DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 26 June 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 4, 6, 7, and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Minowa et al. (WO 2020/171091) in view of Mitsuhashi et al (US 2020/0056067).
Note: since WO 2020/171091 was not published in the English language, citations in this action refer to US 2021/0371330, the published application based on the US national stage filing.
Minowa is directed to an antifouling layer attached to a glass substrate (paragraph 0001). An adhesive layer consisting mainly of silicon dioxide is formed between the glass substrate and the antifouling layer (paragraph 0040). Preferably, the density adhesive layer has a gradient, with the part of the adhesive layer closer to the glass substrate having a density of 1.75 to 2.25 g/cc while the part of the adhesive layer that is farther away has a density of 2.00 g/cc or less (paragraphs 0094-0095). The thickness of the adhesive layer is 20 to 100 nm (paragraph 0098). The antifouling layer contains a fluorine-containing organic compound, preferably a perfluoropolyether group-containing silane (paragraphs 0099-0100). The surface of the glass may be cleaned (paragraph 0126), such as by alkali (paragraph 0131) or plasma treatment (paragraph 0132). The antifouling layer may be formed by dip coating, vacuum deposition, or spraying (paragraph 0143).
Minowa do not teach that the perfluoropolyether group-containing silane has a structure according to formula (1), (4), or (7) as recited in claim 1.
Mitsuhashi is directed to a perfluoropolyether containing silane used as a surface treating agent to provide an antifouling property to a base material (paragraphs 0001-0003). The surface treating layer exhibits favorable UV resistance (paragraph 0032). In the embodiment of Example 1, Compound (D) of Synthesis Example 4 was vapor deposited on a silicon dioxide film formed on a glass substrate (paragraphs 0274-0275). Compound (D) of Synthesis Example 4 has the structure (paragraph 0232):
CF3CF2CF2O(CF2CF2CF2O)20CF2CF2CH2CH2CH2Si-[CH2CH2CH2Si(OCH3)3]3.
This corresponds to formula (1) of instant claim 1 wherein: CF3 corresponds to A1,
CF2CF2O(CF2CF2CF2O)20CF2CF2 corresponds to Rf (with d=2, p=q=s=t=u=zero, and r=20), Q is a single bond, CH2CH2CH2Si corresponds to Z, CH2CH2CH2 corresponds to Y, and OCH3 corresponds to X (with a=3).
It would have been obvious to one of ordinary skill in the art to use the perfluoropolyether containing silane of Mitsuhashi for the antifouling layer of Minowa to provide the resulting article with an antifouling property that is resistance to UV light.
Regarding claim 4, Mitsuhashi further teaches that the surface-treating agent may contain other components, such as a fluorine-containing oil (paragraph 0098). The fluorine-containing oil has a structure that corresponds to formula (10) of claim 4 (paragraph 0159).
Regarding claims 11-13, the manner in which the silicon oxide layer is formed represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the silicon oxide layer of Minowa appears to meet all the physical limitations of the claims (i.e., a silicon oxide layer having a density of 1.8 to 2.2 g/cm3), the burden is on the applicant to demonstrate that the product resulting from the processes recited in claims 11-13 is patentably distinct from that of the prior art.
Regarding claims 14-16, Minowa et al. teach a preferred thickness for their adhesive layer of 20 to 100 nm (paragraph 0098). Since this range includes 20 nm, it overlaps the range of 4 to 20 nm and the courts have held that an overlapping range is sufficient to support an obviousness rejection. Additionally, the courts have held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. It is hard, if not impossible, to imagine ranges closer than 100 nm and "more than 100 nm," and one of ordinary skill in the art would have a reasonable expectation of success employing an adhesive layer with a thickness of slightly more than 100 nm since the range disclosed in the prior art is not a required range but rather a preferred one. See MPEP 2144.05 I.
Claims 1, 2, 4, 6, 7, and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Minowa et al. (WO 2020/171091) in view of Yamane et al. (US 2012/0077041).
Minowa is directed to an antifouling layer attached to a glass substrate (paragraph 0001). An adhesive layer consisting mainly of silicon dioxide is formed between the glass substrate and the antifouling layer (paragraph 0040). Preferably, the density adhesive layer has a gradient, with the part of the adhesive layer closer to the glass substrate having a density of 1.75 to 2.25 g/cc while the part of the adhesive layer that is farther away has a density of 2.00 g/cc or less (paragraphs 0094-0095). The thickness of the adhesive layer is 20 to 100 nm (paragraph 0098). The antifouling layer contains a fluorine-containing organic compound, preferably a perfluoropolyether group-containing silane (paragraphs 0099-0100). The surface of the glass may be cleaned (paragraph 0126), such as by alkali (paragraph 0131) or plasma treatment (paragraph 0132). The antifouling layer may be formed by dip coating, vacuum deposition, or spraying (paragraph 0143).
Minowa do not teach that the perfluoropolyether group-containing silane has a structure according to formula (1), (4), or (7) as recited in claim 1.
