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 .
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 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.
Claims 1-3, 5-7, 43-49 are pending. Applicant’s previous election of Group I, claims 49, 2, 3, 5-7, 43-44 and the following species (only items i, iii, and iv) still applies and claims 1, 45-48 are currently withdrawn (directed to non-elected composition Group III, see restriction of 03/07/24).
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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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/20/25 has been entered.
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
Claim Rejections - 35 USC § 103
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 49, 2-3, 5-7 and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (WO 2019/040922) in view of Weller (U.S. 2006/0178487).
Regarding claims 49, 2-3, 5-7, and 43 Zhang teaches an adhesion promoter layer chemically bonded to a substrate overlapping claim 3 by reactive groups corresponding to the claimed R2 groups (as in claims 6 and 7, see FIG. 1, i.e., hydroxyl groups) followed by a top coat as in claim 5, wherein the adhesion promoter layer is formed from hydrolysis and condensation of a polysiloxane overlapping the claimed formula of claims 49 and 2, and the elected species, (FIG. 1, page 2, page 10, formula IIB, and pages 37-38, examples 15-16). In Examples 15 and 16, reaction of the H group in the triethoxysilane and the vinyl groups in the bis(heptavinyl-tricycloheptasiloxane) would produce (CH2)2 linking groups connecting the polysilsesquioxane (i.e., tricycloheptasiloxane) backbone to trialkoxysilyl groups (thus corresponding to the claimed A group) which are then further reacted to bond the layer to the substrate, as claimed.
Zhang does not disclose whether acid/base catalysts are used during the hydrolysis/condensation, but does not require such catalysts. However, Weller is also directed to formation of polymers via hydrolysis and condensation of silanes and teaches that such hydrolysis/condensation occurs in contact with water and does not require condensation catalyst (rather, such catalysts merely accelerate the reaction) and also mentions that if a catalyst is desired it may be a organometallic catalyst instead of an acid/base ([0098]-[0099]). Thus, it would have been obvious to have used no catalysts in the hydrolysis/condensation reaction of Zhang as taught by Weller in order to simplify the reaction and/or reduce costs (since such a catalyst is explicitly disclosed as being optional) and/or to have used an organometallic catalyst because Weller teaches that such a catalyst would accelerate the reaction. In either case, there would be no acid/base in the final product as in claim 43.
Further to the above, the preclusion of acid/base in claims 49 and 43 is an immaterial product by process limitation with respect to Zhang (even without Weller) because the same siloxane polymer forms regardless of the type of catalyst used (or even if no catalyst is used at all) because, by definition, a catalyst is not consumed during the reaction and therefore only affects the process of making the final compound. Furthermore, in the non-limiting examples of Zhang where a catalyst is used (e.g., KOH, page 30) the reaction product is precipitated and filtered off of the KOH solution such that no catalyst would remain in the filtered product as in claim 43 (even if it was used during synthesis).
The water limitation of claim 49 is either an immaterial product by process limitation if it is directed to the conditions during hydrolysis and condensation, or is obvious over the compounds of Zhang in view of the amount of hydroxyl groups (from water) required to hydrolyze and condense the various alkoxy groups. The number of OH/alkoxy groups disclosed in Zhang relative to the other functional groups (e.g., Si-O-Si and Si-(CH2)2-Si) appear to overlap claim 6.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
In light of the overlap between the claimed product and that disclosed by Zhang, it would have been obvious to one of ordinary skill in the art to use a product that is both disclosed by Zhang and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (WO 2019/040922) in view of Weller (U.S. 2006/0178487), as applied to claim 1 above and further in view of Schadt et al. (U.S. 2015/0079307).
Regarding claim 44, modified Zhang teaches all of the above subject matter including suggesting that the adhesion promoting layer be used in optical (transparent) applications (page 2), but does not suggest a thickness. However, Schadt is also directed to siloxane based adhesion promoting layers in optical applications and teaches that a thickness overlapping claim 44 provides a desirable interaction with the wavelength of light passing through the layer and transitioning into adjacent layers, such that it would have been obvious to have used this thickness from Schadt for the adhesion promoting layer of modified Zhang in order to provide such a desirable interaction in the optical applications suggested by Zhang.
Response to Arguments
Applicant’s remarks are not persuasive.
This office action is final because the rejection above still applies to the elected article claims for the same reasons set forth in the previous rejection (the only substantive change is which claim numbers are cited).
Applicant argues that the molar ratio of water to alkoxy groups at the start of polycondensation has an effect that gives it patentable weight, even as a product by process limitation. This is not persuasive.
First, the claimed ratio includes “greater than 1:1,” which is almost the same as a 1:1 ratio, which is the stoichiometric ratio that would be required to hydrolyze and fully condense the alkoxy groups (i.e., is obvious based on the prior art, as explained in the above rejection and in the previous office action). Therefore, the only difference between the claimed product by process limitation (if arguendo, it was given patentable weight) and the prior art would be the difference between 1:1 and “greater than 1:1,” which would include a difference between 1:1 and 1.000001:1, which is such a slight different that it is not a patentable distinction (absent evidence of criticality). See In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Second, there is no evidence that the water ratio affects the final product (i.e., the product by process limitation should not be given patentable weight). Applicant provides arguments and citations (FIG. 2 and 3) that are all directed to the intermediate product, not the final product. Even the asserted thermal stability and dense packed properties of this intermediate product are only disclosed as “may” result from the water ratio (see [0037] of the present PGPub). Even if it was given patentable weight, the difference between 1:1 (obvious from the prior art) and 1.000001:1 (within the claimed range) is not a patentable distinction.
Applicant then argues that the prior art fails to recognize the benefits of the water ratio. However, this is not required. Such unrecognized benefits may form the basis for unexpected results (to rebut the above rejection), but as indicated above there is no evidence that such benefits are present in the final product (instead are only asserted for the intermediate product). Even if there was evidence that the intermediate product benefits cited by Applicant create benefits in the final product, the claims do not appear to be commensurate in scope (in terms of the type and amount of ingredients that form the final product) with the data in the present specification.
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787