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 (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.
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.
Claims 13-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant points to ¶[0077] as support for the newly added claim limitation to a certain amount of silicon containing polymer with respect to 100 parts of solid content of the silicon containing polymer. ¶[0077] teaches this amount with respect to the solid content of the coating composition and not the silicon containing polymer. Therefore, the newly added amount limitation is not considered to be described in such a way that reasonably suggests Applicant had in their possession this amount with respect to 100 parts of the polymer itself.
Claims 14-17 are rejected based on the dependency to Claim 13.
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.
Claims 13-17 are 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 13 recited the amount of silicon containing polymer with respect to 100 parts of the same silicon containing polymer. This circular reference renders the claims indefinite as to how said polymer can possible be present in an amount 10 times less than its amount with respect to 100 parts of itself.
In the interest of compact prosecution and considering the support for this claim limitation clearly lies in ¶[0077] of the as-filed specification with respect to 100 parts of the coating composition rather than the silicon containing polymer, the limitation will be addressed with respect to the rejections of record with respect to 100 parts of the coating composition.
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.
The factual inquiries 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.
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.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (U.S. 20080036544) in view of Kurjata (“Synthesis of poly[dimethylsiloxane-block-oligo(ethylene glycol) methyl ether methacrylate]: an amphiphilic copolymer with a comb-like block”; provided on IDS June 10, 2025).
Wu teaches photosensitive resin compositions which can be developed more rapidly, smoother pattern after development and solve the problem associated with slow development encountered by using color resists and enhance the fineness of the pattern. (¶[0056] and Abstract).
Wu does not teach or suggest a polymer as claimed in Claim 13 or Claim 15/16.
Wu teaches amphoteric and silicone surfactants may be used in the compositions. (¶[0037])
Kurjata, working in the field of silicone polymers similar to Applicant, teaches a copolymer made from PDMS macroinitators with oligomeric ethylene glycol side groups on a methyl methacrylate backbone.
Kurjata teaches the copolymers are amphiphilic block copolymers which are expected to display interesting morphologies in solution and exhibit useful surfactant properties. (pg 6112 1st column 1st paragraph).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Wu by using the copolymers of Kurjata as surfactants because Kurjata teaches these copolymers are expected to display interesting morphologies in solution and exhibit useful surfactant properties. (pg 6112 1st column 1st paragraph).
The copolymers of Kurjata are PDMS-POEGMA copolymers (See Scheme 2) and have methyl methacrylate polyether groups which read over instant Formula 2-2.
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The number average molecular weight of the silicone chains (not the entire silicone terminal end) is not explicitly taught. However, Table 1 has the degree of polymerization of the PDMS chain of 7-49. Anything over 26 is reasonably suggested to give a number average molecular weight of 2000 or more when tested appropriately for determination of number average molecular weight as the repeat unit is 76.9 g/mol and the degree of polymerizations above 26 give a molecular weight of the silicon group of 2000 or more.
One of ordinary skill in the art is motivated to choose the PDMS6 variant for the silicone chain as it has the highest amount of silicone in the chain. (70 repeats) This also reasonably suggests a number average molecular weight on the order of 76.9 * 70 = ~5383 when tested accordingly as this is the number of repeats multiplied by the molecular weight of the repeats.
This reads over the Claim 13 and Claim 15 and Claim 16.
In ¶[0037] Wu teaches the amount of surfactant is 0 to 6 parts per 100 parts of the alkali soluble resin. All amounts in Wu are with respect to the alkali soluble resin, however, this ultimately can be calculated back to amount of solids in the coating composition.
In the working examples, for instance, the total amount of solids is 40 parts and the amount of alkali soluble resin is 15 parts total. Applying the 0 to 6 parts of surfactant teaching to this amount yields a range of 6/100 = x /15 solve for x, x = 0.9 parts of surfactant per 15 parts of alkali soluble resin. The total amount of solids is 40 parts, as above, and therefore, up to 0.9 parts surfactant per 40 parts of solids is reasonably suggested. This translates to 0.9/40 = x/100, solve for x, x = 2.25 parts of surfactant per 100 parts of coating composition in terms of the claimed amount. In other words, following the teachings of Wu with respect to the amount of surfactant per 100 parts of alkali resin reasonably suggests 0 to 2.25 parts of surfactant, the surfactant of Kurjata, per 100 parts of the solid amount of coating composition. This overlaps the claimed range of Claim 13.
The silicon containing polymer of Kurjata does not include any of the groups of Claim 14 and Claim 17, thereby reading over them.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hamazaki (JP2018199765; reference made to included English machine translation) as evidenced by Silaplane Technical Disclosure.
Hamazaki teaches coating compositions which comprise blocks of silicon-chain containing monomers (Formula I) and blocks of Formula II ((methacrylate) and Formula III ((methacrylol polyether) (See ¶[0009-00111] of the Japanese document.