Yamane ('041) is directed to a fluorooxyalkylene group-containing polymer composition for forming a water- and oil-repellent coating on a substrate having good abrasion resistance (paragraph 0002). The composition comprises a fluorooxyalkylene group-containing polymer represented by the formula (paragraph 0021)
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wherein: Q may be a divalent organic group having 2 to 12 carbon atoms containing one or more amide bonds, ether bonds, or ester bonds, Z is a divalent to octavalent organopolysiloxane moiety having a siloxane bond, a may be 1, R may be an alkyl group having 1 to 4 carbon atoms, X is a hydrolysable group, and a is 2 or 3 (paragraphs 0022 and 0033).
It would have been obvious to one of ordinary skill in the art to use the perfluoropolyether containing silane of Mitsuhashi for the antifouling layer of Yamane ('041) to provide the resulting article with good abrasion resistance in addition to water and oil repellency.
Regarding claim 4, Yamane ('041) further teaches that the surface-treating agent may contain an additional fluorooxyalkylene group-containing polymer that has a structure corresponding to formula (10) of claim 4 (paragraph 0036).
Regarding claims 11-13, the manner in which the silicon oxide layer is formed represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the silicon oxide layer of Minowa appears to meet all the physical limitations of the claims (i.e., a silicon oxide layer having a density of 1.8 to 2.2 g/cm3), the burden is on the applicant to demonstrate that the product resulting from the processes recited in claims 11-13 is patentably distinct from that of the prior art.
Regarding claims 14-16, Minowa et al. teach a preferred thickness for their adhesive layer of 20 to 100 nm (paragraph 0098). Since this range includes 20 nm, it overlaps the range of 4 to 20 nm and the courts have held that an overlapping range is sufficient to support an obviousness rejection. Additionally, the courts have held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. It is hard, if not impossible, to imagine ranges closer than 100 nm and "more than 100 nm," and one of ordinary skill in the art would have a reasonable expectation of success employing an adhesive layer with a thickness of slightly more than 100 nm since the range disclosed in the prior art is not a required range but rather a preferred one. See MPEP 2144.05 I.
Claims 1, 3, 6, 7, and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Minowa et al. (WO 2020/171091) in view of Sakoh et al. (US 2016/0355638).
Minowa is directed to an antifouling layer attached to a glass substrate (paragraph 0001). An adhesive layer consisting mainly of silicon dioxide is formed between the glass substrate and the antifouling layer (paragraph 0040). Preferably, the density adhesive layer has a gradient, with the part of the adhesive layer closer to the glass substrate having a density of 1.75 to 2.25 g/cc while the part of the adhesive layer that is farther away has a density of 2.00 g/cc or less (paragraphs 0094-0095). The thickness of the adhesive layer is 20 to 100 nm (paragraph 0098). The antifouling layer contains a fluorine-containing organic compound, preferably a perfluoropolyether group-containing silane (paragraphs 0099-0100). The surface of the glass may be cleaned (paragraph 0126), such as by alkali (paragraph 0131) or plasma treatment (paragraph 0132). The antifouling layer may be formed by dip coating, vacuum deposition, or spraying (paragraph 0143).
Minowa do not teach that the perfluoropolyether group-containing silane has a structure according to formula (1), (4), or (7) as recited in claim 1.
Sakoh is directed to a silane modified with a fluoropolyether-containing polymer to provide water/oil repellency to a surface (paragraphs 0002-0003). The embodiment of Comparative Example 1 (paragraph 0195) illustrates the compound:
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which reads on formula (4) of the claims.
It would have been obvious to one of ordinary skill in the art to use a perfluoropolyether containing silane taught by Sakoh for the antifouling layer of Minowa since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07. Additionally, while Comparative Example 1 is presented as a comparative example by Sakoh, the courts have held that the use of patents as references is not limited to what the patentees describe as their own invention. Rather, they are part of the literature of the art and relevant for all they contain. See MPEP 2123 I. One of ordinary skill in the art would have no reason to presume that the compound of Comparative Example 1, which has the same silane and perfluoropolyether groups as exemplified embodiments, would not also provide water/oil repellency to a surface - even if the process by which it is formed result in the production of a minor amount of by-product.
Regarding claim 3, the limitations of this claim are taken to be met since the claim, while further limiting formula (6), does not require B in formula (5) of formula (4) to comprise formula (6).
Regarding claims 11-13, the manner in which the silicon oxide layer is formed represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the silicon oxide layer of Minowa appears to meet all the physical limitations of the claims (i.e., a silicon oxide layer having a density of 1.8 to 2.2 g/cm3), the burden is on the applicant to demonstrate that the product resulting from the processes recited in claims 11-13 is patentably distinct from that of the prior art.
