Prosecution Insights
Last updated: August 18, 2026
Application No. 16/422,329

INVISIBLE FINGERPRINT COATINGS AND PROCESS FOR FORMING SAME

Non-Final OA §112
Filed
May 24, 2019
Priority
May 24, 2018 — provisional 62/676,052
Examiner
CHEN, VIVIAN
Art Unit
1787
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Henkel AG & Co. KGaA
OA Round
7 (Non-Final)
57%
Grant Probability
Moderate
7-8
OA Rounds
0m
Est. Remaining
86%
With Interview

Examiner Intelligence

Grants 57% of resolved cases
57%
Career Allowance Rate
564 granted / 992 resolved
-8.1% vs TC avg
Strong +29% interview lift
Without
With
+29.4%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
48 currently pending
Career history
1052
Total Applications
across all art units

Statute-Specific Performance

§101
0.5%
-39.5% vs TC avg
§103
57.7%
+17.7% vs TC avg
§102
3.1%
-36.9% vs TC avg
§112
31.8%
-8.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 992 resolved cases

Office Action

§112
DETAILED ACTION Claim(s) 1-2, 5-7, 9-11, 22, 24-34 is/are pending. Claim(s) 1-2, 5-7, 9-11, 22, 24-34 is/are rejected. Claim(s) 3-4, 8, 12-21, 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. Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission previously filed on 05/19/2026 has been entered on 06/09/2026. 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. Claim(s). 1-2, 5-7, 9-11, 22, 24-34 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] PNG media_image1.png 18 19 media_image1.png Greyscale 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: PNG media_image1.png 18 19 media_image1.png Greyscale PNG media_image1.png 18 19 media_image1.png Greyscale (A) The breadth of the claims; (B) The nature of the invention; PNG media_image1.png 18 19 media_image1.png Greyscale (C) The state of the prior art; PNG media_image1.png 18 19 media_image1.png Greyscale (D) The level of one of ordinary skill; PNG media_image1.png 18 19 media_image1.png Greyscale (E) The level of predictability in the art; PNG media_image1.png 18 19 media_image1.png Greyscale (F) The amount of direction provided by the inventor; PNG media_image1.png 18 19 media_image1.png Greyscale (G) The existence of working examples; and PNG media_image1.png 18 19 media_image1.png Greyscale (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. PNG media_image1.png 18 19 media_image1.png Greyscale 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 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; • etc. With respect to Wand factor (B), the specification provide evidence that the inventive fingerprint-resistant coatings containing specific recited 11-chloroundecyl-based 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 recited 11-chloroundecyl-based 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: ---------------------------------------------- • the composition of 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 11-chloroundecyl-based 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 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 amount of the recited 11-chloroundecyl-based alkyl silane constitutes the effective entirety of the formulation for the fingerprint-resistant coatings as a whole. However, the majority of 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 11-chloroundecyl-based alkyl silane; optionally the recited POSS of claim 6) are present in any non-zero amount(s). With respect to claims 29, 34, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising” as discussed above. (see MPEP 2111.03 (III) - Transitional Phrases) While the present claims specify: (i) the amount of the recited 11-chloroundecyl-based alkyl silane present in the composition of the fingerprint-resistant coating of claim 1 as a whole; and (ii) the amounts of the recited 11-chloroundecyl-based alkyl silane and the recited POSS in the composition of the fingerprint-resistant coating of claim 6 as a whole; the recitation of the amount(s) of just one (or two) component(s) in a composition does not limit the composition of the fingerprint-resistant coating as a whole -- i.e., the present claims permit any amount(s) of any type(s) of other components as long as the recited 11-chloroundecyl-based alkyl silane is present in the composition of the fingerprint-resistant coating of claims 1, 6 (and as long as the recited POSS is present in the composition of the fingerprint-resistant coating of claim 6) in the specified amount(s). The Examiner has reason to believe that: • a minimum relative amount (based on the fingerprint-resistant composition as a whole) of the recited 11-chloroundecyl-based alkyl silane (when the recited POSS is not used); or • minimum relative amounts (based on the fingerprint-resistant composition as a whole) of the recited 11-chloroundecyl-based alkyl silane and the recited POSS, and a minimum combined relative amount (based on the fingerprint-resistant composition as a whole) 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 relative amount of alkyl silane (and optionally the relative amount of POSS) 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 11-chloroundecyl-based 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). 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: (i) 1 g/L of the recited 11-chloroundecyl-based alkyl silane; (ii) 5 g/L of a polymer (e.g., a polyester resin, an acrylic resin, an urethane resin; etc.); • formulations containing: (i) 3 g/L of the recited 11-chloroundecyl-based alkyl silane; (ii) 3 g/L of a non-11-chloroundecyl-based alkyl silane fingerprint resistant agent (e.g., fluoropolymers; non-halogenated polysiloxanes; etc.); • formulations containing: (i) 5 g/L of the recited 11-chloroundecyl-based alkyl silane; (ii) 7 g/L of additive(s) (e.g., non-POSS inorganic particles; pigments; etc.); • formulations containing: (i) 4 g/L of the recited 11-chloroundecyl-based alkyl silane; (ii) 3 g/L of an additional polymer binder (e.g., a polyester resin, an acrylic resin, an urethane resin; etc.); • formulations containing: (i) 1 g/L of the recited 11-chloroundecyl-based alkyl silane; (ii) 0.5 g/L of the recited POSS; (iii) 2 g/L of an additional polymer binder (e.g., a polyester resin, an acrylic resin, an urethane resin; etc.); (iv) 2 g/L of additive(s) of additives (e.g., non-POSS inorganic particles; pigments; etc.); • formulations wherein the total amount of the recited 11-chloroundecyl-based 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., the recited 11-chloroundecyl-based alkyl silane, and optionally the recited POSS) in the formulation constitute the effective entirety of the formulation for the fingerprint-resistant coatings as a whole. ---------------------------------------------- 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., the recited 11-chloroundecyl-based alkyl silane, and optionally the recited 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. Claim(s) 