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Claims 1-4 and 6-12 are pending, of which Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-4 and 12 are under current examination.
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 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 of this title, 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 12 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Blum (US 5008422).
Determining the scope and contents of the prior art
Blum discloses oligomeric N-alkyl perhydridosilazane along with synthesis, comprising reacting a primary alkyl amine with a dihalosilane at a temperature of less than 0C:
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Formula 3, encompass elected species and compound of claim 4 and 5, when a=2 and R=1-6C, lower alkyl
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(entire application, especially abstract, Col 4, 8-10, 21). The cited prior art further discloses example of compounds along with their synthesis with R=Me or Et (col 4, 21, Examples 1 (R=Et) and 2 (R=Me) and a=2:
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The cited prior art further discloses using compounds in making ceramic material, fiber coating and binders (abstract).
Ascertaining the differences between the prior art and the claims at issue
Blum teaches genus that encompasses the elected species of the instant claims and also discloses species encompassed by the genus of the instant claims. The cited prior art further discloses using compounds in making ceramic material, fiber coating and binders. Thus, the teaching of the cited prior art is different with respect to R group of the elected species, isopropyl (elected species) vs 1-6 C alkyl with examples of R as Me and Et.
Resolving the level of ordinary skill in the pertinent art
With regard to the above difference-Since examples of species (R=Me and Et) and subgenus (R=1-6C alkyl) taught by the cited prior art are structurally similar to that claimed, it would have been obvious to a person of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214. “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” Importantly, in this case, the cited prior art discloses homolog example (Ethyl) of the elected species (isopropyl) and also suggest that they have similar properties and therefore chemists of ordinary skill would contemplate making them to try to obtain compounds with improved properties. Further, a person of ordinary skill in the art would have been motivated to try different substituents on N atom and Si as suggested by the cited prior art to arrive at compounds useful in making ceramic material, fiber coating and binders. Thus, the cited prior art meets limitations of the instant claims.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Blum teaches genus which encompass the elected species and examples of species encompassed by the genus of the instant claims.
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the compound structurally similar and encompassed by the genus of the cited prior art may be useful in in making ceramic material, fiber coating and binders.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed compound with a reasonable expectation of success.
Response to Arguments
Applicant’s remarks, affidavit and amendment, as filed on 04/27/2026, have been fully considered but not found persuasive.
Applicant argued over submitted affidavit and technical advantage of thermodynamic properties and unexpected properties of perhydridocyclic silazane compounds and argued over differences when R in such compound is branched vs linear, specifically propyl vs isopropyl.
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This is not found persuasive and the instant claims stand rejected. This is because the instant claims are not drawn to a cyclic perhydridocyclic silazane but to an open chain perhydridosilazane of formula 4. See paragraphs from the instant specification, as filed. Thus, data presented in affidavit is irrelevant to the instant claims and not persuasive.
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Thus, the data presented in affidavit and argued is irrelevant to the instant claims. The argument is neither unexpected nor persuasive.
Just because two compounds contain Si-N bond do not make these compounds as same compounds. Having an ethyl group in two different compounds, does not make two different compounds as same compounds. For example, cyclic hexane and n-hexane are not same compounds.
Further, an argument by the applicant is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art.
Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration; (2) just recognizing thermodynamic properties of compound of the cited prior art does not render claims nonobvious. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
"The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.").
In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) discussed in MPEP § 2144 are also pertinent to this issue.
See MPEP § 716.02 - § 716.02(g) for a discussion of declaratory evidence alleging unexpected results.
Applicant argued over motivation of modifying linear alkyl group with branched alkyl group of the cited prior art.
This is not found persuasive and the instant claims are obvious over the cited prior art. This is because (1) Since examples of species (R=Me and Et) and subgenus (R=1-6C alkyl) taught by the cited prior art are structurally similar to that claimed, it would have been obvious to a person of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214. “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” Importantly, in this case, the cited prior art discloses homolog example (Ethyl) of the elected species (isopropyl) and also suggest that they have similar properties and therefore chemists of ordinary skill would contemplate making them to try to obtain compounds with improved properties. Further, a person of ordinary skill in the art would have been motivated to try different substituents on N atom and Si as suggested by the cited prior art to arrive at compounds useful in making ceramic material, fiber coating and binders. Thus, the cited prior art meets limitations of the instant claims; (2) both obviousness and motivation are not required under 103 and KSR as long as either obviousness to make compound or motivation to make compound is present.
Importantly, applicant’s own invention as described in the specification provides that R as ethyl (linear, same as described in examples of the cited prior art) offers same advantages, volatility, pyrophoric properties etc., as the branched, such as isopropyl:
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THIS ACTION IS MADE FINAL. 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.
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.
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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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