groups which contain one or more non-OH substituent(s) (e.g., nitrogen-containing groups, phosphorus-containing groups, halogens, etc.); etc.
without undue experimentation, particularly:
(1) when the Examiner has reason to believe that differences in the chemical structure in a POSS can materially affect the surface properties (e.g., hydrophobic or hydrophilic nature, oleophilic or oleophobic nature, surface tension, surface energy, and/or spreading characteristics for various compounds, polarity, etc.) of a coating containing said POSS, which in turn can reasonably expected to materially -- and potentially unpredictably -- affect the: (a) delta E and/or (b) COF and/or (c) initial oil angle and/or optionally (d) initial water angle of said coating; and
(2) in view of the limited evidence in the specification which only show fingerprint-resistant coatings exhibiting the recited: (a) delta E and (b) COF; and optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); using a very limited range of formulations -- i.e., wherein the combined amount of the 1-2 components (i.e., 11-chloroundecyl triethoxy silane, and optionally the OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
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• the minimum combined amounts and the minimum individual amounts of the 1-2 recited component(s) (i.e., the recited halogenated C11 alkyl silane; optionally combined with the recited POSS of claim 6) in the fingerprint-resistant coatings as a whole -- the disclosure as originally filed only discloses producing fingerprint-resistant coatings which simultaneously exhibit: the recited: (a) delta E and (b) COF; optionally with (c) initial oil angle (claims 2, 10); and further optionally with (d) initial water angle (claims 2, 11); using formulations containing:
(1) 3.75 g/l of a single chlorinated C11 alkyl silane (i.e., 11-chloroundecyl triethoxy silane (CAS# 120786315); and
(2) 100 mg/l POSS functionalized with hydroxy groups;
wherein the combined amount of the two recited components (i.e., the recited halogenated C11 alkyl silane and the recited OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
However, the disclosure as originally filed does not contain objective evidence that formulations utilizing POSS functionalized with polyethylene glycol (PEG) exhibit the recited (b) COF.
The ZHANG Declaration filed 03/19/2025 only discloses producing a coating which simultaneously exhibit: the recited: (a) delta E and (b) COF; (c) initial oil angle (claims 2, 10); and (d) initial water angle (claims 2, 11); using a single formulation containing:
(1) 5.6 g/l of a single chlorinated C11 alkyl silane (i.e., 11-chloroundecyl triethoxy silane (CAS# 120786315);
wherein the combined amount of the recited halogenated C11 alkyl silane constitutes the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
However, the present claims use the open term “comprising” with respect to the formulation, which allows for nearly any amount(s) of other material(s) (polymeric; non-polymeric organic; inorganic; etc.), as long as the recited component(s) (i.e., the recited halogenated C11 alkyl silane; optionally the recited POSS of claim 6) are present in any non-zero amount(s).
Additionally, the present claims do not contain any limitations on the minimum individual amounts of each of the 1-2 recited component(s) (i.e., the recited halogenated C11 alkyl silane; optionally the recited POSS of claim 6) in the formulation for the fingerprint-resistant coatings as a whole, as long as: (1) each of the 1-2 recited component(s) (i.e., the recited halogenated C11 alkyl silane; optionally the recited POSS of claim 6) are present in any non-zero amount.
The Examiner has reason to believe that:
• a minimum total amount of the recited halogenated C11 alkyl silane (when POSS is not used);
or
• minimum individual amounts of the recited halogenated C11 alkyl silane and POSS, and a minimum combined amount of silane and POSS (when both silane and POSS is used);
need to be present in the formulations for fingerprint-resistant coatings as a whole in order to produce a fingerprint-resistant coatings exhibiting the recited: (a) delta E (claim 1); (b) COF (claim 1); optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); since the concentration of alkyl silane in a coating would reasonably expected to materially affect the surface properties (e.g., hydrophobic nature, oleophilic nature, surface tension and/or spreading characteristics for various compounds, etc.) and/or optical properties (e.g., refractive index, etc.) of said coating.
In particular, although the ZHANG Declaration filed 03/19/2025 indicates that the recited halogenated C11 alkyl silane can be used alone to produce coatings which exhibit the recited (a) delta E and (b) COF; optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11), the usage of substantially more silane (i.e., 5.6 g/l, which is 150% of the 3.75 g/l silane used in the Examples in the specification) in the single Example in the ZHANG Declaration filed 03/19/2025 appears to imply that additional silane needs to be present in order to “make up” for the absence of POSS in the coating. This, in turn, supports the Examiner’s position that at least a certain minimum amount of the recited silane is necessary to produce coatings which exhibit the recited (a) delta E and (b) COF; optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11).
