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 .
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Applicant has disclosed that the claimed coating material is made of a silane coupling agent, see page 6 of the instant specification. Silane coupling agents are known in the art as compounds that bind together organic and inorganic materials that otherwise would not adhere well to each other because silicon has the unique ability to exhibit both organic and inorganic reactivity (see Pape, Adhesion Promoters: Silane Coupling Agents, page 503, 29.2.2, first paragraph). The process in which the silane coupling agent is used by Applicant is described in the specification, see pages 6 and 7, where Applicant discloses a -Si(OR)x group before reaction, where R is a hydrocarbon group, which is an organic group, and a functional group “to be connected to” Si which may be an epoxy group, an amino group, a vinyl group, a styryl group, a methacryl group, an acrylic group, a mercapto group, isocyanate, isocyanurate, or an acid anhydride, all of which are also organic groups. Applicant further describes that when heat or light is given to the silane coupling agent a reaction occurs in which the silane coupling agent is converted to -Si-O-M covalent bonds (where M is a metal), a silicon oxide, and siloxane. Notwithstanding the ambiguity of “to be connected to Si” (i.e. whether this means the Si is connected to the functional group before the reaction or as a result of the reaction or whether the Si is the Si of the Si(OR)x group or another, unspecified reactant or product), this reaction described is quite different than the process known in the art in which a silane coupling agent is used. Specifically, there is no indication in the art that a silicon oxide is a product of the silane coupling agent reaction.
Pape, see pages 503-504, describes the known chemical process where the silane coupling agent is used to attach organic and inorganic materials together, which has the chemical reaction reproduced below:
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Here, two of the three products disclosed by Applicant are shown, namely the siloxane (Equation 1) and the -Si-O-M substances (Equation 2). However, there is no description whatsoever in the art where a silicon oxide is a product of this silane coupling agent reaction. The only mention of silicon oxide in the context of a silane coupling agent is when it is used as a filler in polymeric material, where the silane coupling agent improves the dispersion of the filler in the liquid polymer material (see Pape, page 505, 29.3.1 The Interphase Region, first paragraph, and page 509, 29.6 General Applications of Silane Coupling Agents). However, Applicant has not disclosed or suggested a filler or this process as the source of the silicon oxide reactant.
Further Gelest “How Does a Silane Coupling Agent Work”, reproduced below, does not show any indication whatsoever of a silicon oxide product:
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It is possible that Applicant has intended to refer to a silanol group, not a silicon oxide, as it is possible to have silanol groups in condensed or free form after the chemical reaction is completed as disclosed by Gelest: “[a]t the interface, there is usually only one bond from each silicon of the organosilane to the substrate surface. The two remaining silanol groups are present either in condensed or free form” (emphasis added). However, a person having ordinary skill in the art would not consider the free form or condensed silanol to be a silicon oxide, and an amendment to the claims to require a silanol group rather than silicon oxide would introduce new matter to the claims.
Notwithstanding, Applicant discloses silicon oxide as a product of the silane coupling agent reaction and claims the silicon oxide as a constituent of the coating material, yet gives no description in the specification in such a way to enable a person having ordinary skill in the art to make or use the claimed invention.
In re Wands, the court set forth the following factors to consider when determining whether undue experimentation is needed as related to enablement: (1) the breadth of the claims; (2) the nature of the invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the level of predictability in the art; (6) the amount of direction provided by the inventor; (7) the existence of working examples; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Wands, 858 F.2d at 737, 8 USPQ2d 1404. The undue experimentation determination is not a single factual determination; rather, it is a conclusion reached by weighing all the factual considerations.
As to Wands factor (1) the breadth of the claim is large, as the claim covers any material with substances having oxygen with covalent bonds with each of silicon and any metal on the periodic table, any silicon oxide, and any siloxane.
As to Wands factor (4) the level of one of ordinary skill in the art is high.
As to Wands factor (5) the level of predictability in the art is high, as chemical reactions are highly predictable.
As to Wands factor (6) the amount of direction provided by the inventor is low, as the specification describes numerous possible chemical reactions by which the claimed coating material is supposedly formed.
As to Wands factor (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure is quite great. Applicant discloses the group -Si(OR)x group before reaction, where x should denote any of 1 to 3. Regarding the hydrocarbon group R disclosed by Applicant, where the number of carbons in the hydrocarbon group R should range from 1 to 10, one having ordinary skill in the art would recognize that the number of existing, different hydrocarbon groups R with a number of carbon atoms ranging from 1 to 10 is extremely large, so large one that potentially one having ordinary skill in the art could not possibly list them all. The different hydrocarbons can be dependent on at least the type of carbon-carbon bonds in each pair of carbons in the hydrocarbon (single, double, or triple), the number of hydrogen atoms present in the hydrocarbon, where the hydrogens are bonded to the carbons, and the shape of the hydrocarbon (such as a ring or a chain structure). All of these different hydrocarbons can have different chemical properties and thus would differ in their influence on the chemical reaction forming the coating material. Similarly, regarding “a functional group” as described in the specification, Applicant presents ten examples of organic functional groups, to be connected to Si, all of which one having ordinary skill in the art would recognize have different structures, compositions, and chemical properties, thus would also differ in their influence on the chemical reaction forming the coating material. Further, the metal (M) of Si-O-M can be any metal, each also having distinct chemical properties and thus influence on the chemical reaction. Finally, it is unclear from the language “to be connected to Si” whether the Si is connected to the functional group before the reaction or as a result of the reaction or whether the Si is the Si of the Si(OR)x group or another, unspecified reactant or product. Thus, the sheer magnitude of chemical reactions is astronomical.
