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 with traverse of Group I, claims 1-8 (now 1-5 and 7-8) in the reply filed on 7/24/2026 is acknowledged. The traversal is on the ground(s) that the invention is now directed toward a coating composition comprising a compound of Formula (I) and not a compound of Formula (I). Applicant argues that the reference of record used to break the unity of invention fails to teach the coating composition, such that all of the claims now share a special technical feature. This is not found persuasive because the coating composition is not required to have any other components other than the compound of Chemical Formula (I). Nor does the specification as filed indicate that a “composition” necessarily excludes compositions consisting of the compound of Chemical Formula (I). Also see MPEP 2111.03 regarding transitional phrases. The specification only teaches that “in an exemplary embodiment of the present specification, the coating composition may further (emphasis added) include one or more curable compounds”. See p. 6 and claim 7. Mixtures of compounds of Chemical Formula (I) are also discussed on p. 11-12, but these are again described as “exemplary embodiments” and a coating composition is not required to have a mixture of the compounds. Further, regarding the intended use of the claimed composition, see MPEP 2111.02. As the reference of record, Chemical Abstract Compound STNext RN 1374423-26-3, 5/24/2012, of record in the IDS filed on 12/7/2023, teaches the following species of claim 4:
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, then the disclosure of the compound in the reference is interpreted to anticipate the claimed “coating composition”. Therefore, Applicant’s arguments are unpersuasive and the Unity of Invention between Groups I-III remains broken because the technical feature of the coating composition comprising a compound of Chemical Formula (I) is known in the art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Status
Claims 1-5, 7-9, and 13-14 were amended and claim 6 was canceled in the response filed 7/24/2026. Claims 1-5 and 7-14 are pending. Claims 9-14 stand withdrawn and claims 1-5 and 7-8 are pending and under examination.
Priority
The instant application was filed on 12/7/2023 and claims the benefit of priority to:
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See filing receipt dated 1/7/2025. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vij (“Perfluorinated and partially-fluorinated silane derivatives of perfluorooctyne: synthesis characterization and chemical reactivity”, Polymer Preprints (ACS, Division of Polymer Chemistry), 2012, of record in the IDS filed on 12/10/2024).
Vij teaches the production and use of vinylperfluorooctenyltriethoxysilane, a compound of instant formula (I), wherein R1, R2, and R3 are ethyl (C2H5) and Rf is C6H13 (wherein n is 6). See Fig. 1 and synthesis procedure for said compound on p. 1. This compound is also the following species from claim 4:
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, which corresponds to example 5 on p. 17 of the specification as filed. Regarding claims 5 and 8, Table 1 on p. 18-19 of the specification as filed teaches that the compound from example 5 has a refractive index of 1.375, which falls within the claimed range. Also see MPEP 2131 regarding anticipation and MPEP 2112 regarding inherency.
Vij further teaches that the compound is placed in a composition comprising a catalyst (AK225), ethanol, DI water, and acetic acid which is hydrolyzed and condensed to provide fluorinated derivatives of perfluorooctyne. See Fig. 1 and “hydrolysis and condensation” procedure on p. 1. Vig teaches that fluorosilicone materials containing long-chain fluoroalkyl groups possess many useful properties including excellent solvent-resistance, thermal stability, weathering properties and wear resistance which makes them useful materials for pharmaceuticals, agrochemicals, and materials science applications. See abstract. Thus, the compositions containing vinylperfluorooctenyltriethoxy silane appear to meet the limitations regarding the limitation “coating composition”.
Alternatively, though the reference does not explicitly recite “coating composition”, the specification as filed appears to contemplate embodiments wherein the composition consists of the compound of Chemical Formula (I). Also see MPEP 2111.03 regarding transitional phrases. The specification only teaches that “in an exemplary embodiment of the present specification, the coating composition may further (emphasis added) include one or more curable compounds”. See p. 6 and claim 7. Mixtures of compounds of Chemical Formula (I) are also discussed on p. 11-12, but these are again described as “exemplary embodiments” and a coating composition is not required to have a mixture of the compounds. Further, regarding the intended use of the claimed composition, see MPEP 2111.02. Regardless, as the reference teaches a species of claim 4, it is interpreted to meet the limitations of “coating composition” as claimed, even if the compound is by itself.
