DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 filed on 03/11/2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1-3 and 9-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Mitsuhashi et al. (WO2018056410A1) (For applicant’s convenience, English equivalent US20190322893 has been used as citations).
Mitsuhashi et al. teaches a method of forming an article (e.g., windowpanes etc.) (para. [0139]-[0144]) comprising a substrate (para. [0149], claims 1-7) and a layer formed of a surface-treating agent comprising a polyether group-containing silane compound on a surface of the substrate, wherein the polyether group-containing silane compound represented by formula (1):
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Wherein R1 is a monovalent organic group represented by R3—(OR2)a-L-, wherein (OR2)a is a polyether chain; R3 is an alkyl group or a fluorinated alkyl group; and L is a single bond or a divalent linking group (para. [0025]-[0026], [0052]-[0058); L is preferably —C2H4—, —C3H6—, —CO—O—CH2—CH(OH)—CH2—, —(CF2)n—, wherein n is an integer of 0 to 4, -CH2-, -C4H8-, or —(CF2)n—(CH2)m—, wherein n and m are each independently an integer of 0 to 4 (para. [0033], [0081]-[0083]); the polyether chain being a chain represented by the following formula:
(OC6F12)m11—(OC5F10)m12—(OC4F8)m13—(OC3X106) m14—(OC2F4)m15—(OCF2) m16—, wherein m11, m12, m13, m14, m15, and m16 are each independently an integer of 0 or 1 or greater; X10 are each independently H, F, or Cl (para. [0029]-[0032], [0067]-[0079]); X1 is a monovalent Si-containing group containing a hydrolyzable group ; and X2 is a monovalent group, preferably monovalent Si-containing group( para. [0027], [0028], [0055]- [0058]), wherein preferred hydrolyzable group is-OR, an alkoxy group and X2 can be a same or different silicon alkoxy group as X1 (para. [0056]-[0058], Synthesis Example 2-3-noted such example L2 being -C3H6-). Mitsuhashi et al. further teaches Si-containing group is preferably at least one selected from the group consisting of -L2-SiR53, -L2-Si(OR6)3, -L2-Si(NR62)3, and -L2-Si(OCOR6)3 wherein L2 is a single bond or a divalent linking group; R5 is a halogen atom; and R6s are each independently a C1-C4 alkyl group. More preferred is -L2-Si(OR6)3, wherein L2 is a single bond or a divalent linking group; and R6s are each independently a C1-C4 alkyl group (para. [0085]). Mitsuhashi et al. also teaches specific examples of L2 include -C2H4-, -C3H6-, —CO—O—CH2—CH(OH)—CH2—, —CH2—, and —C4H8— (para. [0108]).
Mitsuhashi et al. further teaches the surface-treating agent comprising at least one perfluoro(poly)ether group-containing silane compound represented by any of the following formulae (1A), (2A), (1B), (2B), (1C), (2C), (1D), and (2D) (para. [0166]) [0226]), wherein specific functional group and parameter ranges are defined thereof (see para. [0167]-[0226]-noted all those chemical groups and associated numbers see details in cited sections)
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Regarding claim 1, it would have been obvious for one of ordinary skill in the art to “obvious to try” L being -CH2- in the monovalent organic group of R3—(OR2)a-L-(containing polyether chain) to practice the polyether group-containing silane compound represented by formula (1) because choosing -CH2- from a finite number of identified, predictable solutions of a single bond or a divalent linking groups in a monovalent organic group of R3—(OR2)a-L- for providing desired polyether group-containing silane compound for surface treatment would have a reasonable expectation of success (see MPEP §2143 KSR). It would have been obvious for one of ordinary skill in the art to adopt well-known -C2H4-, -C3H6-, —CH2— or —C4H8— as L2 because applying such known technique to a known a single bond or a divalent linking groups of L2 for providing a desired monovalent Si-containing group for improvement would yield predictable results (see MPEP §2143 KSR).
It would have been obvious for one of ordinary skill in the art to adopt both X1 and X2 being monovalent Si-containing group of -L2-Si(OR6)3, wherein L2 being -C2H4-, -C3H6-, —CH2— or —C4H8— ; and R6s are each independently a C1-C4 alkyl group as suggested by Mitsuhashi et al. because by doing so can help providing a surface treated substrate which can maintain excellent water-repellency for a long period of time as suggested by Mitsuhashi et al. (para. [0058], [0085], [0108]).
It would have been obvious for one of ordinary skill in the art “obvious to try” wet coating to apply the surface treatment compound onto a surface of the substrate because choosing wet coating from a finite number of identified, predictable solutions of either wet coating or drying coating for help obtaining surface treated substrate would have a reasonable expectation of success (see MPEP §2143 KSR).
