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 1-19 are pending.
Election/Restrictions
Applicant’s election, without traverse, of Group I and the following species, claims 1-6, 8-9, 12-15, in the reply filed on 11/26/25 is acknowledged.
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Claim(s) 7 (non-elected silane, e.g., because “t” must be 2 or more which conflicts with species), 10-11 (non-elected amide, because R62 and R63 must be bonded to each other in the elected species), and 16-19 (non-elected inventions) is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/26/25.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-6, 8-9, 12-15 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites R15 for S1 without any corresponding explanation for that variable such that the scope of that variable is unclear.
Claim 1 recites a formula for the amide that appears vague because it appears (based on the examples and elected species) that the formula is intended to encompass pyrrolidone compounds which require a carbon double bonded to an oxygen whereas the claimed formula appears to require a carbon bonded to an R63 group via an oxygen atom. The scope of the amide formula is thus vague. It appears that the formula is intended to be something like: N(R61)(R62)(C(=O)(R63)).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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) 1-6, 8-9, 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hisashi (JP 2018/150534, see machine translation) in view of Iyer et al. (U.S. 2011/0081496).
Regarding claims 1-6, 8-9, 12-15, Hisashi teaches a surface treating agent for providing antifouling ([0223], as in claim 15, though this intended use is not given patentable weight) that comprises a solvent ([0262], as in claim 14), fluorine or silicone oil ([0227], as in claim 13), and a perfluorosilane compound which corresponds to the claimed silane compound and elected species ([0017], as in claims 2-6). That is, in formula C1 of Hisashi (with both gamma variables being 1), Rf may be CF3 ([0025]-[0026]), followed by PFPE overlapping the claimed/elected perfluoroether groups with CF2 being on the right side ([0027], [0047], the occurrence order may be arbitrary as in the present application), followed by X4 being CONHCH2 ([0148]-[0149]), followed by the carbon atom in formula C1 with a (CH2)3Si(OCH3)3 group for each of three Re groups ([0162]-[0174], with k2 = 0, l2 = 3, m2=0, with Y being (CH2)3, n2 being 3, and R85 being methoxy).
Hisashi calls for a solvent as explained above, but does not disclose amide compounds. However, Iyer is also directed to antifouling coatings with perfluoropolyether silane compounds and discloses that known solvents capable of dissolving such perfluoropolyether silane compounds and lowering viscosity include methyl-pyrrolidone (see abstract, [0020], [0053], disclosing pyrrolidinone which is another name for pyrrolidone) as in the elected species and claims 9 (inherently the claimed boiling point) and 12, and optionally combined with other solvents (such that the other solvents would correspond to the solvent of claim 14), such that it would have been obvious to have used such solvents (including methyl-pyrrolidone) to dissolve the perfluoropolyether silane compound of Hisashi and lower viscosity as taught by Iyer.
Although the amount is not disclosed, the amide compound amount in the composition would have been obvious to adjust to within the range of claim 1 and claim 8, as part of the optimization of the viscosity of the composition as an art recognized result effective variable (see above). Furthermore, since the perfluoropolyethersilane compound in Hisashi provides the antifouling properties, that amount would have also been obvious to adjust as part of optimizing the antifouling properties (such that the ratio of the perfluorosilane compound and the amide compound, as in claim 1, consequentially also would be optimized). Additionally, since the amide compound is a solvent used during coating, the amount would also change based on evaporation (i.e., would transition from the initial solvent content to zero as the solvent evaporates).
Furthermore, 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 re Aller, 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 re Hoeschele, 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 re Kulling, 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.”).
Conclusion
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 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 Monday-Friday, 6:00 am - 5:00 pm.
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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 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787