DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 15, 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant's arguments filed on September 15, 2025 have been fully considered but they are not persuasive.
Applicant argues that claim 2 has been amended to overcome the rejection under 35 USC 112, second paragraph. Based on the amended language to "the total percentage of the alkoxysilanes, the silane coupling agent, and one or more additives is 100 wt % of the coating agent,” the rejection under 35 USC 112, second paragraph has been withdrawn. However, based on this amendment, amended claim 1 is anticipated by Watanabe (2016/0332920), as Watanabe discloses the total percentage of the alkoxysilanes, the silane coupling agent, and one or more additives (silica, phosphoric acid and a catalyst) is 100 wt% of the coating agent.
Applicant argues that Watanabe does not disclose at least one of the alkoxysilanes is a trifunctional alkoxysilane with a flash point of no higher than 40oC and a molecular weight of 180 or less. Applicant argues that the cited portions reference the presence of a trifunctional alkoxysilane but fail to provide any teaching related to the flash point or molecular weight of the alkoxysilane. In [0045], Watanabe discloses that methyltrimethoxysilane and methyltriethoxysilane main examples of trifunctional alkoxysilanes that can be used in its invention. The flash point of methylmethoxysilane is 11.11oC and the molecular weight is 136.22. The flash point of methylethoxysilane is 23.89oC and the molecular weight is 178.3. Further, it is noted that the applicant specifically provides in their specification that methyltrimethoxysilane and methyltriethoxysilane are examples of trifunctional alkoxysilane that have a flash point of no higher than 40oC and a molecular weight of 180 or less. Thus, applicant’s argument that Watanabe does not anticipate a trifunctional alkoxysilane with a flash point of no higher than 40oC and a molecular weight of 180 or less is not persuasive.
Claim Rejections - 35 USC § 102
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (US 2016/0332920).
Regarding claim 1, Watanabe discloses a coating agent composed mainly of alkoxysilanes and a silane coupling agent [0019] – [0021], wherein at least one of the alkoxysilanes is a trifunctional alkoxysilane with a flash point of no higher than 40oC and a molecular weight of 180 or less [0045] (methyltrimethoxysilane and methyltriethoxysilane, which are taught as being main examples of trifunctional alkoxysilanes in Watanabe, have a flash point of lower than 40oC and a molecular weight of lower than 180), and wherein at least one of the alkoxysilanes accounts for 10 wt% to 80 wt% of the coating agent [0024] (teaches the polyorganosilane being in a range of 30-50 wt%), wherein the total percentage of the alkoxysilanes, the silane coupling agent, and one or more additives is 100 wt % of the coating agent (with the amendment made to the claim, this is taught by Watanabe in [0024] – [0027] and claim 2, as the polyorgaosilane, silane, silica (additive), phosphoric acid (additive), and catalyst (additive) are taught to add up to 100%), wherein the silane coupling agent comprises at least one epoxy silane coupling agent at a content of 10 wt% to 80 wt% of the coating agent [0021], [0024] (the silane coupling agent is 5-20 wt% of the coating agent, which falls within the range claimed), and wherein the alkoxysilanes and the silane coupling agent, composed mainly of the trifunctional alkoxysilane and the epoxy silane coupling agent, are mixed with aqueous and/or solvent-based colloidal silica [0022], and a catalyst [0027], [0047].
Conclusion
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.
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/LAURA MARTIN/ SPE, Art Unit 2855