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 .
Status of the Claims
Claims 1-11 are pending and under current examination.
Claim Objections
Claims 1-11 are objected to because of the following informalities:
Please remove the line numbers in the margin of claims 1-11 as they are distracting and not necessary.
The word “coating” is repeated in claim 6, line 1.
The examiner recommends deleting the phrase “in the antibacterial composition for glass coating” in claim 6, lines 2-3 because it is redundant. The solvent is already listed as present in the composition for glass coating of claim 1.
The indefinite article “A” is missing at the beginning of claim 10.
Appropriate correction is required.
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.
Claims 1-11 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the term “structure former” in line 4. This renders the claim indefinite because it is wholly unclear what substances are embraced or excluded by the term. The type of structure that must be formed is also not identified. As such, one of ordinary skill in the art cannot unambiguously ascertain the metes and bounds of the instant invention. In the interest of compact prosecution and in the absence of a formal definition in the specification, the term “structure former” is given its plain meaning, more specifically the examiner considers the term to read on any substance that causes any change to the structure of the composition or to the structure of the substances that are present in the composition.
Claim 2 recites the phrase “wherein the copper nitrate is an antibacterial composition for glass coating”. This phrase is indefinite because it is unclear whether the claim reads on copper nitrate alone or whether it must be present within another composition that has been added to the antibacterial composition of claim 1, and if so, what further structural limitations are imposed on the claim.
Claim 2 recites the limitation "an average particle diameter (D50)" in reference to the copper nitrate; however, neither claim 1 nor claim 2 requires the copper nitrate to be in the form of particles prior to introduction of the limitation on particle size. Therefore, there is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites “alcohol-based”, “silanol-based”, and “alkoxy-silane-based”. Each of these terms renders the claim indefinite because it is unclear the extent to which any substance respectively must resemble an alcohol, silanol, or alkoxy-silane in order to fall within the scope of the terms.
Claim 4 recites the phrase “wherein the alcohol-based solvent is an antibacterial composition for glass coating”. This phrase is indefinite because it is unclear whether the claim reads on copper nitrate alone or whether it must be present within another composition that has been added to the antibacterial composition of claim 1, and if so, what further structural limitations are imposed on the claim.
Claim 4 recites “alcohol-based”. Noting that the claim only requires the alcohol-based solvent to contain alcohols of C1 to C10, this term renders the claim indefinite because it is unclear the extent to which a substance must resemble an alcohol in order to fall within the scope of the terms.
Claim 4 recites “alcohols of C1 to C10”. This renders the claim indefinite because it is unclear what the “C” refers to therefore the substance comprising the alcohol is undefined. “C” conventionally refers to carbon; however, in this case the claim does not identify what the carbon is part of, or whether it is part of anything. Amending the claim to recite e.g. C1 to C10 alkane, if such were intended and fully supported in the as-filed specification, would overcome the rejection.
Claim 5 recites the phrase “wherein the silanol-based solvent is an antibacterial composition for glass coating”. This phrase is indefinite because it is unclear whether the claim reads on a silanol-based solvent alone or whether it must be present within another composition that has been added to the antibacterial composition of claim 1, and if so, what further structural limitations are imposed on the claim.
Claim 5 recites “silanol-based”. Noting that the claim only requires the silanol-based solvent to contain a trialkylsilanol, this term renders the claim indefinite because it is unclear the extent to which a substance must resemble an silanol in order to fall within the scope of the terms.
Claim 6 recites the limitation "the chemical formula 1" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the phrase “wherein the structure former is an antibacterial composition for glass coating”. This phrase is indefinite because it is unclear whether the claim reads on a structure forming substance alone or whether it must be present within another composition that has been added to the antibacterial composition of claim 1, and if so, what further structural limitations are imposed on the claim.
Claim 9 recites the phrase “wherein the polysilazane is an antibacterial composition for glass coating”. This phrase is indefinite because it is unclear whether the claim reads on a polysilazane alone or whether it must be present within another composition that has been added to the antibacterial composition of claim 8, and if so, what further structural limitations are imposed on the claim.
Claim 9 recites “basic skeleton structure” in line 5. This renders the claim indefinite because it is unclear the extent to which the claimed polysilazane can vary from the recited structure containing (Si-N) bonds.
