DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 18-20 and 22-34 are pending as amended on 11/4/2025.
Claims 23-34 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
The new rejection set forth below was necessitated by Applicant’s amendment adding a new limitation (sulfide content) to independent claim 18. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. 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 Rejections - 35 USC § 103
Claim(s) 18-20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otsu et al (JP 2015113381A; included machine translation cited herein).
As to claims 18-20, Otsu discloses an epoxy resin coating material composition comprising, as essential components, a silane coupling agent and a glycol ether solvent (abstract, p 1). The silane coupling agent is used for improving adhesion to a metal tube, and Otsu names several examples thereof, including bis(triethoxysilylpropyl)tetrasulfide (p 4), which is the same compound as the presently elected species, 3,3’-tetrathiobis(propyltriethoxysilane). The compound, which has the following structure:
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, is encompassed by instant formula (a), and by formula (b), recited in claim 19. The molecular weight of the compound (539 g/mol) falls within the range recited in claim 20.
Otsu teaches that the content of silane coupling agent in the composition is 1.0% by weight or more and 4.5% by weight or less (p 4), which falls within the presently claimed range of 0.01 to 5.0 mass%. (When the content is too low, the effect of improving adhesion cannot be obtained, and when the content is too high, it is expensive as a raw material and gelation occurs; p 4).
Otsu teaches propylene glycol monomethyl ether (PGMME) as the preferred solvent from a viewpoint of dryability and workability (p 4), which meets the presently claimed solvent.
Arriving at a composition according to instant claims 18-20 from Otsu’s disclosure requires selecting PGMME (which is disclosed as preferred) from Otsu’s list of suitable solvents, and, requires selecting bis(triethoxysilylpropyl)tetrasulfide from Otsu’s list of suitable silane coupling agents. The person having ordinary skill in the art would have been motivated to prepare Otsu’s composition utilizing PGMME as the solvent in order to achieve advantages (dryability/workability) taught to be associated therewith. Additionally, the person having ordinary skill in the art would have been motivated to select any appropriate silane coupling agent from the list of suitable options disclosed by Otsu in order to provide a composition having improved adhesion to metal. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed an epoxy resin coating material composition comprising 1-4.5 wt% silane coupling agent and PGMME as the solvent, as taught by Otsu, by utilizing any silane named by Otsu, including bis(triethoxysilylpropyl)tetrasulfide, thereby arriving at the presently claimed subject matter.
Otsu fails to specifically teach that the composition is capable of being applied to promote adhesion between metal and polysiloxane layers, as recited in the preamble of instant claim 18. However, if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Furthermore, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble).
Considering that claim 18 is not limited to any particular type of metal layer or any particular type of polysiloxane layer, and further considering that the claim does not limit the degree to which adhesion is promoted or the manner in which adhesion promotion is assessed, there is reasonable basis to conclude that the composition suggested by Otsu is capable of being applied to promote adhesion to some degree between some type of metal and some type of polysiloxane.
As to claim 22, Otsu discloses that additives can be added, and names sodium dodecylbenzenesulfonate as an example of an additive (which corresponds to a surfactant as presently recited). See p 6.
Response to Arguments
Applicant's arguments filed 11/4/2025 have been fully considered.
Applicant argues (p 8) that the features recited in claim 18 are not disclosed or suggested in the cited prior art. The examiner agrees that the previous rejections have been overcome by amendment. However, a new rejection set forth above establishes that Otsu suggests a composition as presently recited.
Applicant further argues (p 8) that instant examples 101 to 106 contain evidence of unexpected effect which is clearly tied to the scope of the claims. However, Applicant’s argument is not sufficient to overcome the rejection of record for at least the reason that Applicant has not explained how the instant examples demonstrate a comparison of the claimed subject matter with the closest prior art, nor has Applicant explained why the results in the instant examples differ from results which would have been expected. Additionally, Applicant’s results are not commensurate in scope with the claimed invention for at least the reason that the present claims are not limited to the sulfide compounds and solvents utilized in the instant examples, the present claims are not limited to laminates of an adhesion promoter composition between layers of gold and polysiloxane, as in the instant examples, and the present claims are not limited to compositions which exclude a substantial content of unrecited components (e.g., epoxy resin). Evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Therefore, if Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species encompassed by the present claims.
Conclusion
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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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