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 Objections
As a means of clarifying the intent of original claims 36 and 37, of which the former is now cancelled, Applicant has inserted language into claim 33 that makes clear that the stated concentration of the organosilane is relative to a liter of all of the organosilane, first solvent, and water. In so doing, though, they characterize the first solvent as being a reactant but the solvent does nor participate in the reaction. It is, therefore, recommended that Applicant remove “reactants comprising” from line 3 of claim 33 and simply say instead that the concentration is relative to 1 liter of all of the organosilane, first solvent, and water. (The base is assumed to make an inconsequential contribution to the total volume.)
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.
Claim 51 is 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.
Claim 51 breaks up the types of substituents bonded to silicon into three classes of which one is a so-called special purpose group R” and another is a non-reactive group R”’. According to paragraph [0021] of the associated pre-grant publication, both R” and R”’ are non-reactive and each are supposed to confer upon the POSS different characteristics. However, while there are examples of the different effects exerted by each, it is not necessarily clear to which of these a given chemical moiety would belong since the imparted effects listed in that passage are not comprehensive. Moreover, it is submitted that some of said groups may actually be regarded as falling into both categories. For instance, there are certainly groups that could be said to confer a low surface energy and also hydrophobicity such as fluoroalkyl substituents.
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 33-35, 38-43, 48-49, and 51 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abe et al., U.S. Patent Application Publication No. 2010/0280161 for the reasons outlined previously and in view of the following additional considerations.
Ostensibly predicated on the Examiner’s earlier determination that claim 36 contained allowable subject matter, they amended claim 33 to contain similar subject matter, but with the caveat that the range of permissible organosilane concentrations actually has a lower limit, at 0.5 mol/L, half that recited in original claim 36. It is possible to calculate from Example 1 of Abe the volume contributions of each of the reactants if the density is known. For instance, 1M sodium hydroxide has a density of about 1.04 g/ml so 19.74 grams of this component would contribute:
19.74 g/1.04 g.ml-1 = 18.98 ml or .019 L
The same procedure is employed to calculate the number of ml of the other reactants and these are summed with the 500 ml of THF to total 588 ml. The total number of moles of glycidoxypropyltrimethoxysilane (0.105) and isobutyltrimethoxysilane is (.245), or 0.35 total mol but, on the other hand, this is the number of moles in 588 ml. To ascertain how many moles of the silanes would be present in a corresponding volume of 1 L, a ratio is set up.
x/1000 ml = 0.35/588 ml, x = (0.35)(1000)/588 = 0.595 mol
which is within the claimed range.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 33-35, 37-43, 48-49, and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Haug, DE 102006018417 A1 for the reasons outlined previously and in view of the following additional considerations.
As before, it is possible to calculate the concentration of organosilane reactants in a POSS-forming composition mathematically using the same approach set forth supra. The Examiner thus calculated the molar concentration of the PTMO and GLYMO combined to be 0.73 mol/L, which is also within the claimed range.
As for claim 37, the Examiner has reconsidered the patentability of this claim taking into account that fact that (i) 0.73 mol/L is not substantially lower than the 1 mol/L lower limit mandated by that claim and (ii) there is no evidence in the current record to suggest that a concentration of at least 1 mol/L in any way represents a critical parameter beneath which the results of the reaction are significantly altered. The courts have previously held that a non-overlapping prior art range, or in this case a data point, may still render obvious a claimed range in one of ordinary skill has a reasonable expectation of achieving comparable results. “[A] prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Hence, claim 37 is also considered to be unobvious though the Examiner would consider an amended lower limit that places more “distance” between the calculated concentration of the prior art example and the claimed range of acceptable values.
Allowable Subject Matter
Claims 44 and 45 are 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. To reiterate, in neither of the references was there any suggestion of a neutralization approach that would allow the salt by-product to be isolated by other than extraction/water washing.
This action is not made final in light of new rejections against claims 37 and 51.
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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October 20, 2025
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765