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 § 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.
Claims 1-5, 7-10, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Walter et al. (US 2006/0193988 A1).
Regarding Claims 1-5 and 16-17, Walter discloses a coating for metal/metallic substrates comprising a mixture of hydrolyzed or partially hydrolyzed Silanes A and B (Abstract). The Silane A is fluorine-free, such as a glycidyloxyalkyltrialkoxysilane, including 3-glycidyloxypropyltriethoxysilane or 3-glycidyloxypropyltrimethoxysilane (paras 0012, 0022-0023, 0041-0042), which corresponds to the compound of Formula (II) wherein R5 is an epoxy group according to Claims 1 and 16 and R6, R7, and R8 are each C1 or C2 alkyl according to Claims 1 and 17. The Silane B is fluorine-containing, such as fluorosilane based on ethoxysilane and/or based on methoxysilane, including tridecafluorooctyltrialkoxysilane (paras 0013, 0073-0074) which corresponds to the compound of Formula (I) wherein R1 is a C8 alkyl comprising fluorine atoms according to Claims 1, 3, 4, and 5, and R2, R3, and R4 each include C1 or C2 alkyl according to Claims 1 and 17.
The silanes are hydrolyzed and mixed together with water to form an aqueous composition and a cured coating (paras 0011-0015) that comprises “monomers, oligomers, polymers, copolymers and/or reaction products with further components owing to hydrolysis reactions, condensation reactions and/or other reactions. The reactions take place primarily in the solution, during drying and, where appropriate, curing of the coating” (para 0159).
Since the Silanes A and B, corresponding to the claimed compounds of Formulas (I) and (II), are hydrolyzed, mixed together, allowed to at least partially condense, and then cured, the cured product would be expected to comprise a cross-linked coating as claimed in Claim 1, having carbon-silicon bonds as claimed in Claim 2. This would also necessarily form covalent oxygen-silicon bonds with the metal/metallic substrate as claimed in Claim 1.
In light of the overlap between the claimed article and that disclosed by Walter, it would have been obvious to one of ordinary skill in the art to produce an article that is both disclosed by Walter and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claims 7-9, Walter discloses all the limitations of the present invention according to Claim 1 above. Walter further discloses the substrate may comprise iron, copper, or alloys thereof (para 0011) including steel (para 0158).
Regarding Claim 10, Walter discloses all the limitations of the present invention according to Claim 1 above.
While there is no disclosure that the article of Walter is a watch component as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. watch component, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art article and further that the prior art structure which is an article identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Walter as applied to claim 1 above, and further in view of Shimada et al. ( WO 2015/146861 A1).
Regarding Claim 6, Walter discloses all the limitations of the present invention according to Claim 1 above. While Walter discloses the Silane B is fluorine-containing, such as fluorosilane based on ethoxysilane and/or based on methoxysilane (paras 0013, 0073-0074), Walter does not disclose the Silane B is a fluorosilane which corresponds to the compound of Formula (I) having R1 according to Claim 6.
Shimada discloses a coating for metals (para 0051) comprising a polyfluoroalkylpolymer represented by the general formula:
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wherein each of R1 and R2 represents an alkylene group having 1-10 carbon atoms, R3 represents an alkyl group having 1-3 carbon atoms, m represents an integer of 1-50 (paras 0019-0020), and C3F7 may be CF3-CF2-CF2- (para 0023). When R1 represents an alkylene group having 1 carbon atom, R2 represents an alkylene group having 3 carbon atoms, and m represents 1, the polyfluoroalkylpolymer corresponds to the compound of Formula (I) wherein R1 is a substituent according to Claim 6, and R6, R7, and R8 are each C1-C3 alkyl. Shimada further discloses the polyfluoroalkylpolymer can be hydrolyzed and condensed “by any known method” (para 0040). The polyfluoroalkylpolymer imparts durable water and oil repellency and antifouling properties (para 0039).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Walter to incorporate the teachings of Shimada and use the polyfluoroalkylpolymer of Shimada as the fluorine-containing Silane B of Walter. Doing so would impart durable water and oil repellency and antifouling properties.
Response to Arguments
In light of Applicant’s amendment filed 12/17/2025, the 35 USC 103 Rejections of record are withdrawn. New grounds of rejection are 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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 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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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787