DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed on January 14, 2026 has been entered in the above-identified application. Claim 1 is amended. Claim 2 has been canceled. Claims 1 and 3-11 are pending and under consideration.
Claim Rejections - 35 USC § 103
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 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.
3. Claims 1 and 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Takeshita et al. (US 2022/0220270 A1).
Takeshita et al. disclose a laminate which has a substrate, an intermediate layer, and a water-repellent layer laminated in this order (meeting the limitations of claims 9 and 10), and has excellent abrasion resistance that can be used in various fields for display devices such as touch panel displays, optical devices, semiconductor devices, construction materials, window glass for automobiles and buildings, and the like (meeting the limitations of claim 11). The intermediate layer (c) is a cured layer of a mixture composition of an organosilicon compound (C) that contains a silicon atom together with an amino group and/or an amine skeleton (equivalent to the organosilicon compound (C) having an amino group or an amine skeleton of the claimed invention). The Examples show that a reaction product (trade name: X-12-5263HP, manufactured by Shin-Etsu Chemical Co., Ltd.), of N-2-(aminoethyl)-3-aminopropyltrimethoxysilane and chloropropyltrimethoxysilane, is used as the compound (C) (meeting the limitations of claim 6 and 7). The compound (C) is used as a mixture in which the organosilicon compound (C) is mixed (equivalent to the mixed composition of claim 1) and the mixture composition preferably has a solvent (E) mixed therein (equivalent to solvent 1 and solvent 2 of the claimed invention).. The solvent (E) is not particularly limited, and examples of the solvent (E) include water, alcohol-based solvents, ketone-based solvents, ether-based solvents, hydrocarbon-based solvents, and ester-based solvents. Water, alcohol-based solvents, ketone-based solvents, and hydrocarbon-based solvents are particularly preferable. Examples of the alcohol-based solvents include methanol, ethanol, 1-propanol, 2-propanol (isopropyl alcohol), and 1-butanol. Examples of the ketone-based solvents include acetone, methyl ethyl ketone, and methyl isobutyl ketone. Examples of the ether-based solvents include diethyl ether, dipropyl ether, tetrahydrofuran, and 1,4-dioxane. Examples of the hydrocarbon-based solvents include aliphatic hydrocarbon-based solvents such as pentane and hexane, alicyclic hydrocarbon-based solvents such as cyclohexane, and aromatic hydrocarbon-based solvents such as benzene, toluene, and xylene. Examples of the ester-based solvents include ethyl acetate, propyl acetate, and butyl acetate (meeting the limitations of claim 5). Furthermore, when the total of the composition (cc) is 100 mass %, the total amount of the organosilicon compound (C) is preferably not less than 0.005 mass %, more preferably not less than 0.01 mass %, and even more preferably not less than 0.02 mass %, and preferably not larger than 5 mass %, more preferably not larger than 3 mass %, and even more preferably not larger than 2 mass % (meeting the limitations of claims 2 and 8). The above-described amount of the organosilicon compound (C) can be adjusted when the composition is prepared. (See Abstract and paragraphs 0288-0289, and 0340-0358).
Takeshita et al. do not teach the use of two solvents.
However, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose given that the idea of combining them flows logically from their having been individually taught in the prior art. In this case, both solvent 1 and solvent 2 are taught by Takeshita et al. and hence it would be obvious to combine both solvents given that both are used for the same purpose.
With regards to the property limitations (such as ratio of a hydrogen bond term (6H) to a dispersion term (5D) in Hansen solubility parameters etc.) as recited in the claims, the Examiner takes the position that such property limitations are inherent in the mixed composition taught by Takeshita et al. given that the organosilicon compound (C) and the solvents used by Takeshita et al. and that of the claimed invention are identical.
Response to Arguments
4. Applicant's arguments filed on January 14, 2026 have been fully considered but they are not persuasive. Applicants traverse the rejection of claims 1 and 3-11 rejected under 35 U.S.C. § 103 as being unpatentable over Takeshita et al '270 (US 2022/0220270) and submit that the Examiner seems to misunderstand the subject matter of claim 2, which is now recited in independent claim 1 and that claim 1 does not recite the content of the organosilicon compound (C) in the composition but the mass ratio of the solvent 2 to the solvent 1.
However, as pointed out above, although Takeshita et al. do not teach the use of two solvents, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose given that the idea of combining them flows logically from their having been individually taught in the prior art. In this case, both solvent 1 and solvent 2 are taught by Takeshita et al. and hence it would be obvious to combine both solvents given that both are used for the same purpose. In other words, Takeshita et al. teach all the limitations of the claimed invention – i.e., an organosilicon compound (C) that contains a silicon atom together with an amino group and/or an amine skeleton (equivalent to the organosilicon compound (C) having an amino group or an amine skeleton of the claimed invention) and a solvent (E) which includes water, methanol, ethanol, 1-propanol, 2-propanol (isopropyl alcohol), 1-butanol, acetone, methyl ethyl ketone, methyl isobutyl ketone, diethyl ether, dipropyl ether, tetrahydrofuran, 1,4-dioxane, pentane, hexane, cyclohexane, benzene, toluene, xylene, ethyl acetate, propyl acetate, and butyl acetate (equivalent to the solvents used in the claimed invention) and hence it is prima facie obvious to combine two solvents taught by Takeshita et al. instead of just using one given that the idea of combining them flows logically from their having been individually taught in the prior art. The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In this case, the mere duplication of solvents has no patentable significance unless a new and unexpected result is produced.
If the Applicants are relying on unexpected results, a showing of unexpected results must be based on evidence, not argument or speculation and any claims presented must be commensurate in scope with the showing of unexpected results.
Conclusion
5. 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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/ Primary Examiner, Art Unit 1787