As for the claimed weight ratio of compound (α) to compound represented by formula (A1), (A2), (B1), (B2), (C1), (C2), (D1), (D2) or (E1) is 30:70 to 99:1, Mitsuhashi et al. further teaches the surface treating composition comprising polyether group-containing silane compound represented by formula (1), 50-99% by mass (based on the total surface treating composition) of solvent, 1-5% of catalyst, 10 ppm to 20% by mass of additional component (para. [0160]-[0165]), which can be fluoropolyether compounds (para. [0166]- [0226]). Such teachings suggest that the content polyether group-containing silane compound represented by formula (1) being less than 25 % of the total surface treating composition, while the content fluoropolyether compounds- at least one of (1A) to (2D) (as discussed above) can be less than 20% by mass or 5% by mass (para. [0165], [0166]). Hence, Mitsuhashi et al. disclosed weight ratio of polyether group containing silane (formula 1) to fluoro(poly) ether containing silane overlapping with that of instantly claimed weight ratio range of compound (α) to compound represented by formula (A1), (A2), (B1), (B2), (C1), (C2), (D1), (D2) or (E1) being 30:70 to 99:1, thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
It would have been obvious for one of ordinary skill in the art to adopt a same weight ratio of polyether group containing silane to fluoro(poly) ether containing silane as that of instantly claimed via routine experimentation (see MPEP §2144. 05 II) for help providing a desired surface treating composition for application onto substrate as suggested by Mitsuhashi et al.
Regarding claim 2, Mitsuhashi et al. further teaches wet coating method include immersion coating, spin coating, flow coating, spray coating, roll coating, gravure coating, and other similar methods (para. [0150]).
Regarding claim 3, it would have been obvious for one of ordinary skill in the art “obvious to try” spray coating to apply the surface treatment compound onto a surface of the substrate because choosing spray coating from a finite number of identified, predictable solutions of wet coating methods for help obtaining surface treated substrate would have a reasonable expectation of success (see MPEP §2143 KSR).
Regarding claim 9, Mitsuhashi et al. also discloses additional compounds can be used together with compound as shown by formula (1), such as fluoropolyether silane having OCF2 unit (para. [0165]-[0167]).
Regarding claim 10-12, Mitsuhashi et al. also discloses the substrate being glass substrate (para. [0034]-[0035]), wherein such substrates can be used for windshields or window panes or exterior windows in automobiles, such as car, vans, buses, SUVS, trucks etc. (para. [0139]-[0146]).
Regarding claim 13, Mitsuhashi et al. already teaches such limitation as discussed above.
Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Mitsuhashi et al. (WO2018056410A1) (For applicant’s convenience, English equivalent US20190322893 has been used as citations) as applied above, and in view of Dams (US20050054804).
Regarding claim 4, Mitsuhashi et al. does not expressly teach treating the substrate with atmospheric plasma treatment before applying the surface treatment agent to the surface of the substrate.
Dams teaches substrate (e.g., glass or ceramic) can be treated with plasma containing oxygen before applying fluorinated polyether silane on the surface of the substrate (para.[0002], [0019], [0058]).
It would have been obvious for one of ordinary skill in the art to adopt plasma treatment as shown by Dams to pretreat the substrate before applying surface treatment material to modify the surface treating method of Mitsuhashi et al. because by doing so can help providing reactivity for following surface treatment as suggested by Dams.
As for the claimed atmospheric plasma treatment, Mitsuhashi et al. already teaches plasma treatment can be atmospheric plasma treatment (para. [0152]), it would have been obvious for one of ordinary skill in the art to adopt such well-known atmospheric plasma treatment to practice modifying the surface before coating it with surface treatment compound because adopting such well-known atmospheric plasma treatment for provide desires reactivity for following surface treatment would have reasonable expectation of success (see MPEP §2143 KSR).
Claim 5-7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Mitsuhashi et al. (WO2018056410A1) (For applicant’s convenience, English equivalent US20190322893 has been used as citations) in view of Dams (US20050054804) as applied above, and further in view of Toyama (WO2010125964A1) (For applicant’s convenience, Machine translation has been used for citations hereof).
Regarding claim 5, Mitsuhashi et al. in view of Dams does not teach the reactive gas and discharge gas flow ratio being 1:5 or 5:1.
Toyama teaches an atmospheric plasma treatment for forming water repellent film onto a substrate (page 3 lines 93-104), wherein oxygen can be used as decomposition gas (i.e., reactive gas) (page 3 lines 234-236) while discharge gas can be nitrogen, or argon (page 4 lines 251-255). Toyama also discloses the ratio of discharge gas to total mixture of reactive and discharge gas being 50% or more (page 4 lines 256-260), therefore, the ratio of discharge gas and reactive gas can be within or overlaps with that of instantly claimed ratio of discharge gas and reactive gas.
