DETAILED ACTION
Claim Objections
Claim 19 is objected to because of the following informalities: it recites both “(New)” and “(Currently Amended)” as claim indicators, which is inappropriate because it is only a new claim, and appears to be a repeat of claim 1, which is also inappropriate. Appropriate correction is required.
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 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.
Claims 1, 4, 5, 10, 18, and 19 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a tile that has been treated with glycidoxypropyltrimethoxysilane to create a hydrophobic surface, does not reasonably provide enablement for a tile that has a hydrophobic surface that was treated with any silane coupling agent.
As such, 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.
Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990), otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all components within the scope of the claims can be used as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Upon applying this test to claims 1 and 19, it is believed that undue experimentation would be required because:
(a) The breadth of the claims far exceeds that which has been disclosed because, although claims 1 and 19 recite a “silane coupling agent” that has a hydrophobic surface, only a single silane coupling agent, i.e. glycidoxypropyltrimethoxysilane is disclosed. As discussed further below, there are silane coupling agents, which qualify as “a silane coupling agent” according to claims 1 and 19, that do not create hydrophobic surfaces.
(b) There is no direction or guidance presented for how to make a product with demonstrating the recited hydrophobicity with any coupling agent other than glycidoxypropyltrimethoxysilane.
(c) There is an absence of working examples of any kind (i.e. not even with glycidoxypropyltrimethoxysilane as a coupling agent) demonstrating the recited properties.
(d) The level of predictability in the art is insufficient for making a product that meets the broad scope of the claims and also demonstrates the recited properties because the claimed invention (and its properties) depend on the chemistry of the materials it comprises. In the field of chemistry generally, the well-known unpredictability of chemical reactions may alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim. In applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic claims. See MPEP 2164.03.
(e) The quantity of experimentation necessary to make product meeting the broad scope of the claims is excessive because only a single coupling agent has been disclosed. As evidenced by Yan (Yan, H. et al. Applied Energy, 2017, vol. 185, p. 2209-2216, Abstract), who teaches a structure that has been treated with a silane coupling agent to form a super hydrophilic surface (Abstract), and Hoikkanen (Hoikkanen, H. et al. Progress in Organic Coatings, 2011, vol. 72, p. 716-723), who discloses a system that becomes more water-absorbent once it is treated with a silane coupling agent (p. 716, right col.), the type and properties of a surface that are formed by a silane coupling agent depend directly on the type of silane coupling agent that is used. Excessive experimentation would be necessary to determine which from the many different types of silane coupling agents would perform as needed to make products meeting the broad scope of the claims.
Therefore, excessive experimentation would be required to make products meeting the broad scope of the claims.
Claims 4, 5, 10, and 18 are also rejected under 35 U.S.C. 112(a) because they depend from but do not correct the scope of claim 1.
Claims 18 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
Claim 18 is indefinite because recites a tile that “consists of aluminum oxide and materials selected from the group of crystalline silica and magnesium oxide”, which is an improper Markush claim because it does not recite “the group consisting of..”. See MPEP 2117 (I). Additionally, as there are now only two “materials” in the group, it is not clear if “materials selected from the group of” requires both materials to be “selected” or if only one material can be selected. If both materials are required, it is not clear why the materials must be “selected from the group”. For the sake of compact prosecution, the claim is interpreted herein as requiring a tile that consists of aluminum oxide and one or more of crystalline silica and magnesium oxide. Appropriate correction and explanation are required.
The rejections of claims 1, 4-6, and 10 under 35 U.S.C. 112(b) are withdrawn in view of Applicant’s amendment, filed on November 10, 2025.
The rejection of claim 18 under 35 U.S.C. 112(d) is withdrawn in view of Applicant’s amendment, filed on November 10, 2025.
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, 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.
Claims 1, 4-6, 10, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kreckel (EP 1,044,797 A1), as evidenced by 3M1 (3M, "VHB™ Tapes", 2011, p. 1-10), and in view of CeraMaterials (CeraMaterials, "Safety Data Sheet Alumina Ceramic", 2017, p. 1-10) and 3M2 (3M, “Surface Preparation for 3M™ VHB™ Tape Applications”, 2017, p. 1-4), as evidenced by 3M3 (3M, “3M™ Silane Glass Treatment AP115 Safety Data Sheet”, 2014, p. 1-10), CAS (CAS Common Chemistry, “Glycidoxypropyltrimethoxysilane”, 2024, p. 1-4), and 3M4 (3M, "Solar Acrylic Foam Tape Glass Bonding and Silane Coupling Agents Used to Improve High Humidity Performance", 2011, p. 1-2).
