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Claims 12-15 withdrawn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 2, 5-6 cancelled
Claims 1, 3-4 amended
Claims 1, 3-4, 7-11 pending
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 3 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 3 state “The method according to claim 1, which are the unreacted silane monomers of formula (I), bi-silane monomers of formula (II) or mixtures thereof”. However, it is not clear that is meant by “which are”, as it seems that a prior statement was deleted.
Additionally, it is not clear what is the meant by stating “unreacted” silane, as claim 1 does not disclose the presents of unreacted silane. Moreover, it is not clear if there is a difference between “silane monomers” in claim 1 and “unreacted silane monomers” in claim 3.
Claim 3 recites the limitation "the unreacted silane monomers" in page 3. There is insufficient antecedent basis for this limitation in the claim.
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, 4, 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 explicitly teaches that the annealing of the coated substrate with coating composition to 80-300℃ for 10 mins [0055], would result in forming metal oxide or metalloid oxide from a metal alcoholate or metalloid alcoholate by a hydrolysis process reaction.
However, Aragane teaches each and every process step and limitation of the applicant’s claims, including “the step of coating a coating composition, having the claimed materials, onto a glass substrate and then the step of annealing the coated glass substrate”. Since the “result in forming a metal oxide or metalloid oxide from a metal alcoholate or metalloid alcoholate by a hydrolysis process reaction” by the applicant’s claimed process is simply a function of “the step of coating a coating composition, having the claimed materials, onto a glass substrate and then the step of annealing the coated glass substrate”, and the prior art of Aragane teaches the claimed process steps. The process of Aragane would have naturally flow or inherently produced “result in forming a metal oxide or metalloid oxide from a metal alcoholate or metalloid alcoholate by a hydrolysis process reaction” unless essential process steps and/or limitations are missing from the applicant’s claims.
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 Claim 4, the combined Aragane (with Gaiser) teaches the silane alcoholate monomer include tetraethoxysilane is equivalate to claimed formula (I) (Aragane, [0037]), and BTESE 1,2-Bis(triethoxysilyl) ethane equivalate to claimed formula (II) (Aragane, [0031]).
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]). 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).
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]). 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).
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.
Response to Arguments
Applicant’s arguments, filed 05/06/2026, with respect to the rejection(s) of claim(s) 1, 3-4, 7-11 under 103a have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Aragane with Geiser.
The previously applied 112 claims rejection, in light of the amended claim are now withdrawn. However, in light of the currently amended claims, new 112 claim rejection are now applied.
The applicant argued against the prior art of Aragane, on the ground that Aragane does not disclose the newly amended claims. As the prior art of Aragane discloses subjecting the coated glass to UV treatment for cross-linking and then is heated for evaporating the residual component of the coating composition [0054], and Aragane also describes that the metal alcoholate/alkoxide is first gelated before being mixed with siloxane polymer solution (having polysiloxane) and then a cross-linking step a network -M-O-Si- is obtained, as the instant process is performed without the need of gelation step (such as using chelating agent of Aragane), and by the step of hydrolyzing the metal alkoxide/alcoholate or metalloid alkoxide/alcoholate to the corresponding metal oxide or metalloid oxide, as claimed. Additionally, Aragane discloses that annealing step include co-hydrolysis condensation reaction producing -M-O-Si- bond network than a metal oxide or a metalloid oxide, as claimed.
However, the claim as presented does not restrict the use of additional material or additional step such as gelation material or gelation step. Moreover, Aragane discloses “the addition of water promotes the co-hydrolytic condensation reaction” in paragraph [0050], not in the contact of annealing, as argued. Furthermore, Aragane discloses the forming of -M-O-Si- or -M-O-M- network by cross-linking which is being promoted using ultraviolet in <film forming step 3> in paragraph [0054], which is the step prior to annealing step that occur in <film forming step 4> in paragraph [0055] which includes the annealing from 80° to 300°C for 10 min, encompassing the claimed annealing temperature in the instant claim 11.
Moreover, regarding the newly amended limitation “thereby hydrolyzing the metal and/or metalloid alcoholate to the accordant metal or metalloid oxide”, the prior art of Aragane discloses each and every step of preparing the coating composition (including the coating materials) and the annealing step (including the annealing temp and time in claim 11), therefore the claimed resultant would obviously and naturally flow from the process step.
The applicant argued against the prior art of Gaiser, on the ground that Gaiser does not cure deficiencies of Aragane.
However, Gaiser is used to provide an evidence that prior to coating step the process of heating the substrate such as glass is known in the art.
All other applicant arguments not specifically addressed above are deemed unpersuasive as either not commensurate in scope with the broadly drafted claims or are unsupported by factual evidence and are deemed mere attorney speculation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, 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.
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.
/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
Prosecution Insights