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/Restriction
In response to the Restriction/Election requirement (dated 4 May 2026), the Applicant submits the following:
-- The Applicant elects Group II, without traverse, drawn to an organic functional silane composition, encompassing claims 2 – 22 (Remarks, p. 11).
-- Species combinations of monomers &/or oligomers, detailed in claims 3 – 15, the Applicant elects, with traverse, the Species detailed by claim 13 (Remarks, p. 12)
-- Of the functional group(s), X, detailed in claims 17 – 22, the Applicant elects, with traverse, an epoxy group (Remarks, p. 12).
In view of the elections above, the examined claims are 2, 13 & 16 – 19 .
The Applicant traverses on the grounds that it would not be an undue burden to search the various combinations of monomers. The different monomer configurations and X groups is not so onerous that it would be an undue burden to search those aspects. Those are likely to fall under the same classes of search. Applicant reserves the right to request rejoinder of the withdrawn claims. Applicant also reserves the right to file one or more continuation applications related to the non-elected claims.
The restriction requirement set forth in the Office Action (dated 4 May 2026) is appropriate. The claimed species would require different fields of search. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown even when classified together. This is sufficient to establish a serious search and/or examination burden. See MPEP § 808.02.
The species election requirement is therefore proper.
Claim Objections
Claims 2, 13 & 16 – 19 are objected to by the Examiner.
Regarding claim 2, the claim limits four silane(s) corresponding to formulas (I) – (IV), respectively. When limiting the silane of formula (IV), the claim concludes with, “…X1, X2, X3, and X4 are each independently an organic functional group functional group…” (p. 3, Claim 2, last line). The repeated “functional group” after “organic functional group” is interpreted as a typographical error and is ignored during claim interpretation and examination.
Regarding claims 13 & 16 – 19, said claims all depend from claim 2, either directly or indirectly, inheriting all the limitations established therein. Therefore, claims 13 & 16 – 19 are similarly objected to.
Corrective action is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2 & 16 – 18 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Fukaumi et al. (US 2017/0283649 A1).
Regarding claims 2 & 16, Fukaumi teaches a curable composition comprising at least two silane compounds (Abstract) which may be used to form coatings (p. 24, claim 13). Fukaumi provides a general formula (I):
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Wherein: (p. 2 & 3, [0046])
-- R1 is a C1-C10 alkyl group having a terminal epoxy-containing structure,
-- R2 is H, a C1-C10 alkyl, a C6-C25 aryl or a C7-C12 aralkyl,
-- R3 is H or a C1-C10 alkyl,
-- ‘a’ is an integer of 0-2.
The epoxy-containing structure includes an epoxy group, a glycidyl ether group and an epoxy-cyclohexyl group (p. 3, [0054]).
The above formula is also mixed with another silane of a general formula (II):
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Wherein: (p. 2 & 3, [0046])
-- R4 is a C1-C10 (substituted or unsubstituted) alkyl, alkenyl, or a substituted aryl group,
-- R2 is H, a C1-C10 alkyl, a C6-C25 aryl or a C7-C12 aralkyl,
-- R3 is H or a C1-C10 alkyl,
-- ‘a’ is an integer of 0-2.
The above formula (I) reads on silane(s) of formula(s) (I-IV) as detailed below:
Formula (I):
-- When ‘a’ is 0, reads on limitation when R3 is an alkoxy group,
-- When ‘a’ is 1, reads on limitation when R3 is a C1-C10 alkyl,
-- When the epoxy-containing structure is an epoxy group, a glycidyl ether group or an epoxy-cyclohexyl group.
Formula (II):
-- When ‘a’ is 0, reads on limitation when R8 is an alkoxy group,
-- When ‘a’ is 1, reads on limitation when R8 is a C1-C10 alkyl,
-- When the epoxy-containing structure is an epoxy group, a glycidyl ether group or an epoxy-cyclohexyl group.
Formula (III):
-- When ‘a’ is 0, reads on limitation when R13 is an alkoxy group,
-- When ‘a’ is 1, reads on limitation when R13 is a C1-C10 alkyl,
-- When the epoxy-containing structure is an epoxy group, a glycidyl ether group or an epoxy-cyclohexyl group.
Formula (IV):
-- When ‘a’ is 1, reads on limitation when R18 is a C3-C20 hydrocarbon,
-- When the epoxy-containing structure is an epoxy group, a glycidyl ether group or an epoxy-cyclohexyl group.
