DETAILED ACTION
Claims 1-3 and 5-21 are pending, of which claims 6-20 are withdrawn.
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/25/26 has been entered.
Response to Arguments
On page 9 of the response, Applicant argues that CN 104725640 (“Zhanchen”) fails to teach amended claim 1 because Zhanchen does not teach that the linker comprises a C5-C20 hydrocarbon linker, but rather only a C2 hydrocarbon linker. Examiner agrees, and as such the prior rejections over Zhanchen have been withdrawn.
On pages 10-11 of the response, Applicant argues that WO 2018/182307 (“Kim”) fails to teach the limitations of amended claim 1 because the compound of Kim has a heteroatom between the linker and the hydrophilic polar head. Examiner disagrees. Claim 1 does not define the hydrophilic polar head group. The nitrogen atom of Kim that is directly connected to the repeating ethylene glycol units is thus considered to be part of the hydrophilic polar head region. Further, as shown below, other embodiments of Kim do not include this second nitrogen atom, and claim is therefore anticipated by or obvious over Kim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018182307 (“Kim”, both a machine translation and the original document are provided for citations).
Regarding claim 1, Kim teaches a silane composition (see e.g. compound 5 in paragraph [0051] of the original document). The composition of Kim includes a hydrophilic polar head region (see repeating ethylene glycol units of compound 5), a hydrophobic linker (see e.g. paragraph [0148] stating that L1 and L2 can be an alkylene chain having 1-10 carbon atoms, which overlaps with the claimed range), an anchor region including a silicon atom (see silicon head region in compound 5) and a heteroatom, namely oxygen, between the anchor and the hydrophobic linker L1. The silane of Kim has the hydrophobic linker L1 directly bonded to the oxygen heteroatom (between L1 and L2) as well as the hydrophilic polar head group made up of repeating ethylene glycol units. with L1 between the oxygen atom and the repeating ethylene glycol units. Compound 5 of Kim appears to be substantially devoid of fluorine atoms or thiol groups. Although Kim does not specifically state that the material is contaminant sequestering, given that the material meets all of the limitations described as resulting in a contaminant sequestering material, the materials taught by Kim are assumed to be capable of sequestering contaminants in the same manner as the materials of the instant application.
Regarding claim 2, Kim teaches that, in compound 5 in paragraph [0051] of the original document, the three groups connected to the silicon atom can be alkoxy groups, which are hydrolysable (see e.g. paragraph [0147]). Kim teaches that L1 and L2, which correspond to R4 and R5 of the instant claims, are hydrocarbons of 1-10 carbon atoms, which is within the claimed range for R4 and overlaps significantly with the claimed range for R5 (see e.g. paragraph [0148]). Kim teaches that the heteroatom is oxygen (see compound 5 in paragraph [0051] of the original document), and that the polar head group is repeating ethylene glycol units (Id.).
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.
Claims 3 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kim.
Regarding claim 3, Kim teaches silanes having a general formula such as that given in chemical formula 1 in paragraph [0011] of the original document. Kim teaches that in these compounds, the groups attached to the silicon can be alkoxy groups having 1-10 carbons, which includes the entirety of the claimed ranges (see e.g. paragraph [0104]). Kim teaches that L, corresponding to R4 in the claims, is an alkylene having 1-10 carbon atoms, which includes the entirety of the claimed range (see e.g. paragraph [0105]). Kim teaches that L1, corresponding to R5 in the claims, is an alkylene having 1 to 10 carbons, which overlaps with the claimed range. Kim teaches that A, which corresponds to heteroatom Z in the claims, can be a nitrogen (see e.g. paragraph [0108]). Kim further teaches that Q can be an oxygen (see e.g. paragraph [0107]). When Q is an oxygen, the linker L1 is directly bound to between 1-20 repeating ethylene glycol units, which includes the entirety of the claimed range (see e.g. paragraph [0111]).
Kim does not provide a specific example of a compound that includes a nitrogen atom as the heteroatom Z and also a hydrophilic polar head region that is limited to only including ethylene glycol units. However, given the clear teachings in Kim as to which atoms or functional groups can be included, and given the limited number of possible groups listed by Kim, the compound of claim 3 is obvious over Kim.
Regarding claim 21, Kim teaches silanes having a general formula such as that given in chemical formula 1 in paragraph [0011] of the original document. Kim teaches that in these compounds, the groups attached to the silicon can be alkoxy groups having 1-10 carbons, which includes the entirety of the claimed ranges (see e.g. paragraph [0104]). Kim teaches that L, corresponding to R4 in the claims, is an alkylene having 1-10 carbon atoms, which includes the entirety of the claimed range (see e.g. paragraph [0105]). Kim teaches that L1, corresponding to R5 in the claims, is an alkylene having 1 to 10 carbons, which overlaps with the claimed range. Kim teaches that A, which corresponds to heteroatom Z in the claims, can be a nitrogen (see e.g. paragraph [0108]). Kim further teaches that Q can be an oxygen (see e.g. paragraph [0107]). When Q is an oxygen, the linker L1 is directly bound to between 1-20 repeating ethylene glycol units, which includes the entirety of the claimed range (see e.g. paragraph [0111]).
Kim does not provide a specific example of a compound that includes a nitrogen atom as the heteroatom Z and also a hydrophilic polar head region that is limited to only including ethylene glycol units. However, given the clear teachings in Kim as to which atoms or functional groups can be included, and given the limited number of possible groups listed by Kim, the compound of claim 21 is obvious over Kim.
Allowable Subject Matter
Claim 5 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to the subject matter of claim 5 is Kim. However, Kim teaches that the compounds are used as a film etching composition, rather than as any sort of coating (see e.g. paragraph [0001]). As Kim does not teach or fairly suggest that the compositions could have been used as a coating, it would not have been obvious to one of ordinary skill in the art to modify Kim to dispose the composition on a surface of a substrate, as recited in claim 5.
Conclusion
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736