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 .
This communication is responsive to the claim set and Response to Restriction filed 02/11/2026. Claims 1-13 and 21 are currently pending. Claims 4-13 are withdrawn due to the Restriction Requirements.
The elected claims 1-3 and 21 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-3 and 21 in the reply filed on 02/11/2026 is acknowledged. The traversal is on the ground(s) that group II and group III are overlapping one another and there would be no undue burden for the Examiner. This is not found persuasive because Groups I-III are classified in different classes/subclasses, and would require different text search.
The requirement is still deemed proper and is therefore made FINAL.
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.
(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.
Claims 1-3 and 21 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Ling et al. (CN102336847 A).
Regarding Claims 1-2 and 21, Ling teaches a compound having the general formula (I ):
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97
243
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, wherein m=1 and R1, R2 and R3 each independently C1 to C20 alkyl (claim 1). Ling further teaches the particular examples of the compounds include morpholinyl trimethoxysilane and morpholinyl triethoxysilane (claim 5 and Example 5). Morpholinyl trimethoxysilane of Example 5 has the structure of:
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109
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, which is the instant claimed Compound (3) of Claim 21.
Regarding Claim 3, the examiner interprets the phrase “for depositing a silicon-containing film” as reciting the purpose or intended use of the claimed composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed composition, and the preamble merely states, for example, the purpose or intended use of the composition, rather than any distinct definition of any of the claimed composition’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. (MPEP 2111.02(II). In this case, Ling teaches a composition comprising the claimed compounds (claim 3).
Conclusion
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/ Supervisory Patent Examiner, Art Unit 1763
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