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 .
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 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.
Claims 1, 3, 6-24 are pending. Applicant’s previous election of Group I, claims 1, 3, 6-15 and 19-24 (and 3 aminopropyltriethoxysilane as species) still applies and claims 16-18 remain withdrawn.
Response to Amendment
Applicant’s amendment of 01/02/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim objection
Claim 1 recites “liner” instead of “linear”.
Claim Rejections - 35 USC § 103
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 3, 6-15 and 19-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamura (JP H09183949, see machine translation) in view of Shin (KR 10-2122032, see machine translation) in view of Kim (U.S. 2019/0119506) in view of Xu (CN 108727979, provided by Applicant, see machine translation) in view of Kaneko (U.S. 2020/0199406) in view of the Shin Etsu NPL document.
Regarding claims 1, 3, 6-15 and 19-24, Tamura teaches a hard coating composition comprising a polysilazane as in claims 4-7 (Tamura teaches repeating units that correspond to the repeating units of claims 1, 6, 7, and 24, where each repeating unit may have at least one organic, non-hydrogen group, e.g., two methyl groups and one hydrogen, a 33:66 ratio as in claim 24, note-there is nothing in the claims to require the M1 and M2 repeating units are different from each other), inorganic (silica and other metal oxide) nanoparticles (as in claims 12-13) with a size overlapping claims 14 and 19-20 (less than 1 micron, based on desired transparent coating properties), and a solvent as in claim 15, with an amount of filler relative to polysilazane that overlaps the claimed range ([0004], [0008]-[0012], [0028], [0029], [0031]-[0032]).
Although the amount of, e.g., silica, nanoparticles in Tamura overlaps the claimed amounts ([0032]) a particular reason for this filler amount is not provided, however, Shin is also directed to a hard coating composition comprising a polysilazane and silica nanoparticles and teaches that such silica nanoparticles provide hardness ([0006]-[0012], [0027]-[0030]) such that this would have been an additional obvious motivation for adjusting the amount of silica nanoparticles in Tamura to within the claimed range (i.e., for hardness) as taught by Shin in addition to the overlapping range already taught by Tamura.
Tamura does not disclose the elected species of aminopropyltriethoxysilane.
However, Kim is also directed to hard coatings based on polysilazane and inorganic nanoparticles and teaches that organoalkoxysilane compounds may be included as a reactive solvent to improve compatibility of the polysilazane and the inorganic oxide particles (see abstract, [0033]-[0040]). Similarly, Xu is also directed to hard coatings based on polysilazanes and inorganic oxide particles and teaches that organoalkoxysilane coupling agent compounds provide improved dispersion of the inorganic particles (the same motivation from Kim) and provide improve bonding strength and may include aminofunctional alkoxysilane silane coupling agents ([0012], [0052]-[0053], [0056]). Thus, it would have been obvious to have included alkoxysilane compounds in Tamura as a solvent to improve compatibility of the polysilazane and the inorganic oxide particles as taught by Kim and it would have further been obvious to have used aminofunctional alkoxysilane coupling agents as taught by Xu for the alkoxysilane compounds in Tamura (as already suggested by Kim) because Xu teaches that they provide improved dispersion of the inorganic particles (the same motivation from Kim) and improve bonding strength.
The particular elected species is not disclosed as one of the suitable aminofunctional alkoxysilane coupling agent however Kaneko teaches that a hard polysilazane composition may include the elected species of aminofunctional alkoxysilane compound (as in claims 8-11) to improve hardness (see abstract, [0066]-[0067]) such that it would have been obvious to have included such an aminofunctional alkoxysilane compound from Kaneko as the aminofunctional alkoxysilane coupling agent already suggested by Kim and Xu in modified Shin (to improve compatibility of the polysilazane and the inorganic oxide particles and to provide improved dispersion of the inorganic particles and improve bonding strength) because Kaneko discloses that the elected aminofunctional alkoxysilane compound also improves hardness as sought by Tamura. The obviousness of using the aminofunctional alkoxysilane from Kaneko as the aminofunctional alkoxysilane coupling agent suggested by Kim and Xu in modified Tamura is further supported by the Shin Etsu NPL document which shoes that the elected aminofunctional alkoxysilane from Kaneko was a known coupling agent.
