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 .
Status of the Application
Claims 1-16 are pending.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-8, directed to a compound, and the species, in the reply filed on 05/06/2026 is acknowledged. The election was made without traverse.
The elected species is found free of prior art and the search is extended to other species.
Because all species previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the election of species requirement for Group I, as set forth in the Office action mailed on 09/12/2025 is hereby withdrawn.
The requirement is therefore made FINAL.
Claims 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1-8 are under current examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 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 1-4 are rejected under 35 U.S.C. 112a, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the art that the inventors, at the time the application was filed, had possession of the claimed invention. See MPEP 2143. The MPEP states that the purpose of the written description requirement is to the ensure that the inventor had possession, as of the filling date of the application, of the specific subject matter claimed by him. Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim.
Claims 1-4 are directed to a compound:
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605
1303
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583
1222
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846
918
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Thus, Claims 1-4 are drawn to millions of compounds comprising any number of siloxane and diazirine groups with any structure, functional groups, arbitrary groups etc.
A disclosure should contain representative examples which provide reasonable assurance to one skilled in the art that ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter claimed by him. The applicants have broadly claimed a compound. MPEP states that written description for a genus can be achieved by a representative number of species within a broad generic. It is unquestionable that claims 1-4 are broad and generic, with respect to all possible compounds encompassed by claim 1. There is a very large number of structural variations encompassed by claims 1-4. The claims lack in written description because the specification lacks sufficient variety of species to reflect this variance in the genus.
The specification provides guidance to only 4 compounds embraced by claim 1 as in instant claims 5-8.
The specification does not provide sufficient descriptive support for the myriad of compounds embraced by the claims.
There are millions of combinations, embraced by claim 1. Considering the lack of guidance provided in the specification, one of ordinary skill in the art would be burdened with undue experimentation to practice the invention commensurate in the scope of claims 1-4.
Allowable subject Matter
Claims 5-8, present allowable subject matter over the prior art on record.
The following is an Examiner’s reasons for indicating allowable subject matter:
Applicant’s compounds as in the instant claims 5-8 are novel and unobvious over the prior art of record. None of the prior art of record disclose or teach applicant’s compounds as in the instant claims 5-8. The closest prior art, Ye (Sensors and Actuators B, 2018, Vol 256, pp.234-242, as provided by the applicant on IDs dated 04/28/2023), teaches a surface comprising a compound having one siloxane moiety of formula 1 of the instant claims and one diazirine group. Although surface can have more than one such compounds (and therefore more than one siloxane and more than one diazirine groups), the surface is not a compound. Further, the compound of the cited prior art attached to the surface is different with respect to not having either two siloxane or two diazirine groups. Further, the cited prior art would not suggest nor motivate to a person of ordinary skill in the art to combine their teaching and make compound as in the instant claims.
Objection
Claims 5-8 are 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.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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