DETAILED ACTION
Status of the Claims
Claim 2, 3, 6-8, 10, and 14-17 are cancelled. Claims 20-21 are new. Claims 1, 4-5, 9, 11-13, and 18-21 are pending in this application and are under examination.
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 .
Priority
The instant application, which is a national stage entry of PCT/EP2019/079788 filed on 10/31/2018, which claims priority from the foreign application # DE10 2018 127 180.8 filed on 10/31/2018.
Objections/Rejections Withdrawn
The objection over claim 18 is withdrawn.
The rejections under USC 112(b) over claims 5 and 15 is withdrawn per applicant’s corrections to claim 5 to provide clarity to the claim and cancellation of claim 15.
The rejection under USC 112(b) over claims 6 and 8 is withdrawn per applicant’s deletion of these claims.
The rejection under USC 112(b) over claims 16 and 17 is withdrawn per applicant’s cancellation of these claims.
The rejection under USC 112(b) over claims 3, 7, 9 and 17 is withdrawn per applicant’s cancellation of claims and amendment to claim 9.
The rejection under USC 112(d) over claims 2 and 9 is withdrawn per cancellation of claim 2 and amendment to claim 9.
The rejection under USC 112(d) over claim 3 is withdrawn per cancellation of claim 3.
The rejection under USC 103 over Rollat and Willard is withdrawn per applicant’s amendments to claim 1.
The rejection under USC 103 over Samain and Willard is withdrawn per applicant’s amendments to claim 1.
The rejection under USC 103 over Rollat, Samain and Willard is withdrawn per applicant’s amendments to claim 1.
The rejection under USC 103 over Samain and Epstein is withdrawn per applicant’s amendments to claim 1.
As these rejections are withdrawn, applicant’s arguments toward these rejections are moot. New objections and rejections were made accordingly to applicant’s new amendments and new claims.
New Claim Objections – As Necessitated by Amendment
Claim 1 is objected to for the recitation of “the inorganic silicon compound of formula (I)” in line 13 of the claim as clearly the applicant is referring to “the organic silicon compound of formula (I)” especially based on the group of compounds provided. The applicant mistakenly used the word “inorganic” and needs to use “organic” in this phrase to agree with the formula and the listed compounds.
Claim 1 is also objected to for the recitation of “the silicon compound of formula (II)” on page 4, line 17 of the claim set as this clearly means to say “the organic silicon compound of formula (II)” which is how it is worded on page 3 of the claim set and the compounds presented are organic silicon compounds. Applicant mistakenly left out the word “organic”. Applicant needs to recite “the organic silicon compound of formula (II)” to be in agreement with the claim.
Claims 1 and 20 are objected to for use of “chosen from:…. and combinations thereof” when the structure for these groups of options should either be “chosen from…. or combinations thereof” or alternatively “is selected from the group consisting of….and combinations thereof”.
Claim 20 is objected to for missing an “or” between “methyltrimethoxysilane” and “methyltriethoxysilane” in the claim.
Appropriate corrections are required.
New Rejections – As Necessitated by Amendments/New Claims
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-5, 9, 11-13, and 18-21 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.
Claim 1 is indefinite because now that a subset group of compounds from former claim 3 (to the organic silicon compound (of no specific formula)) has been incorporated into claim 1 with adding that the group represents a limitation to compounds of formula (I), not all of these compounds agree with formula I. Both R1 and R2 in the compound have to be hydrogen in formula (I), and thus, the formula would not allow “dimethylamino” as in the last 4 listed compounds. Applicant may consider deleting the formula and its definitions and starting the group as “wherein a first organic silicon compound is….”. In doing such an amendment, applicant may have to amend dependent claims.
Claims 4-5, 9, 11-13, and 18-20 are rejected as being dependent on an indefinite claim.
Claim 1 is indefinite because now that a subset group of compounds from former claim 7 (to the organic silicon compound (of no specific formula)) has been incorporated into claim 1 with adding the group represents a limitation to compounds of formula (II). The group includes compounds that would not fit into formula (II) as formula (II) requires two silicon atoms and the now listed compounds, which are said to be of formula (II), only have one silicon atom. Applicant may consider deleting the formula and its definitions and starting the group as “wherein a second organic silicon compound is….”. In doing such an amendment, applicant may have to amend dependent claims.
Claims 4-5, 9, 11-13, and 18-21 are rejected as being dependent on an indefinite claim.
Claim 20 is indefinite as the compound of formula (I) provides compounds that were listed under formula (II) in claim 1 and the compound of formula (II) provides compounds that were listed under formula (I) in claim 1. It is unclear how applicant means to claim these formula after their introduction in claim 1. For the purpose of compact prosecution, the examiner will consider the claim for the compound options that it presents.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 20 provides compounds for formula (I) that are not in the group for formula (I) found in claim 1 and provides compounds for formula (II) that are not in the group for formula (II) found in claim 1. Thus, the claims extend the compounds that are meant to be included in these groups. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 21 provides for aminopropyltriethoxysilane as a compound of formula I while claim 1, on which it depends, provides for (3-Aminopropyl)trimethoxysilane as a compound of formula 1, but no recitation of aminopropyltriethoxysilane which would be the more generic, broad recitation. Thus, this recitation for formula (I) in claim 21 allows the claim to be broadened in this aspect and fails to further limit claim 1. Thus, the claims extend the compounds that are meant to be included in these groups. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Maintained Rejections – Modified As Necessitated by Amendments
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-5, 12, 18, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-14 and 17 of U.S. Patent No. 11654095 B2 (Hereinafter ‘095) in view of Henri Samain et al (WO2017102856A1, publication date: 06/22/2017, previously cited) (Hereinafter Samain).
