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 .
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.
Claim(s) 27-30 and 34-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugimura (WO 2021/176913, US 2023/0017832, citations by the US document).
Sugimura teaches a composition comprising:
A solvent (at least [0331-339]) and additives (at least [0128-134]).
Sugimura exemplify a silane compound and amine compound as additives.
Sugimura teaches providing additives in the claimed concentrations (at least [0133-134]).
Sugimura exemplify methyldiethoxysilane as an additive (alkoxysilane additive). See at least [0036] and [0234].
Sugimura exemplify dimethylamine as an additive (alkylamine additive). See at least [0046-47], [0285].
Sugimura exemplify isopropanol as an additive. See at least [0068], [0337].
Sugimura teaches that the composition comprises fluorine containing compound in the amounts recited by the claims. Please, note that the specification defines “substantially free” as containing “at most about 1000 ppm” (at least [0027]).
1000 ppm corresponds to the concentration of 0.1 %.
Sigimura teaches the fluorine containing compound in amounts “preferably 0.001% to 10% by mass, more preferably 0.01% to 5% by mass, and even more preferably 0.1% to 3% by mass” (at least [0116]).
Thus, the concentrations recited by Sigimura meet the limitation “substantially free” recited by the claims.
Thus, Sugimura teaches the composition as recited by claims 27-30 and 34-37 except for the specific recitation of the isopropanol presented in the claimed amount.
However, Sugimura teaches that the content of the organic solvent is not particularly limited (at least [0338]).
While Sugimura teaches that the preferred range for the organic solvent is 1-70%, the teaching of Sugimura is clearly not limited to that since Sugimura teaches that the content of the organic solvent is not particularly limited.
Further, it has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See at least: Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical).
The applicants have not demonstrated any criticality achieved by the claimed range of the solvent (isopropanol).
Thus, the claimed composition is obvious over the teaching of Sugimura.
Further, as an additional and alternative consideration, Sugimura teaches rinsing after application of the treatment composition (at least [0428-429]) and teach IPA (isopropanol) as a rinsing liquid.
Application of the isopropanol to the composition of Sugimura presented on the treated object will obviously result in presence of the composition with the claimed amount of isopropanol for at least some time due to the mixing of the rinsing liquid and the composition of Sugimura.
As to claim 38:
Sugimura does not specifically teach the composition consisting of the recited compounds.
Sugimura, as it has been shown above, teaches the composition comprising the claimed compounds and additional ingredients.
However, Sugimura teaches that the manufacturing method of the treatment liquid is not particularly limited. Sugimura teaches that the composition can be made by mixing the components, as necessary. Sugimura also teach that in mixing the components can be mixed together. See at least [0345].
In view of the disclosure of Sugimura it would have been obvious to an ordinary artisan at the time the invention was filed to mix the disclosed ingredients together in any order.
Further, it has been held that it has been held that selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
An obvious method of making the composition of Sugimura wherein isopropanol, methyldiethoxysilane and dimethylamine are first mixed together prior to adding the other ingredients will obviously result in the claimed composition.
Response to Arguments
Applicant's arguments filed 03/18/2026 have been fully considered but they are not persuasive.
The applicants amended the claims and allege that that “a person of skill in the art would not be motivated by the disclosure of Sugimura to 1) remove the required fluoride ion source; and 2) select the combination of at least one Si-containing compound comprising a Si-H group; at least one amine compound comprising a N-H group; and at least one organic protic solvent of the instant claims, in order to arrive at the instantly claimed surface treatment compositions with a reasonable expectation of success.
This is not persuasive.
First, the claims do not exclude the presence of a fluoride ion source. The claims recite “substantially free of fluorine-containing compounds”. The specification defines “substantially free” as containing “at most about 1000 ppm” (at least [0027]).
1000 ppm corresponds to the concentration of 0.1 %.
Sigimura teaches the fluorine containing compound in amounts “preferably 0.001% to 10% by mass, more preferably 0.01% to 5% by mass, and even more preferably 0.1% to 3% by mass” (at least [0116]).
Thus, the concentrations recited by Sigimura meet the limitation “substantially free” recited by the claims.
Second, Sigimura exemplify the claimed Si-containing compound, amine compound and solvent.
Due to the above the applicant’s arguments are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER MARKOFF whose telephone number is (571)272-1304. The examiner can normally be reached 9:00 am - 5:30 pm.
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/ALEXANDER MARKOFF/Primary Examiner, Art Unit 1711
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