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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-8 in the reply filed on 1/21/2026 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/21/2026. The restriction is made final.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/13/2024, 2/12/2024 and 11/28/2023 have been considered by the examiner.
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 (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 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.
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.
Claim(s) 1-5 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fournand et al (US 2015/0331152)
Regarding Claims 1-5 and 7-8:
Fluorine compound chemically bonded to base:
Fournand et al (US 2015/0331152) discloses a composition which bonds to the substrate via a silicon atom Si-X1 group capable of forming a covalent bond with a OH group of the substrate or the M1 or M2 (Abstract)[0004][0026-0030](meeting the limitation for fluorine compound chemically bonded to the base via at least a siloxane bond of claim 1) In addition to the function bonded to the silicon atom capable of forming a covalent bond with a OH function of the substrate and/or M1, M2 also comprises at least one hydrophilic or hydrophobic and/or oleophobic groups [0069-0070]
REGARDING BASE:
Fournand discloses a composition for use as coatings (meeting the limitation for a film) for metal oxides such as silica and tantalum oxide [0038] (meeting the limitation for a base of silicon oxide or tantalum oxide of claim 1)
The intended use as an ink repellent does not further limit the claimed composition which is recited by its chemical components and structures. If the body of a claim fully and intrinsically sets forth all of 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. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (
REGARDING FLOURINE COMPOUND A
The composition comprises substituted silanes M1 of high molecular weight and substituted silane M2 of low molecular weight ([0004]
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see claim 18 of reference (overlapping the range of claim 5)
Fournand teaches examples using M1 and M2 which may be commercial products:
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Commercial compositions of M1 materials are the compositions KY130 commercialized by Shin-Etsu Chemical, the composition OPTOOL DSX™ (a fluorine-based resin comprising perfluoropropylene moieties) commercialized by Daikin Industries, the composition AES4 commercialized by Daikin Industries. OPTOOL DSX™ is the most preferred coating composition for the M1 material.
[0098] Commercial compositions of M2 materials are the compositions OF110™, a fluoro alkyl silane or OF210™ commercialized by Optron, or Gelest 1 (a bis(2-hydroxyethyl)-3-aminopropyltriethoxysilane commercialized by Gelest.
The examiner notes that the commercial product Optool as above set forth has an average molecular weight of 3900 meeting the limitation of claim 1 for 1500 or more and is a fluorine compound having a linear molecular structure with siloxane only at one end.
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an average molecular weight of 3900
(See instant specification as below cited recognizing said formula and molecular weight, etc.)
(meeting the instant compound A for a linear molecular structure with an average molecular weight of 1500 or more and a siloxane structure at one end of the linear molecule and meeting CF3 group of claim 3 – “F-CF2” meeting CF3)(meeting claim 7 for recited structures CF2 CF2 CF2 O)
(The examiner notes that the commercial product Optool used in the reference for M1 are those of the instant application and meet the claim limitations and claimed formulae possessing the structural units of instant claim 7.)
SEE INSTANT SPECIFICATION/CITING TO USPGpub:
Optool DSX is recognized in the instant specification as a material with a reactive silyl group only at one end and a PFPE structure in the main chain [0044] instant specification
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[0074] FA-2
A compound represented by Structural Formula (7) and having an average molecular weight of 3900, specifically, OPTOOL DSX manufactured by Daikin Industries, Ltd.
The instant application shows
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REGARDING FLUORINE COMPOUND B
The prior art teaches:
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Where c, d e, f an integer from 0-10 and at least one of c, d, e, f are different from 0. R is hydrolysable group or OH [0090]
(meeting the limitation for a fluorine compound with a siloxane structure at one end esp. where R is an alkoxy group of claim 1 and meeting claim 4 for CF3 group - i.e. F CF2 is CF3)
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The composition further comprises compounds of formulae set forth in the reference at [0076-0090] such as:
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Meeting claim 6 when Y is the OR group where R is alkyl i.e. methoxy of the referenced and when R2 is C1 alkyl.
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Further Regarding Claims 2, 5 and claim 8
Fournand discloses M1 may have an average molecular weight of 4000 g mol or more [0059] (meeting claim 5) M2 will have an average molecular weight of 900 g/mol or less [0071] (within the range of claim 2)
The composition comprises substituted silanes (M1 of high molecular weight and substituted silane M2 of low molecular weight ([0004]
M1 will have an average molecular weight of 4000 g mol or more [0059] meeting instant claim 5
See MPEP 2144.05(I): "In the case where the claimed ranges "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)"
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see claim 18 of reference (overlapping the range of claim 5)
M1 will have an average molecular weight of 4000 g /mol or more [0059] (meeting claim 5) M2 will have an average molecular weight of 900 g/mol or less [0071] (within the range of claim 2)
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(Clam 19 reference)
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The prior art teaching the claimed compound of clam 1 with the claimed molecular mass will meet and/overlap the clamed ranges of clam 8 for fluorine molecules (the number of molecules will correlate at least in part to the molecular weight)
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not teach the composition comprising the compound B of formula (1) of instant claim 6 (the prior art teaches hydrolysable groups not CH3 groups of claim 6) in combination with the claimed compound B with the variation in molecular weight on the claimed base of silicon oxide or tantalum oxide as set forth in the instant claims. There is no motivation to alter the teachings of the prior art to include a fluorine compound of instant claim 6.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action for example:
(US 9,146,462) discloses an ink repellent ( A) composition comprising
Compound (a 1):
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(C12 L25-30)
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C12 L20-30) and compound a 3:
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(IC 12 L30-40)
The composition is an ink repellant composition and comprises in addition to the silane of a-1 and a-2 and a-3 an additional hydrolysable silane compound a-5 (C13 L27-35)
(US 9658467)
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732