Furthermore, the Examiner has reason to believe that the: (a) delta E and (b) COF; optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); of a fingerprint-resistant coating would be materially affected by presence of non-trivial amounts of other components (e.g., other polymers; other non-polymeric compounds; additives; etc.), since the presence and concentration of non-trivial amounts of other polymeric or non-polymeric materials in a coating would reasonably expected to materially affect the surface properties (e.g., hydrophobic nature, oleophilic nature, surface tension and/or spreading characteristics for various compounds, etc.) of said coating, which in turn would be reasonably expected to materially affect the (a) delta E and/or (b) COF of a coating.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to obtain fingerprint-resistant coatings with the recited: (a) delta E and (b) COF; optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); using formulations for fingerprint-resistant coatings as a whole which are encompassed by the present claims, but are materially different from the single working Example in the Specification and the single evidentiary Example in the ZHANG Declaration filed 03/19/2025 -- e.g., but not limited to:
• formulations containing smaller amounts (e.g., 4 g/l or 3 g/l or 2 g/l or 1 g/l or 0.5 g/l, etc.) of the recited halogenated C11 alkyl silane (when the silane is used alone);
• formulations containing smaller amounts (e.g., 3 g/l or 2 g/l or 1 g/l or 0.5 g/l, etc.) of the recited halogenated C11 alkyl silane, combined with relatively small amounts of POSS (e.g., 10 mg/l or 20 mg/l or 50 mg/l, etc.);
• formulations containing smaller amounts (e.g., 3 g/l or 2 g/l or 1 g/l or 0.5 g/l, etc.) of the recited halogenated C11 alkyl silane, combined with non-functionalized POSS in any amount (e.g., 10 mg/l or 20 mg/l or 50 mg/l or 250 mg/l or 800 mg/l or 1000 mg/l, etc.;
• formulations wherein the total amount of the recited halogenated C11 alkyl silane (optionally combined with POSS) constitutes less than ~100 wt% of the coating (e.g., 80 wt% or 70 wt% or 50 wt% or 40 wt% or 30 wt% or 10 wt% or 5 wt%, etc.) of the coating as a whole; etc.
without undue experimentation, particularly:
(1) when the Examiner has substantial reason to believe that presence of non-trivial amounts of other components (e.g., other polymers; other non-polymeric compounds; additives; etc.) in a coating would reasonably expected to materially affect the surface properties (e.g., hydrophobic nature, oleophilic nature, polarity, surface tension, and/or spreading characteristics for various compounds, etc.) of said coating, which in turn would be reasonably expected to materially -- and potentially unpredictably -- affect the: (a) delta E and/or (b) COF and/or (c) initial oil angle and/or optionally (d) initial water angle of said coating; and
(2) in view of the limited evidence in the specification which only show fingerprint-resistant coatings exhibiting the recited: (a) delta E and (b) COF; and optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); using a very limited range of formulations -- i.e., wherein the combined amount of the 1-2 components (i.e., 11-chloroundecyl triethoxy silane, and optionally the OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
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In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make formulations for fingerprint-resistant coatings which simultaneously exhibit the recited: (a) delta E and (b) COF; optionally (c) initial oil angle (claims 2, 10); and optionally (d) initial water angle (claims 2, 11); over the entire scope of the present claims, without undue experimentation, particularly:
(1) when the Examiner has reason to believe that presence of other components and/or different components can materially affect the surface properties (e.g., hydrophobic or hydrophilic nature, oleophilic or oleophobic nature, polarity, surface tension, and/or spreading characteristics for various compounds, etc.) of said coating, which in turn would be reasonably expected to materially -- and potentially unpredictably -- affect the: (a) delta E and/or (b) COF and/or (c) initial oil angle and/or optionally (d) initial water angle of said coating (as evidenced by “Anti-fingerprint properties of engineering surfaces: a review”; “Polymer Surface Energy vs. Coefficient of Friction (COF)); and
(2) in view of the limited evidence in the specification which only show fingerprint-resistant coatings exhibiting the recited: (a) delta E and (b) COF; and optionally (c) initial oil angle (claims 2, 10); and further optionally (d) initial water angle (claims 2, 11); using a very limited range of formulations -- i.e., wherein the combined amount of the 1-2 components (i.e., 11-chloroundecyl triethoxy silane, and optionally the OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
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.
