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 .
Claims 1-17 are pending.
Claims 1-6, 16, 17 are under examination on the merits.
Claims 1, 2 are amended.
No claims are canceled.
Claim 17 is newly added.
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.
Claims 2, 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 2 recites “the composition is formed as a film having a thickness of 500 µm” however the specification describes a film of this thickness only when the composition has changed. Paragraph 75 of the submitted specification that states that drying the applied composition to create the film removes the solvent in the composition. Claim 1 describes an amount of solvent in the composition. In the specification, measurements of thickness refer to the “finally formed…film” in paragraph 73. Prior to drying the subject matter is referred to as a composition, see paragraph 91 “composition…applied and dried…to form each…film”. Since the makeup of the composition is described as changing in its transition to “a film”, the thickness of the film described in the specification cannot be applied to the claimed composition, this amounts to new matter.
Also, the moisture permeability is only measured in the specification once the film is prepared, i.e. the solvent amount has changed, therefore the recited moisture permeability is also unsupported by the specification.
Claim 16 depends on claim 2 and is rejected for the same reason.
Claim Interpretation
Regarding claim 1, the claim is to “A composition…comprising:” several ingredients finishing with “a binder as the remainder”. It is noted for clarity that the “comprising” phrase governs and that other ingredients may be present besides those listed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection in the previous action of claims 1, 3, 4, 6 under 35 U.S.C. 103 as being unpatentable over WO 2013057116 represented herein by US 20140302105 by Lorant is repeated and amended below to reflect applicant’s amendment. The rejection also now relies upon evidentiary reference “Uses of anti-foaming agents in paints and surface coatings” by Schulte et al.
Lorant describes a composition comprising silica aerogel particles.
Regarding claim 1, Lorant describes a composition comprising:
- silica aerogel particles in an amount of preferably 0.1-10 wt% (paragraph 45)
-a solvent, aqueous phase which may be 20-90 wt% in total (paragraph 150); see also analysis below.
-a surfactant in an amount of preferably 0.1 to 5 wt% (paragraph 62)
-a fatty phase in an amount of 10-50 wt% (paragraph 63) which comprise an oil (paragraph 65, 119), specifically PDMS oil (paragraph 138)
Notably the instant composition is “comprising” the ingredients claimed, leaving room for other ingredients.
The instant phrase “for a moisture permeation preventing film for an electronic device” is a future intended use. Since the composition recited by Lorant is capable of eventually becoming a film which prevents moisture from permeating, e.g. by evaporating the solvent, Lorant’s composition reads on this aspect of the claim.
Regarding the solvent, Lorant states that the water “can represent all or a portion of the aqueous phase and it is generally at least 30% by weight relative to the total weight of the composition”. Lorant goes on to describe other solvents present in the aqueous phase like ethanol or isopropanol (paragraph 151), which the instant specification describes as ideal, i.e. meeting “capable of dissolving and forming homogeneous composition with a silicone oil binder” (paragraph 151); these thus can be present from 0-60 wt% of the composition.
Regarding the requirement for “an antifoaming agent”, Lorant’s described PDMS and silicone oil (paragraph 65, 119, 138) or mineral oil (paragraph 127) acts as an antifoaming agent in water-based compositions. See “Uses of anti-foaming agents in paints and surface coatings” by Schulte et al p. 103 item 4.3.4 and p.102 section 4.3.1. A portion of Lorant’s silicone oil can read on the instantly claimed amount of antifoaming agent and the instant final claim phrase allows for the remainder to be silicone oil.
A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934). Since Lorant describes, for example, a silicone oil, and silicone oil acts as an antifoaming agent, Lorant’s silicone oil can read on “antifoaming agent” even if Lorant does not describe this capacity.
Since Lorant describes values overlapping with the claimed ranges, it would be obvious to one of ordinary skill to arrive at values in the ranges given Lorant’s disclosure. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Regarding claim 3, Lorant describes PDMS -polydimethylsiloxane- oil (paragraph 138).
Regarding claim 4, Lorant describes the aqueous phase as containing ethanol or isopropanol (paragraph 151).
Regarding claim 6, Lorant describes silicone oil (paragraph 65, 119, 138).
The rejection in the previous action of claims 1, 3, 4 and 6 under 35 U.S.C. 103 as being unpatentable over US 20130337026 by Cassin et al is repeated and amended herein to reflect applicant’s amendment.
Cassin describes a silica aerogel composition.
Regarding claim 1, Cassin describes:
-silica aerogel particles in an amount of 0.05-15 wt%, preferably 0.1-10 wt% (paragraph 48)
-a solvent in an amount of 1-15 wt% (paragraph 98); or 40-98 wt% including water (paragraph 95)
-a specific “first linear silicone oil”, wherein silicone oil is a known antifoaming agent (paragraph 55) in an amount of less than 20 wt%, preferably 1-5 wt% of the total of all silicone oils, wherein the amount of silicone oil is 90% of silicone oils + silica aerogel particles (paragraph 75) and the silicone oils + silica aerogel makes up to 90% of the composition. (For example: 5 wt% in Cassin’s terms*.9*.7 = 3.15% of total composition)
-emulsifiers, which read on surfactants, in an amount of 0.01-20 wt% (paragraph 99)
and the other silicone oil (paragraph 74)
Notably the instant composition is “comprising” the ingredients claimed, leaving room for other ingredients.
