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 .
Claim Rejections - 35 USC § 112
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 1-23, 26-27, and 32-33 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.
Applicant has amended claim 1 to stipulate that the variable “I” is less than 5 and, therefore, Z would be understood not to connote a polymer. The Examiner does not believe that this necessarily resolves the matter as it might still be construed as representing an oligourethane. If Applicant had intended to characterize Z as a “urethane (or urea or amide, etc.)-containing group”, than this distinction should have been made. Variable Z is also now indicated as being pendant from Y (except that “h” can be zero) whereas the aforementioned permutations of Z would be considered divalent moieties.
If “h” can be greater than zero, and “Y” is a siloxane conforming with formula (1d), than what would it mean for “Y” to be greater than 1. How would two siloxanes containing the groups M1, D1, D2, etc. be differentiated from one another if bonded to each other? It seems that the variable “h” should just be confined to “1”. (There is also the possibility that Y equals zero but this seems unlikely to be true of any intended embodiment of the surface modifying agent since formula 1 would be then be described as Z-R where one of “a” and a” would have to be zero.)
Applicant has, to this point, not satisfactorily addressed several previously-expressed concerns including:
All the valencies of Y are fully satisfied/occupied given the representations in formulae (1d) through (1j) thus it is not clear how any groups Z could be attached (or, for that matter, groups R) to Y.
The Examiner had previously held that there was no antecedent basis for a variable “l” but now observes that it is reported as a subscript next to T. However, to the extent that both “l” and “m” are defined as being numerical variables, are these supposed to be multiplicative? Why was there not simply one assigned subscript as has been attached to each of M1, D1, D2, Q, and M2?
There is no antecedent basis in claim 1 for formula 1 to be encompassing of a polysiloxane-polycarbonate block copolymer as depicted in claim 7. “Carbonate” is mentioned in association with R1, R1’, and R1” but there is no indication of a repeating structure. “Carbonate” is not the same as “polycarbonate”. The claims are riddled with imprecise definitions that create substantial doubt as to intended scope for these variables, Z, and R2-R12 since they are said to be connote the same structural attributes as are disclosed for R, R1, R1’, and R1”.
In claim 14, it cannot be ascertained whether Applicant is allowing that R₉ is either an ether group or the alkoxy group that immediately follows or if, instead, they are intimating that -O-(CH₂)₆/CH₃ is an ether group. If the latter, the Examiner contends that, in the context in which it is defined, - O- (CH₂)₆'CH₃ would be considered by the skilled artisan to be an alkoxy group. (Applicant doesn't have the benefit of being their own lexicographer here because alkoxy is mentioned separately of ether in association with R9.)
Insofar as claim 17 has been amended to recite a coated electrochemical substrate, as opposed to a composition, the intended meaning of this claim is now in doubt. What would it mean for a substrate to have 0.1 to 10 wt% of a surface modifying agent? For the purpose of evaluating claim 17 against the prior art, it has been presumed that the claimed range alludes to the weight contribution of the modifying agent relative to the weight of the coating composition.
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 18 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 18 mandates that if a is one, then both a" and b are zero and also that if a" is one, then both a and b are zero.
However, because two of these are zero, and in light of the manner in which a and a" were initially defined, there would be one valence on silicon that is unsatisfied. Applicant remedies this by adding a fourth group R"" but the totality of the description of claim 1 does not contemplate a group R"’. Accordingly, not only is claim 18 not further limiting of claim 1, but there is also no proper antecedent basis in claim 1 for the recitation of R’".
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 11, 12, 17,19-23, and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jung et al., U.S. Patent Application Publication No. 2016/0293920 for the reasons outlined previously.
Response to Arguments
It is Applicants’ contention the silsesquioxane polymer disclosed by Jung does not function as a “surface modifying agent” within the meaning of the claims. However, there is Applicants’ intent, and there is broadest reasonable interpretation, which of course is the standard applied when construing the actual scope of the claims. Under this standard, “surface modifying agent” doesn’t necessarily mean that groups contained within the organosilicon polymer are reacted with the substrate. Consider a painted wall. The wall, a substrate, is unquestionably modified but not all, or even any, of the coating components are necessarily chemically bonded to chemically complimentary groups present on the surface of the wall.
The Examiner is frankly puzzled by Applicants’ next argument. Whereas the Examiner concedes that the epoxy groups that make up a part of the corresponding siloxane polymer are alicyclic epoxy groups, there is nothing in any of the rejected claims stipulating that the epoxy groups must be other than an alicyclic epoxy group. (Applicant will note that claim 16 is not listed among the rejected claims.) The prior art siloxanes are within the description of formula (1d) and, therefore, the rejection is proper.
As for Applicant’s third argument, the Examiner would ask that Applicant point out where the language of any claim is differentiated from the teachings of the prior art.
Allowable Subject Matter
Claims 2-10, 13-16, 18, and 26 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Claim 27 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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July 13, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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