Claims 1, 4-5, 12, 18, and 20-21 are obviated by claims 1-9, 12-14 and 17 of ‘095.
The claims of ‘095 teach all of the instantly claimed limitations with the exception of the instantly claimed concentration ranges. Samain teaches the instantly claimed concentrations ranges as discussed above.
It would have been obvious to one of ordinary skill in the art at the time of instant application to have combined the claims of ‘095 and the teachings of Samain and achieve the instant invention. Absent evidence of the contrary, the instantly claimed concentration ranges are obvious in view of Samain. Thus, one would be able to achieve the instant invention with a reasonable expectation of success.
Claims 1, 4-5, 9, 11-13, and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-14 and 17 of U.S. Patent No. 11654095 B2 (Hereinafter ‘095) in view of Samain et al (WO2017102856A1) in further view of Epstein US 2,733,212.
Claims 1, 4-5, 9, 11-13, 18, and 20-21 are obviated by claims 1-9, 12-14 and 17 of ‘095.
The claims of ‘095 teach all of the instantly claimed limitations with the exception of the instantly claimed concentration ranges. Samain and Epstein teaches the instantly claimed concentrations ranges as discussed above. See teachings from previous action.
It would have been obvious to one of ordinary skill in the art at the time of instant application to have combined the claims of ‘095 and the teachings of Samain and Epstein and achieve the instant invention. Absent evidence of the contrary, the instantly claimed concentration ranges are obvious in view of Samain and Epstein. Thus, one would be able to achieve the instant invention with a reasonable expectation of success.
Claims 1, 4-5, 9, 11-13, 18, and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, and 12 of copending 18/263,262 in view of Henri Samain et al (WO2017102856A1, publication date: 06/22/2017, previously cited) (Hereinafter Samain). ‘262 is later filed, but is made for now as ‘262 has the potential of becoming a patent.
Claims 1, 4-5, 9, 11-13, 18, and 20-21 are obviated by claims 1-9, 12-14 and 17 of ‘262.
The claims of ‘262 teach all of the instantly claimed limitations with the exception of the instantly claimed concentration ranges. Samain teaches the instantly claimed concentrations ranges as discussed above.
It would have been obvious to one of ordinary skill in the art at the time of instant application to have combined the claims of ‘262 and the teachings of Samain and achieve the instant invention. Absent evidence of the contrary, the instantly claimed concentration ranges are obvious in view of Samain. Thus, one would be able to achieve the instant invention with a reasonable expectation of success.
This is a provisional double patenting rejection as the claims of the copending application have not yet issued as a Patent.
Claims 1, 4-5, 9, 11-13, 18-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, and 12 of copending 18/263,262 in view of Henri Samain et al (WO2017102856A1, publication date: 06/22/2017, previously cited) (Hereinafter Samain) and in further view of Epstein US 2,733,212.
Claims 1, 4-5, 9, 11-13, 18, and 20-21 are obviated by claims 1-9, 12-14 and 17 of ‘262.
The claims of ‘262 teach all of the instantly claimed limitations with the exception of the instantly claimed concentration ranges. Samain and Epstein teach the instantly claimed concentrations ranges as discussed above. See teachings from previous action.
It would have been obvious to one of ordinary skill in the art at the time of instant application to have combined the claims of ‘262 and the teachings of Samain and Epstein and achieve the instant invention. Absent evidence of the contrary, the instantly claimed concentration ranges are obvious in view of Samain and Epstein. Thus, one would be able to achieve the instant invention with a reasonable expectation of success.
This is a provisional double patenting rejection as the claims of the copending application have not yet issued as a Patent.
Response to Applicant’s Arguments over the Rejections under Non-Statutory Double Patenting
Applicant argues that applicant’s amendments also overcome the rejections over non-statutory double patenting. Applicant mentions 17/611128, which was not cited in the action as it had been abandoned on 11/4/2025. The copending application cited was 18/263,262. In regards to US Patent 11654095, ‘095 provides claims with an agent/composition having organic silicon compounds (‘095 claims 4 and 8) that were imported into applicant’s claim 1 as well as sulfated castor oil (claims 12, 13 and 14 of ‘095). Importantly claim 1 of ‘095 has at least one organic silicon compound (which would include the organic silicon compounds in its claims) and at least one sulfated and/or sulfonated fatty acid ester (which would include the sulfated castor oil). Applicant has not filed terminal disclaimers and claims have not yet been indicated as allowable.
Advisory Notice to Applicant
If applicant corrects the issues indicated in the objections and the rejections under USC 112 and files terminal disclaimers and/or argues non-statutory double patenting rejections as appropriate, then applicant may have allowable claims barring any other issues that might be brought up during applicant amendment. Applicant may provide corrective amendments, arguments and any needed terminal disclaimers in an after final response.
Conclusion
No claims are allowed.
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 MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
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