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the previous Office Action mailed 12/12/2024 have been withdrawn in view of the Claim Amendments filed 10/30/2025.
Claim Rejections - 35 USC § 103 (AIA )
The rejections under 35 U.S.C. 103 based on KR 10139442 B (MAN-KR ‘442 B), etc. in the previous Office Action mailed 03/26/2024 have been withdrawn in view of reconsideration and in view of the new grounds of rejection necessitated by the Claim Amendments filed 08/26/2024
Response to Arguments
Applicant's arguments filed 10/30/2025 and the ZHANG Declaration filed 03/19/2025 have been fully considered but they are not persuasive.
(A) Applicant argues regarding Wand factors (F)-(G), “that that the specification provides a detailed description and examples fora person of ordinary skill in the art to make and use the claimed fingerprint-resistant coating that simultaneously exhibit the claimed properties.” However, while the specification may provide sufficient guidance to produce a coating which simultaneously exhibits the recited: (a) delta E and (b) COF; the basis for the present rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present rejection is not a lack of enablement per se (i.e., the specification does enable one of ordinary skill in the art to make a coated substrate which simultaneously exhibits the recited (a) delta E and (b) COF). Instead, the basis for the present rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present rejection is the insufficient scope of enablement provided by the disclosure as originally filed (i.e., that the disclosure as originally filed does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with the present claims without undue experimentation.
(B) Applicant argues regarding Wands Factor (H), that “a person of ordinary skill in the art could easily follow the simple and detailed guidance in the specification to make the formulation with a reasonable amount of experimentation” and that “the specification and Examples 11-16 provide details of working conditions to make a fingerprint-resistant coating that includes an alkyl silane and a POSS, which simultaneously exhibit the recited properties, as described above, Therefore, a person of ordinary skill in the art could follow these details to make and use the fingerprint- resistant coating with only an alkyl silane, without a POSS, with a reasonable amount of experimentation, by simply following these procedures.” However, contrary to Applicant’s assertions, the disclosure as originally filed only discloses a single Example of a coating which simultaneously exhibits the recited (a) delta E and (b) COF -- i.e., using a formulation containing:
(1) 3.75 g/l of 11-chloroundecyl triethoxy silane (CAS# 120786315);
and
(2) 100 mg/l POSS functionalized with hydroxy groups;
wherein the combined amount of the two recited components (i.e., the recited halogenated C11 alkyl silane and the recited OH-POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole.
In particular, the specification fails to disclose (a) delta E or (b) COF values for a majority of the silane compounds listed in Tables 3-4. Additionally, the specification only discusses (a) delta E and (b) COF values and (c) initial oil angle and (d) initial water angle as independent features of Applicant’s invention, and therefore the only guidance provided in the specification with respect to obtaining a coated substrate which simultaneously exhibits the recited (a) delta E and (b) COF, and optionally (c) initial oil angle, and further optionally (d) initial water angle, is in a single working Example in the Specification.
(C) Applicant relies on the “Declaration of Bong June Zhang, Ph.D., under 37 C.F.R.§1.132 (hereinafter, "Zhang Declaration"), which provides an example of making a formulation for a fingerprint-resistant coating with only an alkyl silane, according to the specific guidance in the specification” to establish both: (i) enablement; and (b) scope of enablement over the full scope of the present claims. While the ZHANG Declaration filed 03/19/2025 provides evidence that POSS is not required to produce a coating which simultaneously exhibits the recited: (a) delta E and (b) COF; optionally (c) initial oil angle (claims 2, 10); and optionally (d) initial water angle (claims 2, 11); the evidence provided by the ZHANG Declaration with respect to enablement is not commensurate in scope with the present claims (in particular, the amount and specific type of silane used).
Viewed in the light most favorable to Applicant, the ZHANG Declaration at best indicates that a single coating formulation containing 5.6 g/l of 11-chloroundecyl triethoxy silane (CAS# 120786315) alone without POSS (wherein the amount of 11-chloroundecyl triethoxy silane constitutes the effective entirety of the final coating as a whole) produces a coating which simultaneously exhibits the recited: (a) delta E and (b) COF; (c) initial oil angle (claims 2, 10); and (d) initial water angle (claims 2, 11).
Therefore, while the ZHANG Declaration provides evidence of enablement (with respect to using a halogenated C11 alkyl silane of recited formula (RA)3SiRB alone), the ZHANG Declaration does not provide evidence of enablement over the full scope of the present claims.
