CTNF 18/549,777 CTNF 85770 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 1-3, 5-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (US 2021/0095079). It is noted that Kawakami was filed on 9/23/2020 and claims foreign priority to JP2019-177517 filed on 9/27/2019. This is prior to effective filing date of the instant application and thus Kawakami is prior art under 102(a)(2) . Kawakami teaches a polysiloxazane compound (¶ 148) which can include an additional organosiloxane compound (¶ 153) to form a curable composition (¶ 171-172). Kawakami teaches the organosiloxane compound include alkoxysilyl groups (¶ 159) which are hydrolysable silyl groups and meet claimed component (B). Kawakami teaches the polysiloxazane is derived from reacting an unsaturated bond containing polysiloxazane compound (8) PNG media_image1.png 102 590 media_image1.png Greyscale with a mercapto group containing silane (¶ 22-23) where examples of the mercapto group containing silane include mercaptopropyltrimethoxysilane (¶ 114). This polysiloxazane corresponds to the claimed component (A). The polysiloxazane compound (8) of Kawakami meets claimed component (A). The monomeric unit with the subscript ‘c’ corresponds to the claimed unit with the subscript ‘b’ (the vinyl containing unit), the monomeric unit with the subscript ‘b’ corresponds to the claimed unit with the subscript ‘a’ (the Si-(NH) unit), the monomeric unit with the subscript ‘a’ corresponds to the claimed unit with the subscript ‘d’ (the polysiloxane containing unit). Kawakama teaches the a, b, and c are greater than 0 and less than 1, and are numbers that satisfy a+2b+2c = 1 (¶17). This results in a range of a, b, and c which can have any relation to each other, and thus necessarily overlap the molar ratios of the claims. Given the range of mercapto group containing silane is 0.1-1.5 mol per mol of unsaturated bond (¶ 118), this results in a ratio of mercapto groups to vinyl groups of 0.1/0.9 to 1/0, which overlaps the claimed mole ratio of c:b. Kawakama teaches n is 11-500 (¶ 17) which overlaps the claimed range of n. Kawakama teaches the weight average molecular weight of the polysiloxazane is 3,000-300,000 (¶80) which overlaps the claimed range. While Kawakami does not explicitly recite the number average molecular weight, the number average weight is less than the weight average molecular weight, mathematically, and thus the number average molecular weight is less than 3,000-300,000, which overlaps the claimed range. The reaction of the mercapto group containing silane reacts with the vinyl group (¶ 110) and the amount of mercapto group containing silane is 0.1-1.5 mol per mol of unsaturated bond (¶ 118). Kawakami teaches an example where a polysiloxazane is formed with 0.300 mol vinyl groups (¶186) and 0.086 mol mercaptopropyltrimethoxysilane (¶187). This results in a product in which at most 0.086 mol of the vinyl groups have been reacted to form addition product (corresponding to claimed monomeric unit with the subscript ‘c’). In other words, Kawakami teaches examples in which not all of the vinyl groups have been reacted, indicating both vinyl groups and addition product groups are present. The reaction with mercaptopropyltrimethoxysilane results in a monomeric unit that satisfies R3, m and R2. Kawakama teaches R4’ can be a single bond (¶ 21) and R3 represents a monovalent C1-10 hydrocarbon group (¶ 16) which includes methyl. Additionally, the examples of Kawakama use hexyltrichlorosilane, vinylmethyldichlorosilane and dimethylsiloxane (¶ 185) which gives methyl groups of the silicon atoms as required by claimed formula (1) and which gives hexyl group which meets claimed variable R1. Kawakama teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris , 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson , 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff , 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari , 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Kawakama suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Kawakama. See MPEP 2123. Kawakama teaches the organosilane compound corresponding to formula (16) PNG media_image2.png 30 230 media_image2.png Greyscale (¶ 153) where R6 is a hydrocarbon group (¶ 154, 16) and d and 3 are 0-2 (¶154). When d and e are 0 or 1, then the component (B) has a terminal having a dialkoxysilyl or trialkoxysilyl group and meets claim 5. Kawakama teaches the amount of organosilane is 1-50 wt% by weight of the polysiloxazane compound (¶ 169) which corresponds to a ratio of 1-50 pbm relative to 100 pbm polysiloxazane and meets the range of claim 6. Kawakama teaches a catalyst is present (¶ 150) and aluminum and tin compounds such as dioctyl tin diluaurate (¶ 150-151) and meets claims 7-8. Kawakama teaches a solvent is present (¶ 148) such as aliphatic hydrocarbon solvents (¶ 149) which meets claims 9-10. Kawakama teaches an example where an isoparaffin solvent is added to adjust the non-volatile matter to 50% (¶188) which corresponds to about 200 parts solvent per 100 parts polysiloxazane and meets claim 11. Kawakama teaches the composition can be coated on an inorganic material or organic material such as glass (¶175-177) for a car coating (¶ 8) which meets claims 12 and 14. Kawakama teaches the composition can be coated (¶ 235) and cured (¶40) meeting claim 15 . 07-21-aia AIA Claim (s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (US 2021/0095079) in view of Ogawa (JP 2004-051810). As the JP reference is not in English, citations are made to the attached translation . The discussion with respect to Kawakama above is hereby incorporated by reference. Kawakama does not explicitly recite the kinematic viscosity as required by claim 4. However, Ogawa teaches coatings for glass (pg. 2) which include organopolysiloxanes having alkoxysilyl groups having a kinematic viscosity of 20-100 cs (pg. 5) which corresponds to 20-100 mm2/s. It would have been obvious to one of ordinary skill in the art to use a kinematic viscosity at taught by Ogawa because if the corresponding molecular weight is too small the falling property of water droplets will be poor and if too large, the ease of application and wiping becomes poor and durability deteriorates (pg. 5). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm. 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, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ROBERT C BOYLE/Primary Examiner, Art Unit 1764 Application/Control Number: 18/549,777 Page 2 Art Unit: 1764 Application/Control Number: 18/549,777 Page 3 Art Unit: 1764 Application/Control Number: 18/549,777 Page 4 Art Unit: 1764 Application/Control Number: 18/549,777 Page 5 Art Unit: 1764 Application/Control Number: 18/549,777 Page 6 Art Unit: 1764 Application/Control Number: 18/549,777 Page 7 Art Unit: 1764