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 .
Rejections
Claim Rejections - 35 USC § 102
1. 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 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 2281857 Higuchi.
Regarding claims 1, 4-9, 11, and 13-15:
Higuchi, paragraph [0105] exemplifies a composition containing 1.90 Si mol of methyltrimethoxysilane and 0.21 Si mole of tris(3-trimethoxysilyl)isocyanurate and acetic acid and water to form a solution. The amounts of methyltrimethoxysilane and tris(3-trimethoxysilyl)isocyanurate fall within the scope of the instant claim 13. This composition falls within the scope of that of the instant claims 1, 4, 8, 9, 11, and 13-14.
In the initial reaction of the methyltrimethoxysilane and tris(3-trimethoxysilyl)isocyanurate, a compound necessarily forms that contains two (3-trimethoxysilyl) units and one that has reacted with the methyltrimethoxysilane to form a siloxane-containing group of the instantly claimed component (B2), substituent R8. This composition falls within the scope of the instant claims 1 and 5-7.
The compositions of Higuchi are coated onto substrates to modify the properties thereof which falls within the scope of the instantly claimed “surface treating agents”. The coated substrates fall within the scope of the instant claim 15.
Regarding claims 2-3, 8, 10, and 12:
The instant claims 2, 3, 8, 10, and 12 further describe the compounds of claim 1 but do not require these compounds to be chosen. Therefore, Higuchi reads on these claims.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1-4, 8-12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/235524 Fukaumi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted.
Regarding claims 1-4, 9, 11, and 14:
Fukaumi discloses compositions containing glycidyloxy organopolysiloxane, neutral salt, β-dicarbonyl compound, solvent, which falls within the scope of the instant claim 14, and organoaluminum compound and/or organotitanium compound. See Fukaumi, the abstract and paragraphs [0010], [0013], [0015], noting the tetraalkoxysilane of page 9, line 1, which encompasses the instantly claimed component (B1), [0017], [0018]-[0019], noting the alkoxy groups which fall within the scope of those of the instant claims, [0022]-[0024], noting the alkoxysilane compounds having no glycidyloxy group, [0030], noting the compounds which fall within the scope of the instantly claimed components (B1), [0064], [0065], [0076], noting the alkoxy aluminum acetylacetonates which fall within the scope of the instantly claimed compound (A1), [0077], noting the alkoxy titanium acetylacetonates which fall within the scope of the instantly claimed compound (A1), [0078], and the remainder of the document.
Fukaumi, paragraphs [0070] and [0071], particularly page 34, line 15, discloses using a silane coupling agent having an isocyanurate group and at least one hydrolysable silicon group, which encompasses the instantly claimed component (A2) of the instant claims 1 and 11.
The tetraalkoxysilanes of Fukaumi, paragraphs [0015], [0017], and [0018], fall within the scope of the instant claim 9.
The additional components of Fukaumi fall within the scope of the instant claims due to the open language of the instant claims.
The compositions of Fukaumi are coated onto surfaces to give scratch and water resistance to the surface. See Fukaumi, paragraph [0002]. This makes the compositions of Fukaumi “surface-treating agents” of the instant claims.
Fukaumi does not exemplify the instantly claimed combinations of ingredients and does not disclose them with sufficient specificity to anticipate the instant claims.
It would have been obvious to combine the above discussed ingredients which fall within the scope of those of the instant claims with the other ingredients of Fukaumi because such compositions are encompassed by the instant claims and would have been expected to give compositions having the properties of the compositions of Fukaumi, including the properties discussed explicitly by Fukaumi and the properties which are inherent to the compositions of Fukaumi.
Regarding claim 8:
Fukaumi encompasses na being 3.
Fukaumi does not require a compound in which nb is 3. However, the instant claim 8 merely further describes the compound (B2) but does not require it to be chosen. The above discussed compositions of Fukaumi therefore read on the instant claim 8 even if they do not contain a compound (B2).
Regarding claim 10:
Fukaumi does not require a compound containing R8. However, the instant claim 10 merely further describes the compound (B2) but does not require it to be chosen. The above discussed compositions of Fukaumi therefore read on the instant claim 10 even if they do not contain a compound (B2).
Regarding claim 12:
Fukaumi does not require a compound containing R9b. However, the instant claim 12 merely further describes the compound (B2) but does not require it to be chosen. The above discussed compositions of Fukaumi therefore read on the instant claim 12 even if they do not contain a compound (B2).
Regarding claim 15:
The substrates coated with the above discussed compositions of Fukaumi fall within the scope of the instant claim 15.
Conclusion
x. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762