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 .
This This communication responds to the amended claim set filed 12/01/2025. Claims 1-12 are current pending.
The 35 USC 103 rejections dated 08/01/2025 are MAINTAINED.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a
previous Office Action.
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/01/2025 has been entered.
Claim Rejections - 35 USC§ 103
Claims 1-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Satoh et al.
(US7,125,926 B2).
The rejection dated 08/01/2025 at paragraph 7 is maintained.
Regarding the newly added limitation “a molar ratio of the metal compound to the fluorine-containing silane compound is from 0.1 to 5,”
Satoh teaches:
The amount of the perfluoro group-containing fluorocompound (B) may be from 0.1 to 300 parts by weight, based on 100 parts by weight of the hydrolyzable metal alkoxide (A) (11:14-17).
Following Applicant’s calculation on Examples 1, 2, 4, 5 of Satoh, Satoh teaches a range of the mol ratio of the metal compound to the fluorine-containing silane compound is from 0.98 to 2932.69 ((100/208)/(300/610) to (100/208)/(0.1/610)), overlapping the claimed 0.1 to 5. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Satoh (See MPEP 2144.05 I).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Satoh as applied to claim 1
above, and further in view of Yamane et al. (US2016/0040039 Al).
The rejection dated 08/01/2025 at paragraph 8 is maintained.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Applicant’s argument: Satoh does not teach or fairly suggested the claimed molar ratio.
Examiner’s response: as the calculation above, Satoh teaches a range overlapping that of the instant claim. The teaching of prior art is not limited to the preferred embodiments.
Applicant’s argument: the surface-treating agent of Satoh does not form a chemical resistance layer.
Examiner’s response: the argument is not persuasive for two reasons.
Reason 1: chemical resistance is not claimed. Patentability is determined by claims (MPEP 2103 I).
Reason 2: Although Satoh does not explicitly teach the surface-treating agent form a chemical resistance layer, Satoh teaches the surface-treating agent comprising the claimed components in the claimed mol ratio, thus, Satoh teaches a substantially identical surface-treating agent, as such the chemical resistance is expected. “Products of identical chemical composition cannot have mutually exclusive properties.” 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 II). In this case, the fluorine-containing silane compound has chemical resistance and the metal compound containing hydrolysable groups, as such the metal compound can be efficiently contained in the surface-treating agent, consequently, improving chemical resistance of the surface-treating agent.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency the burden of proof is now shifted to Applicant to show otherwise (See MPEP 2112 V).
For the reasons set forth above, Applicant’s arguments are not persuasive.
Conclusion
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763