The instant phrase “for a moisture permeation preventing film for an electronic device” is a future intended use. Since the composition recited by Cassin is capable of eventually becoming a film which prevents moisture from permeating, e.g. by evaporating the solvent, Cassin’s composition reads on this aspect of the claim.
Regarding the identity of Cassin’s first silicone oil as reading on an antifoaming agent, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934). Since Cassin describes PDMS oil (paragraph 63) and PDMS oil is a known antifoaming agent, it reads on the instant “antifoaming agent” even if Cassin does not use this term in description.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed ranges because Cassin describes values overlapping with the claimed range.
Regarding claim 3, Cassin describes polydimethylsiloxane (paragraph 64-65).
Regarding claim 4, Cassin describes ethanol and isopropanol (paragraph 96).
Regarding claim 6, Cassin describes a polymethylsiloxane, specifically polydimethylsiloxane (paragraph 63).
Allowable Subject Matter
Claims 5 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 5 and 17 describe a surfactant that neither Cassin nor Lorant, the closest art, describe.
Claims 2, 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 2 and 16 are unsupported by the specification. Claim 2 describes a film which contains 10-50 wt% of a solvent and also has a thickness of 500 microns and a specific moisture permeability. Cassin or Lorant, the closest art, do not describe such a film.
Response to Arguments
Applicant’s argument p.5 final paragraph-p.6 paragraph 1 of Remarks submitted 3/27/26 has been considered but is not persuasive. Applicant states that “the present claims do not define an unconstrained or indeterminate formulation” however the claim uses the construction “comprising” not “consisting of”, where “comprising” by definition is open to unlisted components. Should applicant wish to claim a closed composition, they are capable of amendment to “consisting of”. If applicants continue to contend that claim construction of “comprising” with “…a remainder of binder” is closed, they open themselves to 112(b) rejection for unclear meaning within the claim- if the claim were closed, the “comprising” would be “consisting of”.
Applicant’s argument p.6 paragraph 2-4 has been considered but is not persuasive. Applicant describes some of the claimed material- this is met by the applied art, as detailed above. Any advantages applicant recognizes which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s argument p.6 paragraph 5 has been considered but is not persuasive. Applicant describes the silicone binder of claim 1- but Lorant and Cassin also describe a silicone oil presence, as detailed above in rejection. Applicant states that the instant “silicone oil binder is structurally and functionally distinct from silicone based antifoaming agents” but gives no description of the structural and functional difference. The section “Silicone-based defoamers” in “Uses of anti-foaming agents in paints and surface coatings” by Schulte et al states that silicone oils are particularly effective antifoaming agents because of their low surface tension, thermal stability, chemical inertness and total water insolubility (p.103 penultimate paragraph)- on their own. Thus applicant’s contention that silicone oil binder is structurally and functionally distinct from silicone based antifoaming agents does not apply to silicone oil itself. Silicone oil itself may be a binder, as instantly described, and also, as described by Schulte, an antifoaming agent.
Applicant’s attempts to tie the components of the composition to a future intended use (“film formation”, “moisture-barrier performance”) are not of import to the composition because the claims- at least those not under 112(a) rejection- are to a composition, not a film. The applied prior art describes the solvents, etc which are claimed.
Applicant’s argument p.6 paragraph 6 has been considered but is not persuasive. Applicant states that neither applied reference uses silicone oil as a binder. This is not found convincing because the silicone recited in the applied references could absolutely act as a binder. Even in the instant case, the silicone acts as a binder when the solvent is evaporated off- i.e. when the composition as claimed has changed and is no longer the same composition. The term “binder” is met by the applied art by describing a silicone oil, as detailed above in rejection.
Applicant’s argument p.6 paragraph 7 has been considered but is not persuasive. Applicant states that comparative examples show that binders affect film properties. Again, applicant’s attempts to tie the components of the composition to a future intended use are not of functional import because the claims- at least those not under 112(a) rejection- are to a composition, not a film. The instant comparative film results are not relevant to the claimed composition because the claimed composition is different from the film prepared from the claimed composition.
Applicant’s argument p.6 penultimate paragraph has been considered but is not persuasive. Applicant states that the inventor declaration demonstrates unexpected reduction in moisture permeability- of the film- compared with films from starting compositions outside the claimed range of silica aerogel. Again, applicant’s attempts to tie the components of the composition to a future intended use are not of functional import because the claims- at least those not under 112(a) rejection- are to a composition, not a film. The instant “unexpected results” for the film do not read on the composition, at least because the composition changes upon film creation.
Applicant’s argument p.6 final paragraph-p.7 paragraph 2 has been considered but is not persuasive. First, as stated above, applicant is incorrectly attributing unexpected results to the claimed composition, which is different from a film. Second, applicant has not closed the language of claim 1 to “consisting of”, leaving room for many ingredients which could alter the e.g. moisture permeability of a film, should a film be claimed.
Applicant’s argument p.7 paragraph 3 is not convincing as applicant does not have support in the specification for this claim. The film is formed and the moisture permeability measured only after the composition itself has changed in the specification. Claiming these properties of the composition is unsupported.
Applicant’s argument p.7 paragraph 4 has been considered but is not persuasive. Applicant cites case law which states “consisting of” language is not required “so long as the claims as a whole define the class of compositions for which the evidence is probative” to prove unexpected results. This is not found convincing because in the instant case, a composition “comprising” several ingredients without barring others- e.g. “without any other ingredients which affect moisture permeability” (should support exist for such a statement)- is necessarily open to those others.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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