DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Claims 1-12 and 16-21 in the reply filed on 20 October 2025 is acknowledged. The traversal is on the ground(s) that the reference cited in the in the rationale for finding a Lack of Unity, Tamino, does not disclose a partially-hydrolyzed amine-reactive organosilane (see Response at Pg. 2). This argument is moot in view of the grounds of rejection presented herein over US 2022/0267640 to Eigner et al. As discussed herein, Eigner anticipates all of the features of the elected claims, thus the technical feature among the identified groups of claims in the Restriction Requirement does not constitute a special technical feature as it does not make a contribution over the prior art. Thus the claims lack unity and election is warranted.
The requirement is still deemed proper; however is not made final in view of the newly articulated rationale.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The two information disclosure statements (IDS) submitted on 04 April 2025 have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: At Pg. 3, Line 35 “additional” is understood intended to be “addition.”
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.
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.
1. Claims 1-12 and 16-21 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.
With regard to Claim 1, the term “optionally” renders the claim ambiguous since it is unclear as to whether the subject of the term is an element contemplated by the claim. For purposes of examination, the subject of the term “optionally” is not understood to confer a limitation on the claim. Claims 2-12 and 16-21 are similarly rejected to the extent they depend from Claim 1 and do not resolve the noted ambiguity.
Further with regard to Claims 6, 7, 18, and 20, the term “optionally” similarly renders each claim ambiguous since it is unclear as to whether the subject of the term is an element contemplated by the claim. For purposes of examination, the subject of the term “optionally” is not understood to confer a limitation on the claim. Claims 8 and 19 are similarly rejected to the extent they depend from Claim 6 and do not resolve the noted ambiguity.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
2. Claims 1-12 and 16-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2022/0267640 to Eigner et al. (“Eigner”), effectively filed 02 August 2019.
With regard to Claim 1, Eigner teaches a process for making a coated glass article comprising applying multiple coats of a coating composition (see Abstract; ¶¶ [0098]-[0099]). According to Eigner, the coating composition comprises an organosilane, an amino-functional silane or cyclic azasilane, and a condensation-curable polyorganosiloxane having divalent units matching the claimed formula (see Abstract; ¶¶ [0004], [0069]-[0070]). Eigner further teaches partially-hydrolyzed silane (see ¶ [0077]). Thus Eigner teaches applying a composition comprising a partially-hydrolyzed amine-reactive organosilane compound to a siliceous substrate, and subsequently applying a composition comprising at least one of an amino-functional silane or cyclic azasilane and the claimed type of condensation-curable polyorganosiloxane thereon.
With regard to Claim 2, Eigner teaches the claimed functionality of the polyorganosiloxane (see ¶¶ [0062], [0036]-[0037], [0041]-[0050], [0142]).
With regard to Claim 3, Eigner teaches inclusion of a catalyst as claimed (see ¶ [0142]).
With regard to Claim 4, Eigner teaches coating on glass surfaces of motor vehicles (see ¶¶ [0099]-[0100]).
With regard to Claim 5, Eigner teaches the coating composition provides a clear finish (see ¶ [0094]).
With regard to Claim 6, Eigner teaches the claimed types of polyorganosiloxane, amino-functional silane, and cyclic azasilane (see ¶¶ [0048]-[0060]).
With regard to Claims 7 and 17, Eigner teaches the claimed type of polyorganosiloxane (see ¶¶ [0116]-[0121]).
With regard to Claim 8, Eigner teaches methoxy groups and inclusion thereof in the claimed amount (see ¶ [0050]).
With regard to Claim 9, Eigner teaches the claimed amino-functional silanes and cyclic azasilanes (see ¶¶ [0058]-[0059]).
With regard to Claims 10-11 and 16, Eigner teaches the claimed amine-reactive organosilane with epoxy functionality (see ¶¶ [0069]-[0070]).
With regard to Claim 12, Eigner teaches the coating composition may be essentially free of fluorinated silanes (see ¶ [0090]).
With regard to Claim 18, Eigner teaches the claimed type of polyorganosiloxane (see ¶ [0123]).
With regard to Claim 19, Eigner teaches inclusion of the claimed types of catalyst (see ¶ [0067]).
With regard to Claim 20, Eigner teaches inclusion of additional polyorganosiloxane of the claimed type (see ¶ [0063]).
With regard to Claim 21, Eigner teaches methyl and phenyl functionality (see ¶ [0041]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1712
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