Regarding claims 1, 4-6, 10, 18, and 19, Kreckel teaches a self-adhesive ceramic tile comprising a ceramic tile and a double-sided (double-coated) adhesive tape with a release layer on a surface of the tile that creates a strong bond between the surface and an adjoined substrate (par. 8, 38-40). Kreckel's tape preferably includes an acrylic foam carrier and an acrylic-based adhesive system, and Kreckel exemplifies using various 3M VHB™ tapes, including VHB Tapes #4941, 4951, and 4611, among others, for this purpose (par. 22-32, 37, 38). As evidenced by 3M1, these tapes include acrylic foam carriers, acrylic adhesives, and release liners, and create strong bonds that serve as replacements for rivets, spot welds, and other permanent fasteners (p. 1, 2).
The teachings of Kreckel differ from the current invention in that the composition of his ceramic tile is not disclosed. However, CeraMaterials teaches an alumina ceramic that includes 90 to 100 wt. % aluminum oxide, 0.1 to 1 wt. % crystalline silica, and 0.1 to 1 wt. % magnesium oxide (p. 2). The material is advantageous because it offers wear (i.e. abrasion), corrosion, and temperature resistance and is useful in a variety of applications, including for use as wear protection for machine and plant construction, in the chemical industry, in high-temperature applications, in the sanitary industry (p. 1). It would have been obvious to one of ordinary skill in the art to use CeraMaterial's alumina ceramic as the ceramic material of Kreckel's tile because it offers excellent wear (i.e. abrasion), corrosion, and temperature resistance and is applicable in a variety of industries.
As evidenced by Applicant's specification, which teaches that a ceramic tile comprising 85-100 wt. % alumina, 0.1 to 1 wt. % crystalline silica, and 0.1 to 1 wt. % magnesium oxide is inherently hydrophilic (Applicant's published application par. 44 and 48), the prior art tile, which is 90 to 100 wt. % alumina, 0.1 to 1 wt. % crystalline silica, and 0.1 to 1 wt. % magnesium oxide (discussed above) and has not been taught to have undergone any hydrophobizing treatments, is hydrophilic. As no particular level of abrasion resistance is claimed and as it is more resistant to abrasion than at least some other materials (e.g. a soft, easily-abraded material), the prior art ceramic qualifies as being "abrasion-resistant". As such, the prior art tile is an "abrasion resistant alumina ceramic tile".
The teachings of Kreckel differ from the current invention in that his tile is not taught to be coated with two coatings of dried silane coupling agent of the recited composition, wherein the surface of the coupling agent layer facing the tape is hydrophobic. However, as noted above, Kreckel teaches to use various 3M VHB tapes on his tiles to bond them to an underlying substrate. 3M2 further teaches that surfaces that are to be bonded to a VHB tape should be prepared to achieve optimum adhesion (p. 1, text). 3M2 also teaches that ceramic materials are hydrophilic, or “water-loving”, by nature, which causes the durability of a pressure-sensitive adhesive bond between the ceramic material and an applied tape susceptible to change under high humidity or exposure to moisture, which can undercut the tape bond and interfere with the normal adhesion forces (p. 1, 2, text). Therefore, as also evidenced by 3M2, Kreckel and CeraMaterial's tile, including its surfaces, is hydrophilic. To remedy this, 3M2 teaches treating (i.e. "coating") such surfaces with silane coupling agents, which are added to an isopropanol/water solution for cleaning the surfaces and which reduce the water-loving tendency of the surfaces (i.e. the surfaces are made hydrophobic) and enhance the tape bond (p. 2). After cleaning with the isopropanol/water solution, a treated surface is wiped dry (p. 1, "Step B"), which indicates that the silane coupling agent remaining on the surface is a dried silane coupling agent coating (p. 1).
For ceramic tiles, 3M2 teaches to use 3M™ Silane Glass Treatment AP 115 to prime the surface in preparation for successful bonding with a VHB tape (p. 3). 3M2 also teaches that an applied primer forms a layer and "creates a new surface" for tape adhesion (par. 2). Therefore, it would have been obvious to one of ordinary skill in the art to treat/coat the hydrophilic tape-adjoining surface of Kreckel and CeraMaterial’s ceramic tile with 3M™ Silane Glass Treatment AP 115, as taught by 3M2, thereby forming a "dried silane coupling agent coating" on the surface, to reduce the water-loving nature of the surface and to enhance the tape bond to the tile. It also would have been obvious to one of ordinary skill in the art use the hydrophobic coating to configure the surface (e.g. via application of the silane treatment) to be hydrophobic, or as hydrophobic as possible, because 3M2 teaches that the water-loving tendency of such surfaces should be reduced, and in order to lessen the surface’s susceptibility to humidity and moisture as much as possible, as would be understood by one of ordinary skill in the art to be achieved by making the surface hydrophobic (i.e. which is the opposite of being hydrophilic), thereby reducing the chances of the tape bond and normal adhesion forces failing and improving the durability of the bond.