Further, Fukaumi discloses preferred embodiments, including 3-glycidoxypropyl trimethoxysilane (p. 4, [0066]), which reads on the silane of formula (I) (i.e., silane (a)) as required by the claim, where R1-R3 are methyl; R4 is propyl; m=1; a=0; and X1 is a glycidoxy functional group. When discussing inventive embodiments, Fukaumi uses this compound reading on formula (I) (p. 16, [0256], see A-187) in combination with a compound reading on the silane of formula (III) (i.e., silane (c)) as required by the claim, where R11-R12 are methyl; R13 is –OR15, where R15 is methyl; o=0; c=0; and X3 is a vinyl group (A-171) or an epoxycyclohexyl group (A-186). (p.18, Table 1, Synthesis Examples 5 & 9).
In view of the above disclosures taught by Fukaumi, the limitations of claims 2 & 16 are anticipated by Fukaumi.
Regarding claims 17 & 18, Fukaumi’s examples illustrate combinations of A-187 reading on the claimed formula (I) where X1 is an epoxy group and A-171 reading on the claimed formula (I) where X1 is vinyl (i.e. an alkenyl group). Variables X2, X3, and X4 relate to formulas (II)-(IV), respectively. Neither claim 17 nor claim 2 positively require that compounds meeting all four compounds are simultaneously present. Therefore, by meeting the claimed X1, Fukaumi anticipates claims 17 & 18.
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.
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.
Claims 13 & 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Fukaumi et al. (US 2017/0283649 A1).
Regarding claim 13, Fukaumi provides various examples of their invention. Synthesis example 5 demonstrates a combination of A187 (3-glycidoxypropyl trimethoxysilane) and A171 (vinyl trimethoxysilane). Synthesis Example 9 illustrates a combination of A187 and A186 (2-(3,4-epoxycyclohexyl)ethyl trimethoxysilane) (see Table 1, p. 18).
A187 reads on the claimed formula (I) where R3=–OR5; R1, R2, and R5 are C1 hydrocarbon; R4 is C3 divalent hydrocarbon; m=1; a=0; and X1 is an organic epoxy-containing group. A187 is used in combination with A171 in Synthesis Example 5 and in combination with A186 in Synthesis Example 9 (p. 18, Table 1).
A171 falls within the scope of Fukuami’s General Formula (II) (p. 2 & 3, [0046]), where a=0 and R3 is C1 alkyl. General Formula (II) is reproduced below:
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In this general formula, suitable R3 groups also include alkyl groups containing up to 10 carbon atoms. It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the C1 alkyl groups of A171 with alkyl groups containing up to 10 carbon atoms based on Fukuami’s recognition of the suitability of such groups. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06.
A186 falls within the scope of Fukuami’s General Formula (I) (p. 2 & 3, [0046]) where a=0 and R3 is C1 alkyl. General Formula (I) is reproduced below:
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In this general formula, suitable R3 groups also include alkyl groups containing up to 10 carbon atoms. It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the C1 alkyl groups of A186 with alkyl groups containing up to 10 carbon atoms based on Fukuami’s recognition of the suitability of such groups. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06.
When either A171 or A186 are modified to replace the C1 alkoxy groups with C3-C10 alkoxy groups, these compounds read on each of the claimed formula (II), (III), and (IV). As demonstrated above, A187 reads on the claimed formula (I). Thus, modification of A171 and A186, as detailed above, used in Synthesis Examples 5 and 9 results in compositions where one compound reading on each of formulas (I)-(IV) is present.
Regarding claim 19, Fukaumi remains as applied above. Fukaumi discloses an embodiment of the invention comprising two silanes: A-187 and A-186 (p. 18, Table 1, see Synthesis Example 9). A-187 & A-186 are disclosed as 3-glycidoxypropyl trimethoxysilane and 2-(3,4-epoxycyclohexyl)ethyl trimethoxysilane, respectively (p. 16, [0256]). It would have been obvious to one of ordinary skill in the art at the time of filing to replace the methoxy groups of one of these silanes with C3-C10 alkoxy substituents based on the prior art-recognized suitability thereof (see [0050] on p. 3).
Modification in this way results in A-187 reading on the silane of formula (a) (as demonstrated above) and A-186 reading on the silane of formula (c) where X is an epoxy, as required by the claim. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06.
Conclusion
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
