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 Rejections - 35 USC § 112
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 12 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.
Claim 12 recites “a compound represented by the following formula (3): [A-(OX)m-O-]jZ[-Si(R)nL3-n]g]” , which causes confusion. What does Z represent in formula 3? The examiner invites the applicant to clarify. For purposes of examination, Z is defined as “a (j+g) valent linking group” as defined in instant specification [0043].
Claim Analysis
Summary of Claim 1:
A composition characterized by comprising
a fluorinated ether compound having a poly(oxyfluoroalkylene) chain and a reactive silyl group, and
a crosslinking agent having a plurality of reactive silyl groups and no poly(oxyfluoroalkylene) chain.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 2, and 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iyer et al. (US 20130220177 as listed on IDS dated August 17, 2023).
Regarding claim 1, Iyer et al. disclose a coating composition of Example 1 comprising an HFPO-silane, and bis (trimethoxysilylpropyl) amine (DYNAS) (see Table 1), thereby reading on the fluorinated ether compound having a poly(oxyfluoroalkylene) chain and a crosslinking agent having a plurality of reactive silyl group and no poly(oxyfluoroalkylene) chain.
Regarding claim 2, Iyer et al. disclose the coating composition of Example 1 comprises bis (trimethoxysilylpropyl) amine (Table 1), which has 2 reactive silyl groups and thereby lying within the claimed range.
Regarding claim 10, Iyer et al. disclose the coating composition of Example 1 comprises an HFPO-silane (Table 1, [0133-0134]),, which has the repeating unit F(CF(CF3)CF2O)aCF(CF3)— [0133], thereby reading on the formula(1) of the instant claim.
Regarding claim 11, Iyer et al. disclose the coating composition of Example 1 comprises an HFPO-silane (Table 1, [0133-0134]),, which has the reactive silyl group Si(OCH3) [0134], thereby reading on Formula 2 wherein n is 0 and L is a hydroxy group.
Regarding claim 12, Iyer et al. disclose the coating composition of Example 1 comprises an HFPO-silane (Table 1, [0133-0134]), thereby reading on Formula (3) wherein A is a perfluoroalkyl group, X is a fluoroalkylene group having at least one fluorine atom, Z is a valent linking group as recited in the claim interpretation in paragraph [2], n is 0, L is a hydroxy group, m is 4-20, j is 1, and g is 3.
Regarding claim 13 and 14, Iyer et al. disclose the coating composition of claim 1 is coated on to glass substrates via dip coating [0136-0137], thereby reading on the base material of instant claim 13 and the method of producing a base material comprising forming a surface layer by a wet coating method of instant claim 14.
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.
Claims 3, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al. (US 20130220177 as listed on IDS dated August 17, 2023).
The composition of claim 1 is incorporated by reference.
Regarding claim 3, Iyer et al. disclose the coating composition of Example 1 comprises bis (trimethoxysilylpropyl) amine, thereby not reading on the formula (A) as recited on the instant claim.
However, Iyer et al. broadly teach examples of organosilane compounds including 1,8-bis(triethoxysilyl)octane among others [0084-0097], thereby reading on formula A wherein Ra1 is -La2-C(—Ya2-Ta2)m2(—Ra3)3-m2 group, La1 and La2 is a C1 alkylene group, Ya1 and Ya2 is a C2 alkylene group, Ta1 and Ta2 is a reactive silyl group, Ra2 is hydrogen, and m1 and m2 is 1. Therefore, it would have been obvious to one of ordinary skill in the art to add the organosilane compound broadly taught by Iyer et al.
Regarding claim 4, 6, and 7, Iyer et al. broadly teach the compound 1,8-bis(triethoxysilyl)octane as recited in the rejection for claim 3 above, thereby reading on La1 is a C1-10 alkylene group not having a fluorine atom, Ya1 is a C2-10 alkylene group not having a fluorine atom or an etheric oxygen atom, and
Ra2 is a C1-10 alkyl group not having a fluorine atom as recited in instant claim 4, wherein Ra1 is -La2-C(—Ya2-Ta2)m2(—Ra3)3-m2 group as recited in instant claim 6, and La2 is a C1-10 alkylene group not having a fluorine atom, Ya2 is a C2-10 alkylene group not having a fluorine atom or an etheric oxygen atom and
Ra3 is a C1-10 alkyl group not having a fluorine atom of instant claim 7.
Regarding claim 8, Iyer et al. do not teach the crosslinking compound of formula (A) wherein m2 is 3.
However, the amount of crosslinking is determined by the amount of reactive silyl groups in the crosslinking agent. The more reactive silyl groups are present, the more crosslinking can occur. Iyer et al. teaches the properties of the crosslinked networks can be tailored to the requirements of various different applications by varying the nature and relative amount of the monopodal fluorinated organosilane and the nature and relative amount of the multipodal organosilane and/or organosilazane [0015]. Therefore, the structure of the crosslinking agent would be considered a result effective variable by one of ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed structure cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of reactive silyl groups in the structure of the crosslinking agent in the coating composition of Iyer et al., to reach the desired amount of crosslinking since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding claim 9, Iyer et al. teach in the coating composition of Example 1 the amount of fluorinated ether is 4.5 g and the amount of crosslinking agent is 0.5 g (Table 1).
Iyer et al. do not teach the molar ratio of the content of crosslinking agent to the content of the fluorinated compound.
However, Iyer et al. teaches the properties of the crosslinked networks can be tailored to the requirements of various different applications by varying the nature and relative amount of the monopodal fluorinated organosilane and the nature and relative amount of the multipodal organosilane and/or organosilazane [0015]. Therefore, the molar ratio of crosslinking agent to the content of the fluorinated compound, would be considered a result effective variable by one of ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed molar ratio cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the molar ratio of crosslinking agent to the content of the fluorinated compound in the coating composition of Iyer et al., to reach the desired amount of crosslinking since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al. (US 20130220177 as listed on IDS dated August 17, 2023) in view of Bokisa (US 5928790 as listed on IDS dated August 17, 2023).
The composition of claim 1 is incorporated by reference.
Regarding claim 5, Iyer et al. do not teach the crosslinking agent of formula (A) wherein m1 is 3.
Bokisa teach a coating composition comprising an organosilane having the structure shown below
((R5O)3 --Si--R6)3 --C--R7
wherein each R5 is independently an alkyl, alkoxyalkyl, aryl, aralkyl or cycloalkyl group of less than 20 carbon atoms; R6 is a divalent hydrocarbon or polyether group of less than 20 carbon atoms; and R7 is a functional group represented by
Cn H 2nX
wherein n is from 0 to 20 and X is selected from the group consisting of amino, amido, hydroxy, alkoxy, halo, mercapto, carboxy, acyl, vinyl, allyl, styryl, epoxy, isocyanato, glycidoxy, and acryloxy groups (claim 5), thereby overlapping with the formula of claim 3 wherein m1 is 3, Ta1 is a reactive silyl group, Ya1 is a C2-10 alkylene group, La1 is a C1-10 alkylene group, and Ra1 is an amino, halogen, hydroxy, amido, or a thiol group. Bokisa offers the motivation that the composition improves adhesion to copper circuitry [col 5, line 8-22]. Iyer et al. is also concerned with copper substrates [0112]. Therefore, it would have been obvious to one of ordinary skill in the art to add the crosslinking agent of Bokisa to the composition of Iyer et al. with reasonable expectation that adhesion would improve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763
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