As evidenced by 3M3 and CAS, 3M™ Silane Glass Treatment AP 115 includes 3-(Trimethoxysilyl)propyl glycidyl ether, which is another name for glycidoxypropyltrimethoxysilane (3M3, p. 2; CAS, p. 1-2). As noted above, it would have been obvious to configure the surface of Kreckel’s tile to be hydrophobic. Additionally, as evidenced by 3M4, which teaches that applying the silane coupling agent, 3-glycidoxypropyltrimethoxysilane, to an inorganic surface makes the surface hydrophobic (i.e. a hydrophobic silane coating is created on the inorganic surface) (p. 2), and Applicant's Specification, which teaches that applying 3-glycidoxypropyltrimethoxysilane to an alumina tile makes its surface hydrophobic (Applicant's published application, par. 49), the exterior surface of silane coupling agent coating on the ceramic tile facing the tape (i.e. and facing "away from said abrasion-resistant tile") in the product of Kreckel, CeraMaterials, and 3M2 is hydrophobic.
As no coating thickness, coverage rate, or silane concentration is claimed, it is not clear how a product including two, stacked silane coatings of the same composition that are of an unspecified thickness, coverage rate, concentration or microstructure (etc.) differ in overall structure from a single coating of the same composition that is also of an unspecified thickness, coverage rate, and concentration. As such, the claim to two, stacked silane coupling agent coatings does not distinguish the claimed invention over the prior art.
The claim limitation requiring that the recited tile is "non-decorative" is a statement of intended use. The prior art product meets the claim limitation because it is capable of being used in a non-decorative application. Additionally, as Kreckel makes no disclosure of the tile having decorative features such as a glaze, the tile is presumed to be free of such features and to qualify as being "non-decorative".
Claims 1, 4-6, 10, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kreckel, as evidenced by 3M1, and in view of CeraMaterials and 3M2, as evidenced by 3M3, CAS, and 3M4, and further in view of Hoikkanen (Hoikkanen, M. et al. Prog. Org. Coat., 2011, vol. 72, p. 716-723).
Regarding claims 1, 4-6, 10, 18, and 19, as discussed above, Kreckel et al. render obvious a non-decorative alumina self-adhesive tile including a dried silane coupling agent layer with a hydrophobic surface placed as claimed that meets or renders obvious limitations of claims 1, 4-6, 10, 18, and 19.
As the cited references do not explicitly discuss there being two silane coating layers, the product of Kreckel et al. might be considered to differ from the current invention in this manner. However, Hoikkanen teaches that the solution concentration of silane coupling agent compositions used to form coupling agent coatings can profoundly affect the silane bonding to an inorganic surface and that applied silane solutions are usually used in concentrations of 0.01 to 2 % (p. 716, right col). Hoikkanen further discloses that silane layers on large structures need to be thick to contribute to the mechanical properties of the film, and that thick silane layers usually consist of several chemisorbed and physisorbed layers (p. 716, right col.). In his own tests, Hoikkanen demonstrated that the bond strength of a silane layer increased to a point with increasing silane coating thickness (p. 722, right col.), thereby showing that more than one, stacked silane layer present in the coating was beneficial but that additional layers could present problems. Hoikkanen’s discussion also demonstrates that silane coating concentration and thickness, and number of silane compound layers are result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art to configure the dried silane coupling agent coating of Kreckel et al. to have a sufficient thickness and to select an appropriate thickness, e.g. by selecting an appropriate silane coupling agent compound concentration in the coating solution including a silane concentration in the range of 0.1 to 2 %, and, therefore, configuring the coating to have/selecting a sufficient/appropriate number of chemisorbed silane layers greater than one silane layer, to achieve improved/the best possible/the desired bonding between the tile and the adhesive tape including according to the requirements of a given application. Therefore, the product of Kreckel et al. and Hoikkanen comprises at least two layers (i.e. “coatings”) of dried silane coupling agent.