Regarding claims 14-16, Minowa et al. teach a preferred thickness for their adhesive layer of 20 to 100 nm (paragraph 0098). Since this range includes 20 nm, it overlaps the range of 4 to 20 nm and the courts have held that an overlapping range is sufficient to support an obviousness rejection. Additionally, the courts have held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. It is hard, if not impossible, to imagine ranges closer than 100 nm and "more than 100 nm," and one of ordinary skill in the art would have a reasonable expectation of success employing an adhesive layer with a thickness of slightly more than 100 nm since the range disclosed in the prior art is not a required range but rather a preferred one. See MPEP 2144.05 I.
Claims 1, 4, and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Minowa et al. (WO 2020/171091) in view of Yamane et al. (US 2016/0137878).
Minowa is directed to an antifouling layer attached to a glass substrate (paragraph 0001). An adhesive layer consisting mainly of silicon dioxide is formed between the glass substrate and the antifouling layer (paragraph 0040). Preferably, the density adhesive layer has a gradient, with the part of the adhesive layer closer to the glass substrate having a density of 1.75 to 2.25 g/cc while the part of the adhesive layer that is farther away has a density of 2.00 g/cc or less (paragraphs 0094-0095). The thickness of the adhesive layer is 20 to 100 nm (paragraph 0098). The antifouling layer contains a fluorine-containing organic compound, preferably a perfluoropolyether group-containing silane (paragraphs 0099-0100). The surface of the glass may be cleaned (paragraph 0126), such as by alkali (paragraph 0131) or plasma treatment (paragraph 0132). The antifouling layer may be formed by dip coating, vacuum deposition, or spraying (paragraph 0143).
Minowa do not teach that the perfluoropolyether group-containing silane has a structure according to formula (1), (4), or (7) as recited in claim 1.
Yamane ('878) is directed to water/oil repellent treatment agent comprising a fluorooxyalkylene group-containing polymer-modified silane and/or partial condensate thereof that maintains its surface properti3es even when exposed to elevated temperatures (paragraph 0002). The fluorooxyalkylene group-containing polymer-modified silane may have a structure of A-Rf-QZWa (paragraph 0013). The segment A-Rf- corresponds to A3-Rf- in formula (7) of the claims (paragraph 0014-0015). Q may have the structure -C(=O)-NH-(CH2)f- (paragraph 0021), Z may be a single bond (paragraph 0017), W may be -(CH2)l-Si(R3-a)(Xa) (paragraph 0018), and a may be 1 - wherein f is 2 to 4, l is 0 to 10, R is an alkyl group of 1 to 4 carbon atoms, and X is a hydrolysable group. Such a compound reads on formula (7) of the instant claims (e.g., with V being a single bond, e being 1, Y being a single bond or divalent hydrocarbon group, f being 1, and W of Yamane being W of the claims).
It would have been obvious to one of ordinary skill in the art to use the perfluoropolyether containing silane of Yamane ('878) for the antifouling layer of Minowa to provide the resulting article with an antifouling property that is maintained even when exposed to elevated temperatures.
Regarding claim 4, Yamane ('878) further teaches that the treatment agent may contain a fluorooxyalkylene group-containing polymer that has a structure that corresponding to formula (10) of claim 4 (paragraph 0074).
Regarding claims 11-13, the manner in which the silicon oxide layer is formed represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the silicon oxide layer of Minowa appears to meet all the physical limitations of the claims (i.e., a silicon oxide layer having a density of 1.8 to 2.2 g/cm3), the burden is on the applicant to demonstrate that the product resulting from the processes recited in claims 11-13 is patentably distinct from that of the prior art.
Regarding claims 14-16, Minowa et al. teach a preferred thickness for their adhesive layer of 20 to 100 nm (paragraph 0098). Since this range includes 20 nm, it overlaps the range of 4 to 20 nm and the courts have held that an overlapping range is sufficient to support an obviousness rejection. Additionally, the courts have held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. It is hard, if not impossible, to imagine ranges closer than 100 nm and "more than 100 nm," and one of ordinary skill in the art would have a reasonable expectation of success employing an adhesive layer with a thickness of slightly more than 100 nm since the range disclosed in the prior art is not a required range but rather a preferred one. See MPEP 2144.05 I.
Response to Arguments
Applicant's arguments filed 26 June 2026 have been fully considered but they are not persuasive.
The applicant argues that Minowa et al. fails to disclose or suggest the claimed film thickness of the silicon oxide underlayer, citing as support the results of Example 10 showing that the film's abrasion resistance is insufficient with an underlayer having a thickness of 20 nm since the abrasion test results of Example 10 would be result in a poor rating according to the applicant's evaluation criteria. The applicant asserts that this suggests the film density of Minowa et al. does not satisfy the requirements of the present invention.
This is not persuasive for the following reasons. First, it is noted that Minowa et al. explicitly teach a range that falls entirely within the range recited in claim 1 as well as a density that overlaps the range recited in claim 1. The applicant's assertion that the film density of Minowa et al. does not satisfy the limitations of claim 1 appears to be unsupported opinion that runs counter to the explicit teachings of Minowa et al. Additionally, it is noted that the claims as written do not require any particular degree of abrasion resistance. As such, the claims encompass articles exhibiting any degree of abrasion resistance, including none at all.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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