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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 8-9 and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In reference to claim 1, the claim has been amended to recite the heat shield film includes an inorganic compound “that includes alkoxide including an alky group and not including a fluoroalkyl group” in lines 5-6. While Applicant argues the original disclosure has support for the amendment, stating that “there is no configuration to include ‘a fluoroalkyl group’ in the alkoxide, and it is clear that the inclusion of a fluoroalkyl group in the alkoxide used in the present invention was not originally intended” (Remark, p. 8). The mere absence of a positive recitation is not basis for an exclusion.
The cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the Applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453. Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. However, the mere absence of a positive recitation is not basis for an exclusion.
Regarding dependent claims 2-6, 8-9 and 12, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Response to Arguments
In response to the amended Specification filed 07/09/2025, the previous Objections to the Specification are withdrawn.
In response to amended claim 1 and in light of Applicants Remarks, p.7 filed 07/09/2025, the previous Claim Objections are withdrawn.
In response to amended claim 1, which now recites the heat shield film includes “an inorganic compound that includes alkoxide including an alky group and not including a fluoroalkyl group”, it is noted that Nakanishi et al. (JP H08-105352) (Nakanishi) and Taguchi, alone or in combination, no longer meet the presently claimed limitation. Rather, Nakanishi teaches the coating layer formed from an alkoxide contains at least an alkoxide having an amino group and a mental alkoxide having a fluoroalkyl group ([0009]). Therefore, the previous 35 U.S.C. 103 rejections over Nakanishi in view of Taguchi are withdrawn. However, the amendment necessitates a new set of rejections, as set forth above.
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784