As noted above, given that there are no features or characteristics to distinguish two “coatings” of unspecified thickness or structure from a single thicker coating of the same composition, the dried, hydrophobic silane coating of Kreckel et al. and Hoikkanen, which comprises at least two, stacked layers of the silane coupling agent compound, meets the claim requirements because it has the structure that is implied by the claims. As discussed above and evidenced by Hoikkanen, silane coatings produced from solutions of a greater concentration have greater thicknesses and include a larger number of silane layers than those produced from solutions with lower silane concentrations. Therefore, as the prior art renders obvious a range of silane concentrations, i.e. 0.1 to 2 %, the prior art also renders obvious a range of overall dried silane coupling agent coating thicknesses and a range of number of silane compound layers, which encompasses and renders obvious the claimed number of silane coating layers. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered but they are not persuasive.
Applicant has argued that the amendment to claim 18 overcomes the rejection under 35 U.S.C. 112(b) that was made in the previous Office Action. However, as discussed above, the claim remains indefinite because it still recites an improper Markush group. See MPEP 2117 (I).
Applicant has further argued that the rejection of claim 1 under 35 U.S.C. 112(a) should be withdrawn because nothing in the law requires that all silane coupling agents create a hydrophobic surface and that the instant disclosure’s teaching of a single silane agent that is capable of creating a hydrophobic surface is sufficient. However, as discussed above, claim 1 requires a silane coupling agent that creates a hydrophobic surface. Case law holds that Applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990), otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention.
As discussed above, although a single silane agent that behaves as required is disclosed, claim 1 (and new claim 19) only recites “a silane coupling agent”, which covers a scope that includes any and all silane coupling agents. Therefore, the breadth of “a silane coupling agent” is far greater than what is disclosed. As discussed in the rejection, references such as Yan and Hoikkanen disclose silane coupling agents that produce hydrophilic surfaces, thereby demonstrating the type and properties of a surface that are formed by a silane coupling agent depend directly on the type of silane coupling agent that is used. As such, it cannot be assumed that the recitation “a silane coupling agent” and the disclosure of a single type of silane coupling agent would be sufficient to inform someone of how to make products meeting the broad scope of the claims. For these and the other reasons discussed in the rejection, it has been concluded that the instant disclosure is not commensurately enabling for making the product of claim 1 (or new claim 19), and excessive, undue experimentation would be required to make products meeting the broad scope of the claims.
Applicant has also argued that the prior art does not motivate providing two, dried silane coatings as claimed. However, although Hoikkanen is cited as providing motivation for increasing the concentration and thickness of a coating, the rejections in this and the previous Office Action do not assert that it would be obvious to perform two coating operations in applying a silane coupling agent to a tile.
Applicant has further argued that a tile including two dried coatings differs in structure from that of the prior art because Kreckel teaches to wipe away excess coating material, thereby teaching away from multiple layers. However, as discussed in the rejections, no defining features (e.g. coating layer thicknesses, concentration, microstructure, etc.) are claimed to distinguish two, stacked coating layers, which have the same composition, from a single coating layer of that same composition. Therefore, it is not clear how the two, stacked coatings of the claims differ in structure from a thin coating of Kreckel. Applicant’s argument that Kreckel teaches away from multiple, dried coating layers is moot because such a modification is not proposed in the rejections.
Applicant has also argued that a tile with two, dried silane coatings differs from a tile with a single coating because the silane material on the doubly-coated tile is able to withstand compressive and shear forces that would cause a single silane coating to fail. However, as just discussed, without further description of what specific structure constitutes a “dried coating” in the context of the claims, it is not clear how two, stacked dried coatings of the same composition differ in structure from a single coating of that same composition. Although Applicant’s argument about a doubly-applied coating being stronger is appreciated, it is not commensurate with the products that have achieved the beneficial results because those products were made with a specific type of silane material having a specific concentration and applied at a specific thickness. Furthermore, as discussed above and in the previous Office Action, it would have been obvious in view of Hoikkanen’s teachings to configure the dried silane coupling agent coating of Kreckel et al. to have a sufficient thickness and to select an appropriate thickness, e.g. by selecting an appropriate silane coupling agent compound concentration in the coating solution including a silane concentration in the range of 0.1 to 2 %, and, therefore, configuring the coating to have a sufficient/appropriate number of chemisorbed silane layers greater than one silane layer, to achieve improved bonding according to the requirements of a given application. Therefore, the product of Kreckel et al. and Hoikkanen comprises at least two, stacked layers (i.e. “coatings”) of dried silane coupling agent and has the limited structure implied by the claim.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784