Prosecution Insights
Last updated: May 29, 2026
Application No. 18/029,388

POLYSILAZANE, SILICEOUS FILM-FORMING COMPOSITION COMPRISING THE SAME, AND METHOD FOR PRODUCING SILICEOUS FILM USING THE SAME

Final Rejection §103
Filed
Mar 30, 2023
Priority
Oct 02, 2020 — provisional 63/087,139 +1 more
Examiner
MOORE, MARGARET G
Art Unit
1765
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Merck Patent GmbH
OA Round
2 (Final)
68%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
83%
With Interview

Examiner Intelligence

Grants 68% — above average
68%
Career Allowance Rate
892 granted / 1310 resolved
+3.1% vs TC avg
Moderate +15% lift
Without
With
+14.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
34 currently pending
Career history
1353
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
68.1%
+28.1% vs TC avg
§102
16.5%
-23.5% vs TC avg
§112
7.6%
-32.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1310 resolved cases

Office Action

§103
DETAILED ACTION For reasons of record, applicants’ amendment dated 4/6/26 has overcome the previous rejection. There is nothing in Okamura et al. that teaches the amounts of each unit as claimed. Furthermore there is nothing that would lead the skilled artisan to arrive at a polymer having these amounts of units, as there is no motivation or reason to alter the product to fall within the claimed range. In light of the new limitation the Examiner has updated the prior art search. The following new grounds of rejection is being made. Claim Interpretation The standard by which the amounts of NH and SiH3 is measured in these claims is rare, with the Okamura et al. reference (cited previously) being the only reference that the Examiner could find that refers to such a standard. Any information that applicants could provide as to how this measurement corresponds to other measurements or anything else useful in this regard is requested. Claim Rejections - 35 USC § 103 Claims 12 - 17, 19 - 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez et al. 2018/0072571. Sanchez et al. teach an N-H free perhydridopolysilazane. See the abstract as well as the entire teachings of Sanchez et al., noting that the title of the reference is “N-H Free…”. Since this is N-H free, the amount of NH groups will necessarily fall within the claimed range of less than .045. As for the required amount of SiH3 groups, the formula in the abstract shows that Sanchez et al. allow for the remaining units to be solely N bonded SiH3 groups or a mix-ture of such groups and NSiH2 groups. See paragraph 88, among other passages. The SiH3 units represent terminal groups in this polymer such that a relatively larger amount of such units will represent a relatively smaller molecular weight while, correspondingly, a smaller amount will represent a relatively larger molecular weight. Paragraph 87 teaches a range of molecular weight of from 332 to 100,000. One having ordinary skill in the art would have found it obvious to adjust the molecular weight of the perhydridopolysilazane in Sanchez as part of the routine experimentation and optimization of the teachings therein. As such it would have been obvious to adjust the SiH3 content in a corresponding manner. Note that the entirety of the molecular weight range in claim 15 is embraced by the range in Sanchez et al. and molecular weight is directed related to the SiH3 content. It follows that the amount of SiH3 terminal groups is within the breadth of the perhydrido-polysilazane disclosed by Sanchez et al. Given the above, the skilled artisan would have found an SiH3 content within the claimed range to have been obvious and well within routine experimentation. In this manner claim 12 is rendered obvious. For claims 13 and 14, note the structures shown in the paragraphs cited above, as well as the various specific structures shown on page 8 of this reference. For claim 15, see paragraph 87 which teaches a range that embraces that claim-ed such that one having ordinary skill in the art would have found a molecular weight within this claimed range to have been obvious over the teachings in Sanchez et al. For claim 16, note that this is a product by process limitation and it does not appear that this process per se will result in a patentably different product since the structural units found in each product are the same. For claims 17 and 19 to 22, see paragraphs 283 to 303 which teach forming a siliceous film. Paragraph 361 specifically shows a method with steam atmosphere. Allowable Subject Matter Claim 18 is 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. The method disclosed by Sanchez et al. does not include a halosilane or ammonia such that there is nothing that teaches or suggests such a process for preparing the specific polyhydridosilazane having the amounts of each unit as claimed. 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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MARGARET G MOORE/Primary Examiner, Art Unit 1765
Read full office action

Prosecution Timeline

Mar 30, 2023
Application Filed
Jan 07, 2026
Non-Final Rejection mailed — §103
Apr 06, 2026
Response Filed
Apr 24, 2026
Final Rejection mailed — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12637568
CURABLE HOT-MELT SILICONE COMPOSITION, CURED PRODUCT THEREOF, AND LAMINATE INCLUDING CURABLE HOT-MELT SILICONE COMPOSITION OR CURED PRODUCT THEREOF
3y 8m to grant Granted May 26, 2026
Patent 12630753
PRESSURE-SENSITIVE ADHESIVE LAYER-FORMING ORGANOPOLYSILOXANE COMPOSITION, AND USE THEREOF
4y 3m to grant Granted May 19, 2026
Patent 12617901
COMPOSITIONS CONTAINING OXAMIDE-FUNCTIONAL SILOXANES
3y 2m to grant Granted May 05, 2026
Patent 12618197
ADDITIVE COMPOSITIONS FOR PAPERMAKING
3y 3m to grant Granted May 05, 2026
Patent 12601178
BONDING ADHESIVE AND ADHERED ROOFING SYSTEMS PREPARED USING THE SAME
2y 10m to grant Granted Apr 14, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
68%
Grant Probability
83%
With Interview (+14.7%)
2y 10m (~0m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 1310 resolved cases by this examiner. Grant probability derived from career allowance rate.

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