Regarding claims 3 and 21-23, the amounts of the inorganic nanoparticles to (alkoxysilane + polysilzane) and ratio of polysilazane to alkoxysilane is not explicitly disclosed as claimed (though Tamura discloses an overlapping ratio of polysilazane to inorganic particles), however, each ingredient is provided with a corresponding effect as explained above, such that it would have been obvious to have adjusted the amount of inorganic nanoparticles, including to values within the claimed ranges, in order to optimize the corresponding hardness (as taught by Shin), and it would have further been obvious to have adjusted the amount of the elected aminofunctional alkoxysilane, including to values within the claimed ranges, in order to optimize the corresponding compatibility of the polysilazane and the inorganic oxide particles (as taught by Kim), dispersion and bonding strength (as taught by Xu), and improved hardness (as taught by Kaneko).
See MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 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%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Shin does not disclose the new limitations for the polysilazane but Shin is not cited for the particular type of polysilazane in the rejection above, and instead is cited only to provide a motivation for the silica particles in a polysilazane composition (i.e., this argument is moot). The other arguments against Shin are improper piecemeal analysis.
Applicant argues that Kim does not provide proper motivation for the alkoxysilane ingredient because “compatibility” is not explained. However, compatibility is sufficient motivation because it means that the metal oxides are more compatible with the polysilazane (i.e., prevents/reduced incompatibility). Furthermore, even if the metal oxide in Kim is different than in the primary (which is no longer the case given Tamura cited above, which teaches silica as well as the metal oxides in Kim) one of ordinary skill in the art would expect compatibility improvement of one metal oxide to be applicable to other metal oxides given the similar oxide groups. This is confirmed by Xu, which also teaches that alkoxysilane compounds improve dispersion (i.e., compatibility) of metal oxides in polysilazane.
Applicant also argues that Kim’s amount of alkoxysilane is different from that being claimed but is ignoring the result effective variable based prima facie optimization of such an amount as explained in the rejection (as well as the MPEP citation indicating that such amounts are not patentable distinctions absent evidence of criticality).
Applicant argues that Xu is non-analogous because it is directed to perhydropolysilazane. However, even if the prior art and the claims entirely precluded perhydropolysilazane (arguendo), perhydropolysilazane in Xu would still be sufficiently similar to the organic substituted polysilazanes to make it obvious to try such alkoxysilane compounds for the disclosed benefits (especially given the shared benefit between Xu and Kim regarding compatibility/dispersibility of inorganic particles in organic and inorganic polysilazane). But the claims and the prior art do not preclude perhydropolysilazane, such that Applicant’s argument does not even apply. That is, the claims do not preclude perhydropolysilazane (merely require that at least one organo-substituted polysilazane is included in the composition). Similarly, the cited prior art (Tamura) includes polysilazane with Si-H and N-H groups, the same groups as in perhydropolysilazane. This makes the motivation from Xu further obvious to apply to Tamura because of the shared groups amongst the polysilazane of Tamura and the perhydropolysilazane of Xu (such that the same dispersibility improvement with respect to those same groups and inorganic particles would be expected). In addition to all of the above, it is noted that the Xu provides only part of the obviousness motivation for using alkoxysilane in Tamura (e.g., the improved hardness taught by Kaneko).
Applicant argues that the coupling agents of Xu lack the hydroxyl groups discussed in Kim and thus would not be considered to have the same benefits. However, the alkoxy groups of Xu are known to hydrolyze into hydroxyl groups via exposure to ambient moisture and as part of the routine/expected reactivity (this is why Kim discloses alkoxysilane compounds in [0036]). Therefore, it is maintained that the two silane compounds (of Xu and Kim) are related to each other and the claimed alkoxysilane compound.
Applicant then argues that Kaneko uses the elected species as curing catalyst, while the NPL document discloses it as coupling agent. This may be so, but the elected compound is not required to be obvious in only one way. Kaneko provides multiple benefits associated with the elected species, such as improving hardness but also functioning as a curing catalyst (making the claimed subject matter even more obvious). In addition to these teachings, the NPL document shows that the elected species is also a well-known silane coupling agent, such that the motivations provided by Xu related to silane coupling agents would also apply to the more specific elected species discussed in Kaneko (with the benefits from Kim also being obvious to expect from the elected species in Kaneko because it is also an alkoxysilane compound). In summary, the prior art provides multiple motivations for using alkoxysilane compounds with polysilazanes, which makes the claimed subject matter more (not less) obvious.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787