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 .
Claim Objections
Claim 12 is objected to because of the following informalities: inconsistent terminology with respect to “fluoro(poly)ether group-containing silane compound (claim 12) as opposed to “fluoropolyether group-containing silane compound” as recited in claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 9 is 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.
Regarding claim 9, there is a lack of antecedent basis for ‘the formula (S4)’ and for Rsi to be selected therefrom. It is noted that proper antecedent basis can be found in claim 8.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 10 depends, defines XA as a single bond or –(X51)p5- where X51 is selectable from a Markush group which includes phenylene, -O-, and –(CH2)n5- (an alkyl not an alkylene), among others. However, the recitation of claim 10 redefines XA as selectable from a single bond or the formula –(R51’)p5’-(X51’)q5’-(R51’)p5’’-, wherein R51’ is a C1-6 alkylene group. The definitions as set forth in claim 1 regarding XA does not provide support for an –(C1-6 alkylene)-O-(C1-6 alkylene)- and therefore claim 10 is improper for failing to include the subject matter of the claim upon which it depends. The same applies with respect to XB of claim 10 as defined by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 10 depends, defines XB as a single bond or –(X61)p6- where X61 is selectable from a Markush group which includes phenylene, -O-, and –(CH2)n5- (an alkyl not an alkylene), among others. However, the recitation of claim 11 redefines XB as a C1-6 alkylene group. The definitions as set forth in claim 1 regarding XB does not provide support for a C1-6 alkylene and therefore claim 11 is improper for failing to include the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mohara et al. (WO 2016006584 A1; using Clarivate Analytics machine translation for English language citations).
Regarding claims 1-11, Mohara teaches perfluoro(poly)ether modified amide silane compounds of formula (1) (readable over instant formula (1) as outlined below)
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152
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, wherein: Rf represents a C-1-16 alkyl group which may be substituted with fluorine (pg2); wherein PFPE represents –(OC4F8)a-(OC3F6)b-(OC2F4)c-(OCF-2-)-d, where a, b, c and d are 0-200, or –(OC2F4-Ra)n’ (see pg3)(Rr-PFPE reading over instant RF1); wherein X1 is a single bond or a divalent organic group including C1-20 alkylene, -(CH2)s-O-(CH2)t, -(CH2)s-NR6-(CH2)t (see pg4)(X1 readable over instant XA); wherein R1 is a hydrogen, a C1-6 alkyl group, or a phenyl group (see pg4)(R1 readable over instant R1); wherein R2 is an -X2-SiQ1kY-13-k, where X2 is a divalent organic group (X2 readable over instant XB and SiQ1kY-13-k- is readable over instant RSi), where Q1 is a hydrogen, a lower C1-6 alkyl, or a phenyl group, where Y1 is -OR5, where R5 is a C2-10 alkyl group, and p is 1 (see pg4).
Regarding claims 12-14, Mohara teaches the perfluoro(poly)ether modified amide silane compound as set forth in claim 1 above, and further teaches such is a surface treating agent (abstract; pg6) and may further be diluted with a solvent (pg6), and may contain other additives including fluorine oils, silicone oils, catalysts, etc. (pg6; pg8-9).
Regarding claim 15, Mohara teaches the perfluoro(poly)ether modified amide silane compound as set forth in claim 12 above. Mohara further teaches the surface treatment composition provides antifouling properties, water repellency properties, etc. (pg12).
Regarding claims 16-17, Mohara teaches the perfluoro(poly)ether modified amide silane compound as set forth in claim 1 above, and further teaches articles thereof (pg9) wherein the composition is applied to a base material as a layer thereon (pg9) by wet or dry coating methods (pg10). Mohara teaches the articles include optical materials (pg12).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
A) Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/374,850 (reference application; a notice of allowance has been mailed in the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially overlapping fluoropolyether group-containing silane compound of substantially similar formula (1) or (2), and to substantially similar coating compositions, ‘agents’, and articles. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claims 1-12 and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 17-22 of copending Application No. 19/295,821 (reference application; a notice of allowance has been mailed in the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially overlapping fluoropolyether group-containing silane compound of substantially similar formula (1), and to substantially similar coating compositions, ‘agents’, and articles. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
C) Claims are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,116,456. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant application and granted patent are directed to substantially overlapping fluoropolyether group-containing silane compounds of substantially similar formula (1) or (2).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767
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