Further regarding claim 7, the ethanol, water, and acetic acid are curable compounds having active hydrogen atoms which can be used to form bonds to the vinylperfluorooctenyltriethoxy silane to provide a cured product. Further, the mixture of vinylperfluorooctenyltriethoxy silane residual starting material and the fluorooctyne products would also constitute a mixture between two curable compounds, as the alkyne bond is also a curable bond.
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 Sai (JP 2002088090, published on 3/27/2002, of record with a machine generated English translation in the IDS filed on 12/7/2023).
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Sai teaches a method for producing a polyfluoroorganosilicon compound. See abstract. Sai teaches that the polyfluoroorganosilicon compounds have excellent physicochemical properties in terms of heat resistance, acid resistance, base resistance, water repellency, oil repellency, etc, and are used in various functional materials such as Teflon and PEEK. Sai further teaches that it has been reported that certain polyfluoroorganosilicon compounds exhibit interesting properties as silane coupling agents, such as improving the chemical and physical properties of glass surfaces. See [0003] of the translation of Sai.
Sai teaches the following reaction for the examples in [0019]:
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. The product labeled (4) is analogous to the claimed Chemical Formula (I), wherein Rf is C6F13; R1 and R2 are methyl, and -OR3 is replaced by a methyl group.
In Table 1 in [0023], inventive example 5 produces appreciable amounts of compound (4):
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. Also see [0019-0023] of the translation of Sai. Sai teaches that all of the compounds of 1 to 4 have the utility as indicated above.
Sai teaches that the hydrosilane can be of the general formula HSiR1R2R3, wherein R1, R2, and R3 can be hydrogen, C1-20 alkyl, C1-20 alkoxy, and C6-18 aryl. See translation of [0009] of Sai. When R1, R2, and R3 are C1-20 (preferably C1-3 alkoxy), the compounds formed would include those of the instant Chemical Formula (I). Sai also teaches that the polyfluoroolefin structure is not particularly limited, but preferably has 2 to 20 carbon atoms, more preferably 4 to 12 carbon atoms. See [0008] of the translation.
It would have been prima facie obvious to arrive at the claimed coating compositions based on the teachings of Sai with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would be motivated to produce the claimed compounds using the method of Sai, because Sai teaches that they can be formed (compound 4 in Table 1) and that all of the compounds produced share physicochemical properties which can improve the chemical and physical properties of glass surfaces. Further, Sai teaches that the hydrosilane coupling partner in the reaction encompasses embodiments wherein three alkoxy groups are attached to the silicon atom, which would produce the claimed compounds when reacted with fluoropolyolefins. Further regarding the limitation “coating composition”, Sai teaches that the compound (4) is in a mixture of other structurally similar compounds (1), (2), and (3), which are expected to possess similar properties, including the ability to be coated onto glass surfaces to impart chemical and physical changes to the glass. See MPEP 2144.09. Therefore, these mixtures would appear to qualify as “coating compositions” as claimed. Further regarding claim 7, compound (3) also has a double bond which appears to meet the limitations of an additional curable compound.
Alternatively, though the reference does not explicitly recite “coating composition”, the specification as filed appears to contemplate embodiments wherein the composition consists of the compound of Chemical Formula (I). Also see MPEP 2111.03 regarding transitional phrases. The specification only teaches that “in an exemplary embodiment of the present specification, the coating composition may further (emphasis added) include one or more curable compounds”. See p. 6 and claim 7. Mixtures of compounds of Chemical Formula (I) are also discussed on p. 11-12, but these are again described as “exemplary embodiments” and a coating composition is not required to have a mixture of the compounds. Further, regarding the intended use of the claimed composition, see MPEP 2111.02. Regardless, Sai does appear to teach that the intended use of the compounds is as coating agents for glass.
Regarding claims 2-4, the genus of Sai overlaps with that claimed. Sai teaches that the alkoxy substituents (referring to instant R1, R2, and R3) are preferably C1-3 alkoxy and that Rf is preferably between 4 and 12 carbon atoms. These embodiments of Sai, would encompass all of the species in claim 4, which would be expected to possess refractive indexes which are identical to or similar to those of claims 5 and 8, owing to the significant structural similarity between the claimed species and those in Sai. See MPEP 2144.08 and MPEP 2144.09.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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