DETAILED ACTION
Response to Amendment
The following is in response to the office action dated 6/9/26.
Claim Rejections - 35 USC § 112
Claims 1 to 20 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. The specification fails to provide support for the newly added language regarding the network forming polymerization of multifunctional monomers. This language appears to be new matter.
Claims 1 to 20 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 language “rather than by network forming polymerization of multifunctional
monomers” is confusing.
On one hand, it is not clear what is intended to be excluded by the multifunctional monomers. These can be present in addition to the linker having a first and second functional group. These can be present on the oligomeric silsesquioxane compound. These can be present on the linker, as there is nothing that excludes functional groups in addition to the first and second. It is not clear what is being limited by this language.
In addition, since one can obtain a network forming polymerization from direct reaction of a first and second functional group on a linker, it is unclear what weight it gives this language as well.
This language is not exclusive – that is, a direct reaction does not necessarily prohibit a network forming polymerization of multifunctional monomers. As such this is unclear.
In claim 2, reference to “the first major surface” lacks antecedent basis, as this surface has been deleted from claim 1.
Claim Rejections - 35 USC § 102 and 103
The rejections below are maintained from the prior office action as applicants’ amendment and remarks are not sufficient to overcome this rejection.
Claims 1, 2, 4 and 6 to 14, 16 to 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moxey et al. 2018/0037495.
Moxey et al. teach a coating composition that contains a substrate having a first
surface (paragraph 22) with surface coating of functionalized oligomeric silsesquioxanes (herein POSS). The POSS undergo reaction with one another, thus forming a bond between the POSS. See paragraph 60 through paragraph 75. This teaches functional-ized POSS having acrylate groups that are reacted with a crosslinking agent such as PTM or HAD.
In addition to the above, see Table 1 which shows reactants that form the coating material. Table 2 shows compositions of these reactants having a Pencil Hardness of 5H, 6H, 7H and 8H. This anticipates all of the requirements in claim 1.
For claim 2, see paragraphs 84 to 86 which teach a layer of silane coupling agent between the substrate and coating.
For claims 4, 11 and 12, note that these properties aren’t specifically taught by Moxey et al. but the coated article claimed is the same as that found in Moxy et al. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Thus if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art.
For claim 6, note that the crosslinkers in paragraphs 70 to 75 having first and second functional groups that are acrylate groups.
For claim 7, note that crosslinkers such as 1,6-hexanediol diacrylate contains an oxygen atom.
For claim 8, note that the first and second functionalized groups on the POSS can be the same. Moxey et al. specifically shows both as acrylate groups, meeting this requirement.
For claim 9, see paragraph 65 which teaches that the functional groups can be epoxy.
For claim 10, see paragraph 130 which teaches that the POSS bond to the organic molecules of the acrylic polymer. This results in a polymer linker between the POSS compounds.
For claims 13, 14 and 16 to 18, again see Table 1 and the process by which these materials are applied (paragraphs119 to 131). This teaches coating the substrate with the reactive POSS component and crosslinkers and curing. Note that paragraph 74 refers to HAD as a reactive diluent.
Specifically for claim 13 the Examiner notes that the “depositing a layer” step embraces different steps that are not specifically claimed such that the process noted above meet this limitation. Note that these claims allow for the reactive diluent as found in Table 1.
For claim 19, again note paragraph 65 which teaches that the functional group can be an epoxy.
For claim 20, see paragraphs 84 to 86 which teach a silane coupling agent layer.
Claims 1, 4 to 9, 11 to 15, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laine et al. 2011/0062619.
Laine et al. teach a substrate surface that is coated with a POSS material. See
the abstract. Figures such as that in Reaction 3 (paragraph 88) demonstrate the POSS compounds as claimed.
The OHS corresponds to the claimed first and second POSS with SiH functional group. OHS is reacted with a vinyl trimethoxysilane, which meets the claimed linker hav-ing first and second functional groups. The resulting product is the OTSE compound. As can be seen in Scheme 2, page 8, OTSE undergoes crosslinking to form a first and second POSS bonded together by a linker. This particular linker contains an Si-O-Si group. See also Schemes 3-5 which show more examples of this coating composition. See also paragraph 95 which refers to “some degree of crosslinking” between the POSS compounds.
Paragraphs 124 and on show the preparation of such coatings and Table 1 notes that the OTSE compound results in a hardness of > 6. This anticipates claim 1.
For claims 4, 11 and 12, note that these properties aren’t specifically taught by Laine et al. but the coated article claimed is the same as that found in Laine et al. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art.
For claims 5 and 6, note that the above referenced POSS compound contains alcohol groups. In addition to this see the various other groups found in paragraph 86 which can also be found on the POSS in Laine et al. This includes epoxy, acrylate and other -OH groups that meet these claims.
For claim 7, as noted above, the linkage includes an oxygen atom.
