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 .
DETAILED ACTION
Claims 12-15 withdrawn
Claims 1-11 pending and elected
Election/Restrictions
Applicant’s election without traverse of claims 1-11 in the reply filed on 12/04/2025 is acknowledged.
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 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 limitation "the outer surface" in page 2, line 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 1-4 state that “R1” is selected for a list in page 2-5, in formulas (I), and then in formulas (II), all have the same “R1” have a different list that is selected. Therefore, the examiner suggest renaming the “R”s in the second formula to avoid uncertainty and precent a clear claim language.
Claims 2-4 have similar chemical structure of formula (I) to formula (I) in claim 1, with the same variables and species. Therefore, it appears that the applicant have amended claim 1 using claim 6, without deleting claims 2-4.
Claims 2-4 have formula (II) which is similar to formula (II) in claim 1, with one different, that claims 2-4 have “X” to be hydrolysable group. However, the instant specification in paragraph [0100] state that the hydrolysable group is an alkoxy. Where formula (II) stat that “R1” include alkoxy. Therefore, formula (II) in claim 1, state “(R1)3Si-Y-Si(R2)3” where R1 and R2 include alkoxy group, and formula (II) in claims 2-4, state “(R1) aX13-aSi-Y-Si(R2)aX23-a” where R1, R2, X1 and X2 include alkoxy groups. Leading to having all formulas (II) in claims 14 overlapping with each other.
Claim Rejections - 35 USC § 112
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.
Claims 2-5 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.
Claims 2-4 have similar chemical structure of formula (I) to formula (I) in claim 1, with the same variables and species. Therefore, it appears that the applicant have amended claim 1 using claim 6, without deleting claims 2-4.
Claims 2-4 have formula (II) which is similar to formula (II) in claim 1, with one different, that claims 2-4 have “X” to be hydrolysable group. However, the instant specification in paragraph [0100] state that the hydrolysable group is an alkoxy. Where formula (II) stat that “R1” include alkoxy. Therefore, formula (II) in claim 1, state “(R1)3Si-Y-Si(R2)3” where R1 and R2 include alkoxy group, and formula (II) in claims 2-4, state “(R1) aX13-aSi-Y-Si(R2)aX23-a” where R1, R2, X1 and X2 include alkoxy groups. Leading to having all formulas (II) in claims 14 overlapping with each other.
Additionally, numbering of formulas in claims 2-3 formula (I) and formula (II) are already listed in 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 5 state “Solving the metal and/or metalloid alcoholate in a solvent with a boiling point above 90° C. to obtain the coating composition.” Which is stated in claim 1, after adding the now canceled, claim 6.
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.
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.
Claim(s) 1, 7-8, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Aragane (JP 2017/048346 A, English Translated), in view of Gaiser (US Pat. 2.478,817).
Consider Claim 1, Aragane teaches the process of forming liquid coating for coating and forming transparent films (abstract), by coating processes such as spraying and or dipping a substrates such as glass [0052]. Aragane teaches the coating materials includes: organic compound (A) (claim 1), and hexa-functional silane compound (B) (claim 1), and metal alkoxide (metal alcoholate) (C) (claim 1), tetra-functional silane compound (D) (claim 3) and solvent (claim 1). Aragane teaches applying the coating onto the surface of substrate using dipping/spraying [0052], which it would be obvious to ordinary skilled person that the above coating processes (such as dipping) would include coating the outside surface of the glass substrate. Aragane teaches metal alkoxide (metal alcoholate) (C) have the general formula (3) M(OR10)n where M include Ti, Zr, Al, Ta, and/or Ge (Claim 1), where an example of metal alcoholate (C) include Ti(iPropyl)4 as titanium tetra-isopropoxide. Aragane teaches tetra-functional silane compound (D) (claim 1), where for example tetra-functional silane compound include compounds such as: tetraethoxysilane Si-(OC2H5)4 where X is (-OC2H5) [0037]. Aragane teaches hexa-functional silane compound (B) with general formula (2) (claim 1) include compounds such as: BTESE as 1,2-Bis(triethoxysilyl) ethane with chemical formula (C2H5O)3-Si-C2H4-Si(C2H5)3 [0031]. Where tetraethoxysilane is equivalate to claimed formula (I), and BTESE 1,2-Bis(triethoxysilyl) ethane equivalate to claimed formula (II). Aragane teaches the solvent are mixture of at least two solvents including ethanol (BP 78℃) as first solvent and ethylene glycol mono ethyl ether (BP 135℃) as the solvent [0035], and where the ethanol would evaporate and changing the solvent mixer to a single solvent of ethylene glycol mono ethyl ether during the heating step at 80℃ at film forming step (1) [0051]. Aragane teaches the process of forming the coating mixture the silane compounds (including BTESE) with Orgatix TA-10 (Ti(iPropyl)4) [0059] are hydrolyzed and polymerized/condensation reaction [0050] in the presence of pure water and nitric acid (acidic catalyst) while stirring [0059], and where order of adding the metal alkoxide/alcoholate to the siloxane polymer solution is obvious to ordinary skilled in the art to perform at any giving order including forming the siloxane polymer then adding the metal alkoxide. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). Aragane teaches the annealing the coated substrate/glass at a range of 80-300℃ for 10 mins [0055]. 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). (MPEP 2144.05).
Aragane does not teach the glass substrate is heated prior to coating.
However, Gaiser is in the prior art of coating (Col. 1, lines 1-7), teaches the process of pre heating the glass prior to coating and coating while it is heated (Col. 3, lines 10-14).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Aragane with Gaiser to coat the glass while it is heated, to provide with film with higher adhesion properties (tightly adherent) to the glass surface scraping resist (Col. 4, lines 31-35).
Consider Claims 7-8, the combined Aragane (with Gaiser) teaches the use of solvents including ethanol (BP 78℃) as first solvent and ethylene glycol mono ethyl ether (BP 135℃) as the solvent (Aragane, [0035]).
Consider Claim 10, the combined Aragane (with Gaiser) teaches the coating using spraying step (Aragane, [0052]).
Consider Claim 11, the combined Aragane (with Gaiser) teaches the annealing the coated substrate/glass at a range of 80-300℃ for 10 mins (Aragane, [0055]).
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Aragane (JP 2017/048346 A, English Translated), in view of Gaiser (US Pat. 2.478,817), and in further view of Hara (PG Pub 2021/0079252 A1).
Consider Claim 9, the combined Aragane (with Gaiser) teaches the use of ethylene glycol mono ethyl ether (BP 135℃) as the solvent (Aragane, [0035]).
The combined Aragane (with Geiser) does not teach the use of Texanol (2,2,4-trimethyl-1,3-pentanediol-monoisobutyrate).
However, Hara is in the prior art of forming coating composition (abstract), teaches the use of solvent such as ethylene glycol mono ethyl ether and Texanol (2,2,4-trimethyl-1,3-pentanediol-monoisobutyrate) [0079].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Aragane (with Geiser) with Hara to exchange ethylene glycol mono ethyl ether with Texanol, with reasonable and predictable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718