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 .
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 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.
Claims 1-12 are pending. Applicant’s previous election of Group I, claims 1-3 and 8 and the polysiloxane A compound formed from methacryloxypropyltrimethoxysilane still applies and claims 4-7, 9-12 remain withdrawn.
Response to Amendment
Applicant’s amendment of 06/04/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
The amendment to the specification has resolved the previous problem.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-3, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (U.S. 2018/0319944) in view of Soutar (U.S. 2007/0087206) with evidence from Yundt (U.S. 4,199,649) and the Gelest Silane coupling agents NPL document (2014).
Regarding claims 1-3 and 8, Chen teaches a UV curable, protective ([0066], [0019]) composition (the intended use in claim 1 is not given patentable weight, but the composition discussed below is inherently capable of being used as a primer for inorganic oxide anyway) comprising a polysilsesquioxane formed from the elected silane compound ([0036], [0038], [0043], [0058]-[0061], when the formula in [0061] has Z as methacryloxy, Y is propyl, i.e., 3 carbon alkyl, and the hydrolyzable group is methoxy) to create repeating units as in formula 1 as claimed, and also with residual OH groups, as well as silica nanoparticles for mechanical strength ([0075]) with the amount of particles resulting in an overlapping amount compared to the A/C ratio of claim 2 (based on the implied amount silsesquioxane in the sealing layer after subtracting the disclosed wt% of particles, which amount also overlaps the range in claim 1).
Chen does not disclose the additional reactive compound, however, Soutar is also directed to coatings based on acryloxytrialkoxysilane compounds and silica (see abstract, [0015], [0027]) and teaches that chemical, water and heat resistance may be improved via acrylate oligomers ([0028]-[0030], which may be aromatic with multiple acrylate groups as claimed) and curing speed and crosslinking may be improved with acrylate auxiliary agents ([0052]) (with either just the oligomer or the combination of oligomer and auxiliary agent corresponding to the claimed reactive compound B, which is only required to include a compound having a ring structure and multiple acrylate groups, i.e., does not require that all B compounds have the ring structure and multiple acrylate groups), such that it would have been obvious to have added such acrylate oligomers and auxiliary agents to the coating of Chen in order to, respectively, improve chemical, water and heat resistance as taught by Soutar (especially given that Chen seeks a protective coating to improve moisture resistance, [0019]) and to improve curing speed and crosslinking as taught by Soutar.
Regarding the claimed amounts, Chen and Soutar disclose effects for each of the silica (mechanical strength) and reactive ingredients (chemical, water and heat resistance and curing speed and crosslinking), such that the amounts of such ingredients would also be obvious to adjust, including to values that overlap the claimed ranges (given that the composition may include only the polysilsesquioxane, silica, and reactive compounds, as solid components), as part of the optimization of the above effects, respectively. Such optimization renders obvious the A/A+B+C ratio, the B/(total solids) ratio, the A/C ratio, and the A+C/(total solids) ratio.
The bonding in claims 3 and 8 is not explicitly disclosed, but as indicated above the silsesquioxane explicitly includes hydroxyl groups and the silica particles in Chen may be unfunctionalized (i.e., just SiO2). One of ordinary skill in the art would recognize that combining a siloxane polymer having hydroxyl groups with an untreated silica based material (also inherently having surface hydroxyl groups) would result in a siloxane bond forming reaction under ambient moisture conditions, as in claims 3 and 8 (see as evidence, Yundt col. 6, line 60-col. 7, line 5, and the Gelest NPL document, page 2). Claims 3 and 8 require that the composition includes the hydroxyl functional polysiloxane A and the siloxane bonded silica particles at the same time, such that the combination of A, B and C ingredients in modified Chen as discussed above would result in the initiation of a siloxane reaction, during which time there would be both the reaction product (as in claims 3 and 8) and the reactive hydroxyl groups (from claim 1), prior to the reaction being completed. This siloxane bonding reaction is distinct from the final UV initiated acrylate curing reaction that would take place later.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the present claims constitute unexpected results but the claims are not commensurate in scope with the present data in terms of the type and amount of ingredients in the claims being much broader than the present data.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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