For claim 8, note that the POSS compounds discussed above meet this require-ment. Of particular importance, note that the first and second POSS do not need to be different.
For claim 9 again see paragraph 86 which teaches glycidyl and epoxycyclohexyl groups. Table 1 shows hardness values of 5 or more for these POSS compounds.
For claims 13 and 18, see the above referenced Schemes and Examples which show such a process. Paragraphs 95 to 99 refer to specific curing conditions. Note that the first and second POSS compounds and functional groups can be the same.
For claims 14 and 19, as noted above, Laine et al. teach specific epoxy groups that meet these requirements.
For claim 15, paragraph 95 refers to “some degree of crosslinking” which means that complete crosslinking does not occur. As such this coating composition will contain POSS compounds that are not bonded to anything prior to curing. This meets the claimed third functionalized POSS.
Claims 2, 3 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Laine et al.
Laine et al. do not teach a silane coupling layer. The presence of such a layer,
though, is extremely well known in the art as a means of improving adhesion between a surface and polymeric coating. The skilled artisan would recognize the following as an accepted and conventional explanation (from chemsilicone.com/silane-coupling-agents)
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With this in mind, one having ordinary skill in the art would have been motivated to include a silane coupling agent layer between the POSS coating composition and the substrate in Laine et al., in an effort to improve adhesion and coupling between the two. One of the specific functional groups in claim 3 would have been an obvious selection as the skilled artisan would have been motivated to select a group that will react with the functional group in the POSS of Laine et al. As noted above, such a functional group can be a silanol or an epoxy, both of which will react with the functional groups in claim 3. Furthermore these are well known and commonly used silane coupling agents such that, given the level of knowledge of the skilled artisan, these claims are rendered obvious.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Moxey et al.
Moxey et al. teach in paragraph 84 that an adhesion promoter layer can be found
between the substrate and the coating material. This differs from that claimed in that it does not teach a functional group as found in claim 3.
Given the fact that Moxey et al. are directed towards to a UV curable coating (paragraph 7), the skilled artisan would have found the selection of a UV reactive functional group to have been obvious in the silane adhesion promoter therein. Thus while Moxey et al. teach an acrylate compound, other UV curable groups such as an epoxy or mercapto would have been obvious selections for the skilled artisan with the expectation of obtaining comparable adhesive results. In addition to the above, the silane coupling agents in claim 3 are well known and commercially available, providing the skilled artisan with further motivation to make such a selection.
Response to Arguments
Regarding the rejection over Moxey et al., please note the following.
The Examiner doesn’t understand applicants’ position that the teachings Moxey
et al. do not include a linker molecule that is distinct from the POSS compounds and that reacts directly with the POSS to form a covalent linkage. That is exactly what is found in Moxey et al. From paragraph 61 “cross-linking may facilitate covalent bond formation between the POSS monomer units”.
This reflects the language in applicants’ amended claims and what applicants argue as a feature of the claimed article. From Moxey et al. paragraph 69, the cross-linker can be 1,6-hexanediol diacrylate, a linker having a first and second functional group at the first and second ends. See also Example 4 which shows compositions that contain only HDA and MA POSS (defined in paragraph 120 as a monofunctional POSS) such that no network formation will occur. Also in Example 4, a PTA reactant combined with the MA POSS compositions will also meet the newly claimed requirement as a monofunctional POSS will not form a network, but will function as a chain terminator and end group. These examples reflect a coating composition in which a covalent linkage between a first and second functionalized POSS is formed by direct reaction of the first and second groups of a linker.
As noted above, it is unclear what weight to give the new language in claim 1 but the Examiner doesn’t understand why applicants allege that the crosslinkers that are di-functional linkers in Moxey et al. form network forming polymerization reactions but the first and second functionalized oligomers (i.e. crosslinkers that are difunctional linkers) in the claims do not.
For emphasis, the Examiner refers applicants to paragraph 121 which shows the HDA monomer used in Moxey et al.. This is in face a linker that is a distinct molecule with opposing functional groups.
Regarding the rejection over Laine et al., please note the following.
In some ways applicants’ claims are very broad, noting that the functional groups
on the linker are very broad. With this in mind, note that POSS compound shown in Scheme 1 on page 5. This POSS meets the plurality of first and second functionalized POSS in claim 1. See then the reactant 4 below. This is a vinyl triethoxysilane, a linker that has one terminal functional vinyl group and one terminal functional triethoxysilane group. See also the reactants in the middle of page 6. While it is shown as a two step process, the vinyl triethoxysilane reacts with the SiH in the POSS compound and then the alkoxy groups react with the alkoxy groups in another POSS compound such that a covalent hydrocarbon linker is formed. See for instance the product in page 8 which shows various POSS groups in which at least one Si atom in each POSS compound is covalently linked via an ethylene group.
Thus, again, the claimed linker with two terminal functional groups is found in Laine et al. such that the anticipation rejection remains valid.
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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
7/29/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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