The number of repeats of the PDMS units of Formula I are disclosed as n = 5 to 50. The exemplified Silaplane FM-0711 has an average molecular weight of about 1,000 which means it is below the range recited by the instant claims.
The number average molecular weight of the silicone chains (not the entire silicone terminal end) is not explicitly taught. Anything over ~26 is reasonably suggested to give a number average molecular weight of 2000 or more when tested appropriately for determination of number average molecular weight as the repeat unit is 76.9 g/mol and the degree of polymerizations above 26 give a molecular weight of the silicon group of 2000 or more. 1000 is approximately 13 repeats.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Hamazaki such that the n was in the range of more than 13 to 50 because Hamazaki already exemplifies ~ 13 repeats (FM-0711) and as such it is obvious to explore more units of the range taught by Hamazaki.
This suggest a range of n =13 to 50 when practicing Hamazaki and, therefore, reasonably suggests a number average molecular weight on the order of 76.9 * 13 = ~1000 to 50 * 76.9 = ~3845 when tested accordingly as this is the number of repeats multiplied by the molecular weight of the repeats.
Block copolymer synthesis is exemplified by making a polyether block first then polymerizing the silicon chain block made off that polyether polyether block. This reasonably suggests silicon on one terminal end of the polyester. No unsaturated groups which are polymerizable are reasonably suggested to be present when the synthesis is complete.
The coating of Hamazaki read over Claim 13 and the resist of Claim 15 and Claim 16 as resist is considered a future intended use and there is nothing in the claims nor the spec to suggest the coatings cannot act as a resist even if it is an extremely poor resist.
¶[0026] teaches the amount of the above silicon containing polymer in the compositions is 0.01 to 5 wt% calculated on solid content of the paint vehicle. 100 parts = wt% and therefore, this is reasonably suggested to be 0.01 to 5 parts of the above silicon containing polymer per 100 parts of the solid content of the paint vehicle. This meets the amount limitation of Claim 13.
There are no functional groups in the resulting polymers of Hamazaki which reads over Claim 14 and Claim 17.
Response to Arguments
Applicant’s claim amendments and remarks filed November 26, 2025 have been fully considered but are not persuasive in overcoming the rejections of record. The §102 rejection over Kurjata is withdrawn as Kurjata does not teach the amount of surfactant, the silicon containing polymer of Kurjata, to be used. The rejections based on Wu and Kurjata and Hamazaki have been updated to reflect the newly, never previously presented, limitation to the amount of the recited polymer in the coating compositions. This was modification was necessitated by Applicant’s claim amendment. Further, the new grounds of rejection under §112(a) and §112(b) are necessitated by Applicant’s unsupported circular reference in the amount of silicon containing polymer.
Applicant argues the surfactant of Kurjata is not obvious to put in the composition of Wu for the reasons argued that Kurjara alone does not read on the claimed silicon containing copolymer. This argument is not persuasive. Applicant’s sole argument that Kurjata does not reads on the silicon containing copolymer claimed is that the amount in the composition as claimed is not taught by Kurjata. Wu teaches the amount of surfactant to be used in ¶[0037]. Kurjata teaches a surfactant for certain benefits as outlined in the rejection of record. While Kurjata does not teach the amount of surfactant to be used, Wu does and there is no reason not to use Wu’s amounts in the combination as discussed in the rejection of record.
Applicant argues that Hamazaki does not teach the copolymer of the claims because Hamazaki does not teach a silicone chain on only one terminal. This argument is not persuasive. Applicant imparts a tremendous amount of structure in the claim that is not recited by the claim in making their argument. See annotations to Applicant’s provided drawing below (black indicates silicon chains.
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The claims recite a silicon chain on the termina end. Applicant argues the claims recited a silicone chain on the terminal end. The above diagram of Hamazaki provided by Applicant has a silicone chain on the terminal end of the silicone block of Hamazaki.
Applicant further argues neither Hamazaki nor Kurjata teaches Applicant’s disclosed benefits for having the structure as claimed based on ¶[0077]. This argument is not persuasive. There is no requirement the art must teach Applicant’s disclosed benefits in order for the prior art to read over the claimed structure. Further, if Applicant intends to argue the claimed structure and/or amount provides allegedly unexpected benefits then this must be demonstrated rather than pointing to exposition in the as-filed specification.
Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results does not satisfy any of these requirements. Additionally, the burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b))
Note that Applicant’s demonstrations use comparative examples which are random copolymers of silicon chains. Hamazaki and Kurjata’s silicon containing copolymers with a silicon chain on one terminal end are not random copolymers of silicon chains, and thus, are closer prior art than that of Applicant’s examples.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766