Claim 9 is indefinite because the claim requires the polysilazane to have a structure falling within the scope of chemical formula 2, but does not recite chemical formula 2 in the claims, but rather this section is blocked out. As such, the scope of the claim is totally unclear.
Claim 9 recites “may indicate a linking point” in line 12. The phrase “may indicate” implies this interpretation is optional and therefore does not limit the meaning of the asterisk, and as such the asterisk could also indicate other, non-recited features.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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, 3, 4, 6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tomonaga et al. (US 2002/0114956; publication date: 08/22/2002), as evidenced by Kahlon and Lower (The Hydronium Ion, Chemistry LibreTexts, online; publicly available from at least 2020).
With regard to claim 1, in para 0056, Tomonaga discloses a glass coating composition (title, abstract disclose a photochromic film for glass), “coating solution D”, containing 10.4 g of tetraethoxysilane, 0.6 g of copper nitrate, 78 g of ethanol, 1.3 g of chloroplatinic acid and 7 g of a 1% aqueous solution of nitric acid, which were mixed and stirred at room temperature for two hours to obtain coating solution D for the upper layer film (0056). This composition contains two substances falling within the scope of the term “solvent” as used in the instant application. Ethanol is a C2 alcohol (limitations of instant claims 3 and 4) and tetraethoxysilane falls within the scope of the alkoxy-silane based solvent as delimited in instant claim 6, wherein x is equal to 0, and R5 is ethyl (i.e. C2 alkyl). The total amount of substances in the composition adds up to 97.3 g. Thus, the composition contains 0.62% copper nitrate (0.6/97.3*100%) and 90.8% of the solvents ethanol and tetraethoxysilane ((10.4+78)/97.3*100%). With regard to the term “structure former” recited in instant claim 1, as noted above in the rejection under 35 USC 112(b), the term is considered to read on anything that affects the structure of the composition. As the acids affect the structure of the water molecules in the composition (see Kahlon: the presence of H+ ions from an acid changes the structure of water, converting it to the hydronium ion) the examiner considers the nitric acid and chloroplatinic acid to fall within the scope of the term “structure former”, given the plain meaning of the term.
With regard to claim 10, the coating solution D is coated on top of a lower layer, referencing the preceding para (0055) in which the lower layer has been coated on to a soda lime glass substrate. Thus, Tomonaga discloses a glass comprising a glass substrate and a coating layer formed from coating solution D.
With regard to the limitation of the instant claims requiring the composition and coated glass to be antibacterial, please refer to MPEP 2112.01(II): A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In this case, the coating composition and the coated glass contain the antibacterial substance copper nitrate, and therefore inherently possess the feature of being antibacterial.
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.
Claims 1, 3, 4, 6, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tomonaga et al. (US 2002/0114956; publication date: 08/22/2002), as evidenced by Kahlon and Lower (The Hydronium Ion, Chemistry LibreTexts, online; publicly available from at least 2020).
As noted in the anticipation rejection above Tomonaga anticipates claims 1, 3, 4, 6, and 10 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103(a) over Tomonaga for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
With regard to claim 11, the example upper layer coating using the coating solution D described in para 0056 in the anticipation rejection above has a thickness of 100 nm and therefore does not anticipate this limitation; however, Tomonaga discloses a range in thickness of from 30 to 2,000 nm for the upper layer (0048). This range overlaps with the range for thickness of the coating recited in instant claim 11. See MPEP 2144.05: 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).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tomonaga et al. (US 2002/0114956; publication date: 08/22/2002) as applied to claims 1, 3, 4, 6, 10, and 11 above, and further in view of Back et al. (US 2022/0144694; publication date: 05/12/2022).
With regard to claim 8, the relevant disclosure of Tomonaga is set forth above. Tomonaga does not disclose a polysilazane or dimethyldiphenyl polysiloxane.
Back, in the analogous art of copper and silicon containing solutions for coatings (abstract, title), discloses that silica-containing coating layers may be formed from tetraethylorthosilicate or from polysilazanes (0043, 0044).
It would have been prima facie obvious to add a polysilazane to Tomonaga’s coating solution D containing tetraethoxysilane (i.e. tetraethylorthosilicate CAS Registry No: 78-10-4) because both of these substances were known to serve the same purpose. See MPEP 2144.06.
With regard to claim 9, as noted in the indefiniteness rejection above, the structure is currently totally undefined and therefore the examiner considers any polysilazane to fall within the scope of instant claim 9.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 106243885; publication date: 12/21/2016) in view of Santra et al. (US 2015/0098974; publication date: 04/09/2015).
