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 .
DETAILED ACTION
Claims 1, 3-4, 6, 15-21 of T. Felder, US 17/910,883 (09/12/2022) are pending. Claims 19-20 are withdrawn as not read on the elected species. Claims 1, 3-4, 6, 15-18 and 21 are under examination on the merits and are rejected.
Withdrawal of Office Action Finality
A request for continued examination of US 17/910,883 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/24/2026 has been entered.
Election/Restrictions
Applicant previously elected Group (I) (claims 1-9 and 15), with traverse, in the Reply filed on 07/21/2025. Claims 10-14 drawn to non-elected Groups (II) and (III) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Applicant canceled claims 2, 5, 7-14 and added news claims 16-21 in the reply filed on 12/08/2025, which results now claims 1, 3-4, 6, 15-21 drawn to the elected Group. The Restriction Requirement is maintained as Final.
Pursuant to the election of species requirement, Applicant elected, without traverse, the compound with the following formula in working Example 7 in the Reply filed on 07/21/2025 for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
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No claim in the elected Group (I) read on the elected species. Examiner conducted a phone interview with Applicant on 07/30/2025, Applicant elected a new species which is the chemical formula in the second line of the paragraph [0211] at page 67 of the specification for prosecution on the merits.
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Now claims 1,3,4,6 and 15-18, 21 read on the elected species. The elected species was searched and determined to be free of the arts record. The search/examination was extended other species recited in the 102 rejections below. MPEP § 803.02 (III)(C)(2). The provisional Species Election Requirement is in Effect. Claims 19-20 are provisionally withdrawn from consideration pursuant to 37 CFR 1.142(b) as not read on the elected species. See, MPEP § 803.02.
Withdrawal Claims Rejections -35 U.S.C. 112(a) – Written Description
Rejection of Claim 4 under 35 U.S.C. 112(a) as failing to comply with the written description requirement is withdrawn because one ordinary skill in the art would know the LogP value of a H-L-F based on the information disclosed in the specification.
Withdrawal Claims Rejections- 35 U.S.C. 112(b) – Unclear Claim Term
Rejection of claims 1, 3-4,6 and 15 under 35 U.S.C. 112(b) as indefinite for the claim terms “non-hydrolyzable residues” and “hydrolyzable residues” are not clear is withdrawn in view of the instant claim 1 is amended with specific groups.
Withdrawal Claim Rejections - 35 USC § 103
Rejection of claims 1,3-4, 6 and 15-18 and 21 under 35 U.S.C. 103 as being unpatentable over G. Hoffmüller, et al, US20180371248A1 (2018)(“Hoffmüller) with an evidence from G. A. Patel, et al, EP1087001A2 (2001)(“Patel”) is withdrawn because the F moiety in the Hoffmüller Example 3 pentasiloxane is methyl which cannot meet the limited F for the claimed Formula (2) recited in the amended claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-4, 6, 15-18 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by R. Zhang, et al, 63, Anal. Cham., 1861-1867 (1991)(“Zhang”).
Zhang teaches a silica particles functionalized with di-n-butyltetramethyIdisilazane through condensation reaction as below:
Preparation of Narrow-Pore C4 Bonded Phase with (BuMe2Si)2NH. Toluene(100mL)dried over the 5-Ǻ molecular sieve and 10.5g of (BuMe2Si)2NH were added to 10g of dry QDHY silica in a 250-mL three-necked flask. The slurry was refluxed with stirring for 15h. The bonded silica was then washed, extracted, washed, and dried as above.
Zhang at page 1862, right col. paragraph 2, emphasis added.
Zhang teaches that the QDHY silica is a silica particle having mean diameter of 5µm. Zhang at page 1862, left col. Chemicals, line 4-5. The produced bonded silica is functionalized through a condensation reaction of the QDHY silica with (BuMe2Si)2NH that maps the formula (1) in the instant claim 1 as:
R1 is methyl; and
A is n-butyl group, which maps the -M-F as: M is L that is -CH2CH2-; F is -CH2CH3.
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The Zhang bonded silica meets each and every limitation of claims 1, 16 and 18; therefore, claims 1, 16 and 18 are anticipated.
Claim 3 is anticipated because the F in the Zhang bonded silica is -CH2CH3 that is an alkyl.
Claim 4 is anticipated because the LogP value of n-Butane is 2.89. See attached PubChem-Butane.
Claim 6 is anticipated because Zhang teaches that (BuMe2Si)2NH “readily reacts with silicas to generate a bonded high coverage monolayer” (See Zhang at page 1863, left col. line 1-2 under the Reaction Scheme), therefore, the QDHY silica is functionalized with two or more1 different (BuMe2Si)2NH.
Claim 17 is anticipated because the formula (1) is an alternative of the formula (2), further limit the formula (2) does not further limit the formula (1).
Regarding claim 15, the Zhang reaction mixture comprises 100 ml toluene ( 86.7 g) and the functionalized silica formed between 10 g of silica and 10.5 g of (BuMe2Si)2NH, thus the concentration of the functionalized silica is between 9.3 wt%[10÷(86.7 +10.5+10)] and 19 wt% [(10+10.5)÷(86.7 +10.5+10)], which anticipates the claimed 01 wt% to 80 wt%, therefore, claim 15 is also anticipated. The claim preamble language of “coating composition” is interpreted as intended using rather claim limitation.
Claim 21 is also anticipated because Zhang teaches that the reaction was washed, extracted, washed, and dried; a composition comprising 25 wt% -50wt% of the functionalized silica was formed1 at some stage of the process of drying.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at (571)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art.
Prosecution Insights