27-28, 32-33 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 27, 32 are vague and indefinite because it is unclear what component of the fingerprint-resistant substrate contains the solvent, Claims 28, 33 are dependent on one or more of the above claims and therefore incorporate the above-described indefinite subject matter. Response to Arguments Applicant's arguments previously filed on 05/19/2026 (entered 06/09/2026) have been fully considered but they are not persuasive. (A) Applicant argues that the Claim Amendments filed on 05/19/2026 (entered 06/09/2026) fully address the outstanding rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (scope of enablement). However, while the Claim Amendments filed on 05/19/2026 (entered 06/09/2026) address a substantial portion of the issues related to the rejections related to insufficient scope of enablement in the disclosure as originally filed, several significant issues still remain outstanding -- in particular, the composition of the claimed “formulation for a fingerprint-resistant coating” as a whole. As discussed in detail above 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, the majority of the present claims use the open term “comprising” with respect to the formulation as a whole, 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 11-chloroundecyl-based alkyl silane; optionally the recited POSS of claim 6) are present in any non-zero amount(s). With respect to claims 29, 34, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. (see MPEP 2111.03 (III) - Transitional Phrases) However, the inventive Examples in the specification and the ZHANG Declaration filed 03/19/2025 all utilize formulations in which: (i) one or more non-reactive volatile solvents; (2) the recited 11-chloroundecyl-based alkyl silane; and (3) when present, the recited POSS; constitute the effective entirety of the formulation for the fingerprint-resistant coating. Therefore, the disclosure as originally filed does not provide 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 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 -- in particular, formulations that contain non-trivial amounts of other components which can materially affect 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 coating resulting from the dried formulation. (B) Applicant argues that “The concern expressed in the Office Action about "comprising" language is misplaced” because “The claims by their own terms contain built-in functional guardrails -- delta E less than 0.7 and COF less than 0.2 -- that exclude formulations that do not satisfy these performance parameters. The claims are therefore self-limiting by design. This functional claim construction answers the enablement concern expressed in the Office Action. Formulations that do not satisfy these performance parameters need not be enabled because such formulations are not within the scope of the claims.” However, regarding “scope of enablement” rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, the issue is not whether one of ordinary skill in the art can, for a given formulation for a fingerprint-resistant coating, can determine if the resulting fingerprint-resistant substrate falls inside or outside the present claims. Instead, the relevant issue is whether the specification provide adequate guidance or direction for experimentation that would enable one of ordinary skill to produce a fingerprint-resistant substrate that simultaneously exhibit the recited above physical properties (a)-(b), optionally in combination with above additional properties (c) or (d), using formulations which fall within the scope of the present claims, but which deviate materially from the very limited range of formulations used in the inventive Examples in the specification and the ZHANG Declaration filed 03/19/2025, particularly in view of: (1) the relative broadness of the present claims with respect to the composition of the recited formulation for a fingerprint-resistant coating as a whole; and (2) the very limited number of inventive Examples exhibit the combination of recited properties (a)-(b), optionally in combination with above additional properties (c) or (d); and (3) the absence of adequate guidance or teachings in the Specification which would provide one of ordinary skill in the art with reasonable directions for experimentation or modification when attempting to produce fingerprint-resistant coatings which simultaneously exhibit the required multiple physical properties, but which deviate materially from the formulations (and resulting fingerprint-resistant coatings) of the inventive Examples. The need to satisfy multiple instances of “functional claim construction” and/or multiple “performance parameters” in fact aggravates the issues related to scope of enablement, because the more specific and limiting a claim is (particularly regarding physical properties), the more guidance is needed to enable one of ordinary skill in the art to provide a formulation capable of simultaneously satisfying the recited “functional claim construction” and multiple “performance parameters”, particularly when the prior art admittedly does not disclose or teach the specific combination of multiple “performance parameters”. As discussed in detail 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) recited 11-chloroundecyl-based 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). Therefore, contrary to Applicant’s assertions, Applicant has not provided persuasive arguments that the disclosure as originally filed provides adequate enablement over the entire scope of the present claims (particularly with respect to the range of formulations as a whole for the fingerprint-resistant coating encompassed by the present claims). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. The General Information telephone number for Technology Center 1700 is (571) 272-1700. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form. June 27, 2026 /Vivian Chen/ Primary Examiner, Art Unit 1787
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Prosecution Timeline

Show 14 earlier events
Mar 19, 2025
Response after Non-Final Action
Mar 19, 2025
Response after Non-Final Action
Oct 30, 2025
Response Filed
Mar 09, 2026
Final Rejection mailed — §112
May 19, 2026
Response after Non-Final Action
Jun 09, 2026
Request for Continued Examination
Jun 10, 2026
Response after Non-Final Action
Jul 01, 2026
Non-Final Rejection mailed — §112 (current)

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Prosecution Projections

7-8
Expected OA Rounds
57%
Grant Probability
86%
With Interview (+29.4%)
3y 5m (~0m remaining)
Median Time to Grant
High
PTA Risk
Based on 992 resolved cases by this examiner. Grant probability derived from career allowance rate.

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