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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/10/2026 has been entered.
Claim Rejections - 35 USC § 103
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.
The factual inquiries 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida et al. (JP-H06177535-A).
Regarding claim 1
Tsuchida discloses a metal surface treatment agent, and teaches a composition comprising gamma-glycidoxypropyltrimethoxy silane (i.e., first silane compound having methoxy groups and a glycidyl group), an imidazole silane (i.e., second silane compound)(para 0041).
Tsuchida discloses that the imidazole compound is made by reacting imidazole with 3-glycidoxypropyltrimethoxysilane (i.e., silane with methoxy groups and a diazole group)(para 0020).
Tsuchida discloses that the surface treatment agent may be dilute with water or alcohols (para 0019), making it obvious to use a mixture of these solvents because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
Although Tsuchida does not disclose an example where a silane with the claimed function groups are used, Tsuchida does disclose that as the silane coupling agent that vinyltriethoxy silane (i.e., a silane with a vinyl group and an ethoxy group) is functionally equivalent to 3-glycidoxypropyltrimethoxy silane (para 0004). Therefore it would have been prima facie obvious to one of ordinary skill in the art to replace the 3-glycidoxypropyltrimethoxy silane with vinyltriethoxy silane, with a reasonable expectation of success.
Regarding claim 2
The contact angle is a property of the composition, and as the reference discloses or makes obvious the other limitations of the claim it would be expected to have the same properties. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 3
Tsuchida discloses that the surface treatment agent is preferably diluted to 0.01 to 6 wt % (para 0019). As the amounts of the reference overlap the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Allowable Subject Matter
Claims 4 and 9-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art fairly teaches or suggest the limitations of these claims in combination with the limitations of the base claim(s) from which they depend.
Response to Arguments
Applicants argue against the 103 rejections.
Applicants argue that Tsuchida does not disclose the claimed first silane compound. This is not persuasive as Tsuchida makes the claimed first silane compounds obvious.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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