In light of the above factors, undue experimentation would be required by any person skilled in the art to practice the full scope of the claim.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the coating material being comprised of siloxane, does not reasonably provide enablement for the substances with covalent bonds between oxygen and each of silicon and a metal. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Applicant claims that the coating material comprises, among other compounds, substances with covalent bonds between oxygen and each of silicon and a metal (Si-O-M, M denoting the metal), which covers every single metal on the periodic table. Applicant discloses that the metal covalently bonded to oxygen (of the claimed Si-O-M substances) may be a metal included in the coating material before reaction (which Applicant has not disclosed or suggested or indicated that any metal is a constituent of the coating material before reaction), or at least one of a metal contained in the pieces of wire 17, the bonding components 13, and the conductive circuits 33, see page 9. Applicant has not specified any metal as a part of the coating material before reaction, and Applicant has only disclosed metallic materials of solder, copper, or aluminum to be used for the wire 17, bonding components 13, and conductive circuits 33 (see pages 4 and 6). Thus, Applicant only has support for the metal (M) in Si-O-M being copper, aluminum, or a solder metal, yet the claim covers any metal on the periodic table. For example, Applicant has not disclosed that uranium may be the metal (M) in Si-O-M, but claim 1 covers the metal being uranium. Thus, the specification, while enabling for siloxane (as described above, it is a known product of the silane coupling agent reaction), does not reasonably provide enablement for every single metal that could possibly be the metal (M) in the claimed substances with covalent bonds between oxygen and each of silicon and a metal.
In re Wands, the court set forth the following factors to consider when determining whether undue experimentation is needed as related to enablement: (1) the breadth of the claims; (2) the nature of the invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the level of predictability in the art; (6) the amount of direction provided by the inventor; (7) the existence of working examples; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Wands, 858 F.2d at 737, 8 USPQ2d 1404. The undue experimentation determination is not a single factual determination; rather, it is a conclusion reached by weighing all the factual considerations.
As to Wands factor (1) the breadth of the claim is large, as the claim covers substances having oxygen with covalent bonds with each of silicon and any metal on the periodic table.
As to Wands factor (4) the level of one of ordinary skill in the art is high.
As to Wands factor (5) the level of predictability in the art is high, as chemical reactions are highly predictable.
As to Wands factor (6) the amount of direction provided by the inventor is low, as the specification does not give support for every metal on the periodic table to be the metal (M) of the Si-O-M substances, while the claim would give protection for every metal on the periodic table.
As to Wands factor (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure is quite great. Applicant discloses the group -Si(OR)x group before reaction, where x should denote any of 1 to 3. Regarding the hydrocarbon group R disclosed by Applicant, where the number of carbons in the hydrocarbon group R should range from 1 to 10, one having ordinary skill in the art would recognize that the number of existing, different hydrocarbon groups R with a number of carbon atoms ranging from 1 to 10 is extremely large, so large one that potentially one having ordinary skill in the art could not possibly list them all. The different hydrocarbons can be dependent on at least the type of carbon-carbon bonds in each pair of carbons in the hydrocarbon (single, double, or triple), the number of hydrogen atoms present in the hydrocarbon, where the hydrogens are bonded to the carbons, and the shape of the hydrocarbon (such as a ring or a chain structure). All of these different hydrocarbons can have different chemical properties and thus would differ in their influence on the chemical reaction forming the coating material. Similarly, regarding “a functional group” as described in the specification, Applicant presents ten examples of organic functional groups, to be connected to Si, all of which one having ordinary skill in the art would recognize have different structures, compositions, and chemical properties, thus would also differ in their influence on the chemical reaction forming the coating material. Further, the metal (M) of Si-O-M can be any metal, each also having distinct chemical properties and thus influence on the chemical reaction. Finally, it is unclear from the language “to be connected to Si” whether the Si is connected to the functional group before the reaction or as a result of the reaction or whether the Si is the Si of the Si(OR)x group or another, unspecified reactant or product. Thus, the sheer magnitude of chemical reactions is astronomical.
In light of the above factors, undue experimentation would be required by any person skilled in the art to practice the full scope of the claim.
As such, the claim has not been rejected over the prior art because, in light of the 35 U.S.C. 112(a) rejections supra, there are numerous issues with the claims; hence, it would not be proper to reject the claims on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Claims depending from the rejected claim noted above are rejected at least on the same basis as the claim from which the dependent claims depend.
Response to Arguments
The rejections for claims 1 and 3-8 have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Genevieve G Bullard-Connor whose telephone number is (571)270-0609. The examiner can normally be reached Mon-Fri, 9am-5pm.
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/Genevieve G Bullard-Connor/Examiner, Art Unit 2899
/DALE E PAGE/Supervisory Patent Examiner, Art Unit 2899