With regard to instant claim 1, Hu discloses an antimicrobial water paint comprising nanometer silver 8-15%, trimethyl hydroxyl silicon Alkane 2-5%, nano silicon 10-18%, sodium alginate 1-2%, deionized water 8-15%, aminopropyl triethoxysilane 10-15%, n-butyl alcohol 10-40%, 3,5-diaminobenzoic acid 15-25%, amido silicon oil 6-8% (claim 1). The composition contains from 8-15% of an antimicrobial agent, up to 75% total solvents (trimethyl hydroxyl silicon Alkane 2-5%, deionized water 8-15%, aminopropyl triethoxysilane 10-15%, n-butyl alcohol 10-40%), and 1-2% sodium alginate, which the examiner considers to fall within the scope of “structure former” as the alginate would thicken the composition.
Hu does not disclose copper nitrate.
Santra discloses silica nanoparticles of 2-50 nm in size (0067) that are treated with a copper source including copper nitrate (0065) that have antimicrobial properties (Santra: claim 4).
It would have been prima facie obvious to combine the silica containing copper nitrate nanoparticles disclosed by Santra with the silver nanoparticles disclosed by Hu because these two substances were known to serve the same purpose (providing antimicrobial effect) as of the instant effective filing date (see MPEP2144.06). With regard to the amount of copper nitrate required by instant claim 1, it would have been obvious to optimize the total quantity of antibacterial agent within the range for this category of substance (the silver particles) disclosed by Hu.
With regard to the preamble of instant claim 1 requiring the composition to be for glass coating, this is an intended use. Absent evidence the composition could not be coated onto the glass, the examiner considers the invention of Hu/Santra to render obvious the instant invention.
With regard to claim 2, the range in particle size of Santra’s particles overlaps with the range recited in the instant claims (see MPEP 2144.05).
With regard to claim 3, the composition contains alcohol-based solvent (n-butanol), a silanol-based solvent (trimethyl hydroxyl silicon), and an alkoxy-silane-based solvent (aminopropyl triethoxysilane).
With regard to claim 4, the alcohol-based solvent, n-butanol, is a C4 alcohol.
With regard to claim 5, the silanol based solvent, trimethyl hydroxyl silicon, is a trialkylsilanol.
With regard to claim 6, although the composition described in claim 1 does not include a compound falling with the scope of chemical formula 1, the composition may contain TEOS (tetraethylorthosilicate), i.e. x is equal to 0, and R5 is ethyl.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 106243885; publication date: 12/21/2016) in view of Santra et al. (US 2015/0098974; publication date: 04/09/2015) as applied to claims 1-6 above, and further in view of Kim et al. (Phys Rev Lett 99(2); publication year: 2007).
The relevant disclosure of Hu is set forth above.
Hu does not disclose the density of the composition.
Kim discloses that gravitational stability [of suspensions] can be enhanced by density matching the particles to the suspending fluid (page 1, right col).
It would have been prima facie obvious to ensure the density (i.e. specific gravity) of the components of the solution closely matched the density of the particles in Hu’s suspension. The artisan of ordinary skill would have been motivated to do so in order to enhance the stability of the suspension, and would have had reasonable expectation of success because this was a known method to do so as of the instant effective filing date.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 106243885; publication date: 12/21/2016) in view of Santra et al. (US 2015/0098974; publication date: 04/09/2015) as applied to claims 1-6 above, and further in view of Back et al. (US 2022/0144694; publication date: 05/12/2022).
With regard to claim 8, the relevant disclosure of Hu and Santra are set forth above. Neither reference discloses a polysilazane or dimethyldiphenyl polysiloxane.
Back, in the analogous art of copper and silicon containing solutions for coatings (abstract, title), discloses that silica-containing coating layers may be formed from tetraethylorthosilicate or from polysilazanes (0043, 0044).
It would have been prima facie obvious to add a polysilazane to Hu’s suspension containing tetraethoxysilane (i.e. tetraethylorthosilicate CAS Registry No: 78-10-4) because both of these substances were known to serve the same purpose. See MPEP 2144.06.
With regard to claim 9, as noted in the indefiniteness rejection above, the structure is currently totally undefined and therefore the examiner considers any polysilazane to fall within the scope of instant claim 9.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617