The limited evidence provided by the single working example in the ZHANG Declaration:
(1) cannot be reasonably extrapolated or extended to the rather broad range of other halogenated C11 alkyl silanes which fully conform to the recited formula (RA)3SiRB in the present claims, but which are materially different from 11-chloroundecyl triethoxy silane (e.g., in the types and number and positions of halogen substituents in the RB group; in the types and number and positions of non-hydrogen substituent groups in the RA and RB groups; etc. which can materially affect the surface properties of coatings containing said silanes, which in turn can materially affect the (a) delta E and (b) COF of said coating -- see the detailed discussion in the above rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action);
and
(2) cannot be reasonably extrapolated or extended to the broad range of coating formulations encompassed by the present claims, but which are materially different from the single formulation utilized in paragraph 11 of the ZHANG Declaration (e.g., in the amount of silane; the presence of other components; etc., which can materially affect the surface properties of the resulting coatings, which in turn can materially affect the (a) delta E and (b) COF of said coating -- see the detailed discussion in the above rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action).
Therefore, the ZHANG Declaration cannot be considered to be reasonably predictive of the ability of:
(i) other halogenated C11 alkyl silanes which fully conform to the recited formula (RA)3SiRB, but which are materially different from the 11-chloroundecyl triethoxy silane use in the single working Example in the Specification or the single evidentiary Example in the ZHANG Declaration;
or
(ii) other coating compositions which conform to the requirements of the present claims (e.g., the mere presence of the recited halogenated C11 alkyl silane of formula (RA)3SiRB in any non-zero amount) but which are materially different from the coating formulations used in the single working Example in the Specification or the single evidentiary Example in the ZHANG Declaration;
to produce coatings which simultaneously exhibits the recited (a) delta E and (b) COF over the full scope of the present claims (for the reasons discussed in detail in the above rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action.
(D) Applicant argues that in view of the specification and the ZHANG Declaration, “the description and example sufficiently cover the entire scope of the claims. Accordingly, contrary to the Office's contentions, the specification discloses and provides an example of a formulation that produces fingerprint-resistant coatings "simultaneously exhibit[] the recited: (a) delta E of less than 0.7; in combination with (b)COF of less than 0.2”. Applicant further argues that “In summary, the disclosure of the Application-in combination with techniques well-known in the art-enables persons of ordinary skill in the art to make and use a fingerprint-resistant substrate made by a process comprising applying a formulation for a fingerprint-resistant coating onto a surface of a substrate, wherein the formulation comprises an alkyl silane, as recited in Applicants' claims, and without undue experimentation.”
However, contrary to Applicant’s assertions, Applicant has not provided sufficient objective evidence to adequately address the Examiner’s position that material differences in: (i) the halogenated C11 alkyl silane of formula (RA)3SiRB; (ii) the optional POSS; and (iii) the composition of the fingerprint-resistant coating as a whole; would be reasonably expected to materially affect -- sometime unpredictably -- one or more surface properties (e.g., hydrophobic or hydrophilic nature, oleophilic or oleophobic nature, surface tension, surface energy, and/or spreading characteristics for various compounds, etc.) of said coating, which in turn would be reasonably expected to materially affect:
• the anti-fingerprint properties (as represented by (a) delta E, (c) initial oil angle, and/or initial water angle, etc.) of a coating -- for example, see “Anti-fingerprint properties of engineering surfaces: a review” which discusses various factors and surface characteristics which affect fingerprint resistance;
and
• the frictional properties (as represented by (b) COF) of a coating -- for example, see “Polymer Surface Energy vs. Coefficient of Friction (COF), which mentions known relationships between surface polarity, surface energy, wettability, and COF.
As discussed above, the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action are not based on a lack of enablement per se, but rather are based on scope of enablement (i.e., a lack of enablement over the full scope of the present claims). In particular, the Specification does not provided one of ordinary skill in the art with: (1) adequate guidance or (2) adequate direction for experimentation; regarding what types of adjustments or modifications would be required to produce coatings which simultaneously exhibit the recited (a) delta E and (b) COF values when using: (i) halogenated C11 alkyl silanes of formula (RA)3SiRB; and/or (ii) POSS, if present; and/or (iii) coating compositions as a whole; which are meet the limitations of the present claims, but which are non-trivially different (e.g., in chemical structure, concentrations, additives, etc.) from the single working Example in the specification and the single evidentiary Example in the ZHANG Declaration (see the detailed discussion in the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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March 4, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787