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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on 1/5/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11 and 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/5/2026.
Claim Objections
Claims 1, 4, and 6 are objected to because of the following reasons:
With respect to claim 1,
In line 5, the term “the general formula (I)” lacks antecedent basis because the general formula (I) has yet to be introduced in the claim. It is suggested that “the general formula (I)” have the leading “the” removed.
In line 13, the term “the general formula (II)” lacks antecedent basis because the general formula (II) has yet to be introduced in the claim. It is suggested that “the general formula (II)” have the leading “the” removed.
In the last line, it is does not clearly end in a period. Note that deletions of less than 3 characters should be removed with double brackets.
With respect to claim 4, line 2, “Q1” is inconsistent with “Q1” of claim 1.
With respect to claim 6, before the last item of the group, “and” or “or” should be inserted to complete the phrase.
Appropriate correction is required.
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.
Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claims 1, 2, and 7-9, the phrases “in particular,” “preferably,” and “such as” render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
With respect to claims 1-4 and 6, the phrases “selected from a group containing” and “selected from a group comprising” impermissibly use open ended "containing" and “comprising” language. See MPEP § 2111.03, which states, "The transitional terms 'comprising', which is synonymous with 'including,' 'containing,' or 'characterized by,' is inclusive or open-ended and does not exclude additional, un-recited elements or method steps." Accordingly, it is unclear which Markush members (in addition to the ones expressly listed) should be included within the scope of these claims consistent with MPEP § 2173.05(h)(I).
With respect to claim 5, it is rejected for failing to cure the deficiency of the claim from which it depends.
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 of this title, 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 1-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Braun (US 2019/0126600).
With respect to claims 1-5, Braun discloses a resin layer comprising a formaldehyde resin, a polymer such as polyepoxides, and “at least one” silane-containing compound of formula RaSiX(4-a) where X is H, OH, or a hydrolyzable residue such as alkoxy and R is a non-hydrolyzable organic residue of an alkyl and substituted with a functional Group Q selected from the group consisting of an amino, (meth)acryloxy, (meth)acryl, and epoxide (abstract). Braun teaches that the Q group is determined by the polymer used, e.g., Q of an epoxy group is advantageous when an epoxy polymer is used and Q of methacryl or methacryloxy is advantageous when a polyacrylate is used (paragraph 0050). Braun teaches that the preferred silanes include glycidyloxypropyltriethoxysilane (i.e., reads on claimed formula (I) when X is ethoxy, R1 is a propyl group with Q1 that is epoxy) and tetraethylorthosilane (i.e., reads on claimed formula (II)). Example 1 includes melamine resin (i.e., formaldehyde resin), tetraethylorthosilicate (i.e., tetraethoxysilane), and carboxylated polyacrylate as polymer (paragraph 0124). Braun teaches that antibacterial substances can be used (paragraphs 0061 and 0063).
Braun fails to disclose with sufficient specificity so as to anticipate a combination of both formulae (I) and (II).
Even so, Braun exemplifies a composition (Example 1) comprising tetraethoxysilane (clearly a preferred alkoxysilane) and teaches that other silanes including Q that is epoxy or methacryl or methacryloxy are advantageous when polyepoxy or polyacrylate polymer, respectively, is used. Also, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize compounds of both formulae (I) and (II), where Q is epoxy, methacryl or methacryloxy—absent a showing of unexpected or surprising results.
With respect to claim 7, Braun teaches that silver compounds can be used as antibacterial (biocide) substances (paragraph 0063) but fails to disclose using at least two biocides.
Even so, case law holds that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize at least two biocides—absent a showing of unexpected or surprising results.
With respect to claim 8, Braun teaches adding inorganic particles such as those based on silicon dioxides and carbides (paragraph 0060).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Braun (US 2019/0126600) in view of Hanrahan (US 2005/0239358).
The discussion with respect to Braun in paragraph 5 above is incorporated here by reference.
Braun discloses adding biocides but fails to disclose a biocide such as phenylphenol.
Hanrahan discloses an antimicrobial melamine resin composition and teaches that suitable antimicrobial agents include 2-phenylphenol and silver (paragraph 0021).
Given that Braun discloses adding biocides and further given that Hanrahan teaches that suitable biocides include 2-phenylphenol, it would have been obvious to one of ordinary skill in the art to utilize a phenylphenol as a biocide for Braun’s melamine resin composition. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Braun (US 2019/0126600) in view of Westall (US 4,234,574).
The discussion with respect to Braun in paragraph 5 above is incorporated here by reference.
Braun teaches that the silane-containing compound provides uniform and homogeneous mixing because the functional groups of the silane bonds to the formaldehyde resin and polymer (paragraph 0026).
Braun fails to disclose the addition of an alkoxytitanate.
Westall discloses siloxane compositions and teaches that adding a titanate catalyst to expedite hydrolysis of alkoxy groups (col. 3, lines 36-40). These catalysts include tetraisopropyl titanate and tetra(n-butyl) titanate (col. groups) (col. 2, lines 39-44).
Given that both Braun and Westall discloses siloxane compounds having hydrolyzable alkoxy groups and further given the hydrolysis is expedited by adding an alkoxy titanate compound as taught by Westall, it would have been obvious to one of ordinary skill in the art add an alkoxy titanate to Braun’s composition comprising alkoxysilanes.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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