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 .
Election/Restrictions
Applicant’s election without traverse of the Invention of Group II (claims 27-38) in the reply filed on 09/26/2025 is acknowledged.
Applicant’s election without traverse of methyldiethoxysilane as a specie of a Si-containing compound in the reply filed on 09/26/2025 is acknowledged.
Applicant’s election without traverse of specie of dimethylamine as a specie of an amine compound in the reply filed on 09/26/2025 is acknowledged.
Applicant’s election without traverse of isopropanol as a specie of an organic protic solvent in the reply filed on 09/26/2025 is acknowledged.
Claims 1-26 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/26/2025.
Claims 31-33 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/26/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 27-30 and 34-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims are indefinite because the term “the at least one silane compound” in claim 27 lacks proper antecedent basis.
For examination purposes the claim is interpreted as reciting “at least one Si-containing compound in an amount of from about 0.1 wt% to about 10 wt% of the composition, the at least one Si-containing compound comprising a Si-H group”.
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].
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The documents listed on the attached PTO 892 are cited with respect to the treatment compositions.
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