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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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.
Claims 1, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (US 2020/0199406 A1), as evidenced by PubChem (1-Dodecene, 2005-03-26, National Library of Medicine) and NIST (n-Butyl Ether, 2018, NIST Chemistry WebBook, SRD 69).
Regarding Claim 1: Kaneko teaches a curable composition comprising a polysilazane compound, a plurality of solvents having different boiling points, and a curing catalyst (para. 0009-0014). Kaneko further teaches an embodiment (Example 5) having 40 parts of a polysilazane composition (para. 0084) that is a 50:50 blend of polysilazane and dibutyl ether (para. 0076), i.e. 20 parts of dibutyl ether, 3 parts of bis(2-butoxyethyl ether), 57 parts of EXXSOL D40, and 1 part of a catalyst (para. 0084). NIST teaches that dibutyl ether has a boiling point of 415K/142°C (p.2, Phase change data), which reads on component (A) of the instant claims; Kaneko teaches that EXXSOL D40 has an initial boiling point of 166°C, reading on component (B), and bis(2-butoxyethyl ether) has a boiling point of 255°C (para. 0080). Although the boiling point of bis(2-butoxyethyl ether) is outside of the claimed range in component (C), one would find it obvious to substitute it with a solvent such as 1-dodecene, which Kaneko teaches as an equivalent for the same purpose (para. 0054); PubChem teaches that 1-dodecene has a boiling point of 214°C (p.11, section 3.2.4), reading on component (C).
Based on calculations, the composition of Kaneko comprises 25wt% of dibutyl ether (component (A)), 71wt% of EXXSOL D40 (component (B)), and 4wt% of bis(2-butoxyethyl ether) (equivalent to component (C)), based on the total weight of the solvents.
Regarding Claim 4: Example 5 of Kaneko comprises 20 parts of polysilazane and 80 parts of solvent/components (A), (B), and (C) (para. 0084). Based on calculations, the total amount of components (A) to (C) is 40 parts by mass relative to 10 parts by mass of the polysilazane.
Regarding Claim 6: Kaneko teaches that the composition is used for forming a coating on a glass, silicon, metal, or plastic substrate (para. 0071).
Regarding Claim 7: Kaneko teaches that the composition is used as an antifouling coating (para. 0003).
Regarding Claim 8: Kaneko teaches a cured film (para. 0007).
Regarding Claim 9: Kaneko teaches the film is for use on automobile bodies (para. 0002-0003).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (US 2020/0199406 A1), as evidenced by PubChem (1-Dodecene, 2005-03-26, National Library of Medicine) and NIST (n-Butyl Ether, 2018, NIST Chemistry WebBook, SRD 69), in view of Ai et al (Synthesis of structured polysiloxazanes via a Piers-Rubinsztajn reaction, 24 October 2019, Chem. Commun., Vol 55, p.14019-14022).
Kaneko, PubChem, and NIST teach all of the limitations of claim 1, as set forth above. However, Kaneko is silent to the polysilazane being a polysiloxazane.
Ai teaches that polysiloxazanes are a class of silicon-containing polymers that exhibit exceptional high-temperature resistance, dielectric properties, and excellent adhesion to different substrates (p.14019, col. 1). Ai and Kaneko are analogous art because they are directed toward the same field of endeavor, namely polysilazane compounds.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace at least a portion of the polysilazane structure taught by Kaneko with a polysiloxazane in order to impart the coating with high-temperature resistance, dielectric properties, and excellent adhesion to different substrates.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (US 2020/0199406 A1), as evidenced by PubChem (1-Dodecene, 2005-03-26, National Library of Medicine), NIST (n-Butyl Ether, 2018, NIST Chemistry WebBook, SRD 69), and Gelest (3-Aminopropyltriethoxysilane Safety Data Sheet, 7 Jan 2015).
Kaneko, Pubchem, and NIST teach all of the limitations of claim 1, as set forth above. Kaneko further teaches that the curing catalyst is an aminosilane such as 3-aminopropyltriethoxysilane (para. 0067, 0084), which Gelest teaches is an organic base (p.5, Section 14.2).
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kaneko is the closest prior art, which teaches the composition of claim 1, as set forth above. However, Kaneko teaches that the high boiling point solvent reading on component (C) must have a dielectric constant of at least 2.1 and that aliphatic hydrocarbons are not suitable for that purpose (para. 0048-0051).One of ordinary skill in the art could not find it obvious to substitute the high boiling point solvent of Kaneko with a C14-C18 isoparaffin or a C13-C17 n-paraffin because Kaneko teaches away from adding isoparaffins or n-paraffins as the high boiling point solvent since they are aliphatic hydrocarbons that do not meet the required dielectric constant.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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