It would have been obvious for one of ordinary skill in the art to adopt such well-known discharge gas to reactive gas ratio as shown by Toyama to practice the atomic pressure plasma of Mitsuhashi et al. in view of Dams because by doing so can help provide desired surface treatment onto the substrate as suggested by Toyama. Furthermore, adopting such well-known discharge gas to reactive gas flow ratio to a known atomic pressure plasma treatment method onto substrate for improvement would yield predictable results (see MPEP §2143 KSR).
Regarding claim 6-7, such limitations are met as discussed above.
Claim 8 is rejected under 35 U.S.C. 103(a) as being unpatentable over Mitsuhashi et al. (WO2018056410A1) (For applicant’s convenience, English equivalent US20190322893 has been used as citations) in view of Dams (US20050054804) as applied above, and further in view of Tasaka (JP2017122888) (For applicant’s convenience, Machine translation has been used for citations hereof).
Regarding claim 8, Mitsuhashi et al. in view of Dams does not teach the atomic pressure plasma output being 700 to 800 W.
Tasaka teaches atmospheric pressure plasma treatment can be carried under output from 0.2 to 3KW (para. [0105], [0106]).
It would have been obvious for one of ordinary skill in the art to adopt such well-known atmospheric pressure plasma treatment output power range as shown by Tasaka to practice the atmospheric pressure plasma treatment of Mitsuhashi et al. in view of Dams because adopting such well-known plasma treatment outpower to a known atomic pressure plasma treatment method onto substrate for improvement would yield predictable results (see MPEP §2143 KSR).
Response to Arguments
Applicant's amendments filed on 03/11/2026 have been acknowledged and thus previous 112 rejections have been withdrawn.
Applicant's arguments filed on 03/11/2026 have been fully considered but they are not persuasive. In response to applicant’s arguments about instant example 1-4 , wherein example 1-2 using compound A as polyether group containing silane, example 3 using compound B and example 4 using compound C; showing improved results as compared to comparative example 1-3 which using compound (D), (E), (F) respectively, the applicant is kindly reminded that evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP § 716.02(d) - § 716.02(e)). In the instant case, applied closest prior art Mitsuhashi et al. already teaches a same or substantially the same polyether group containing silane represented by formula α1 as that of instantly claimed, i.e. Mitsuhashi et al. envisions of such adopted compound A-C as used in example 1-4. Therefore, such alleged improved results (based on comparative example 1-3) is not showing direct or indirect comparison as compared to applied closet prior art Mitsuhashi et al.at all. Secondly, even if assuming such alleged improved results being true, such limited compound A, B, C, cannot represent all the compound as represented by formula α1, it is not readily apparent that such specific compound A, B, C does not demonstrate all the compound represented by formula α1 showing improved results. Thus, such arguments are not found convincing.
In response to applicant’s arguments about that “office asserts the mass ratio of compound of formula (1) to fluoropolyether compounds at least one of (1A) to (2D) is 17:83”, this appears to be applicant’s own interpretation, rather the examiner’s explanation in the office action. Because the examiner clearly established (reproduced from the office action):
“Mitsuhashi et al. further teaches the surface treating composition comprising polyether group-containing silane compound represented by formula (1), 50-99% by mass (based on the total surface treating composition) of solvent, 1-5% of catalyst, 10 ppm to 20% by mass of additional component (para. [0160]-[0165]), which can be fluoropolyether compounds (para. [0166]- [0226]). Such teachings suggest that the content polyether group-containing silane compound represented by formula (1) being less than 25 % of the total surface treating composition, while the content fluoropolyether compounds- at least one of (1A) to (2D) (as discussed above) can be less than 20% by mass or 5% by mass (para. [0165], [0166]). In summary, Mitsuhashi et al. teaches 10 ppm to 20% by mass of additional component (para. [0160]-[0165]), which can be fluoropolyether compounds (para. [0166]- [0226]), and less than 25 % of polyether group-containing silane compound represented by formula (1). Therefore, Mitsuhashi disclosed weight ratio of polyether group containing silane (formula 1) to fluoro(poly) ether containing silane overlapping with that of instantly claimed weight ratio range of compound (α) to compound represented by formula (A1), (A2), (B1), (B2), (C1), (C2), (D1), (D2) or (E1) being 30:70 to 99:1, thus renders a prima facie case of obviousness (see MPEP §2144. 05 I). For example, fluoropolyether compounds content can be 20% by mass and the formula (1) compound can be 20%, their ratio being 1:1.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/JUN LI/ Primary Examiner, Art Unit 1732
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