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 .
Status of Application
Claims 14-32 are pending and presented for examination.
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome the rejection below because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim Objections
Claims 16 and 24 are objected to because of the following informalities: “a compound by-produced upon the acceptance” should correctly be “a compound produced upon the acceptance”. Appropriate correction is required.
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.
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.
1. Claims 14-23 are is/are rejected under 35 U.S.C. 103 as being obvious over Fukui (U.S. PGPUB No. 2022/0020582).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claims 14-23, Fukui teaches a surface treatment method comprising treating a surface with a film forming silylating agent (abstract) in an aprotic organic solvent (0119-0121 and 0141) at 25 ºC, which is in the range as claimed in claims 21 and 32 (0146). Fukui teaches that the substrate may be a silicon wafer (0060) having an uneven pattern on the surface of the wafer (0062) and may have a silicon oxide film on its surface (0146). Fukui teaches the agent and solvent being water-free (0141 and 0146) and the agent present in a concentration of 1-30 mass % (0136, and note that overlapping ranges are prima facie evidence of obviousness). Fukui fails to teach an exemplary embodiment where the silylating agent is a compound of general formula [1].
However, Fukui does teach that the silylating agent may be selected from compounds including 2-trimethylsilyl-1,1,3,3-tetramethylguanidine (0078, and note that this compound meets the limitations of the formula as recited in claims 14, 15, 17, 18, 22, 23, 25 and 26 and will inherently be a liquid when it accepts a proton and form a water-repellent film). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Fukui’s process by substituting 2-trimethylsilyl-1,1,3,3-tetramethylguanidine as the silylating agent for the ones disclosed in Fukui’s examples. One would have been motivated to make this substitution as one could have made the substitution with a reasonable expectation of success (particularly given that Fukui teaches this compound can be selected as the silylating agent), and the predictable result of providing a coating on a wafer which will be water-repellent.
2. Claim(s) 14-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumon et al. (U.S. PGPUB No. 2013/0056023) in view of Ma et al. (U.S. Pat. No. 10280186).
Regarding claims 14-23, Kumon teaches a surface treatment method for forming a water repellent film (abstract) comprising treating a surface with a film forming silane agent (abstract) in an aprotic organic solvent (0165) at 20 ºC (which is in the range as claimed in claims 21 and 32 (010167). Kumon teaches that the substrate may be a silicon wafer (abstract) having an uneven pattern on the surface of the wafer (abstract) and may have a silicon oxide film on its surface (0146). Kumon teaches the agent and solvent having a water content less than 5000 ppm (0080) and the silane agent present in a concentration of 0.1-30 mass % (0074, and note that overlapping ranges are prima facie evidence of obviousness). Kumon fails to teach an exemplary embodiment where the silane agent is a compound of general formula [1].
However, Ma teaches a silane agent, which can be (N,N,N’,N’-tetramethylguanidinato)trimethylsilane (Example, 1, column 7, and note that this compound meets the limitations of the formula as recited in claims 14, 15, 17, 18, 22, 23, 25 and 26 and will inherently be a liquid when it accepts a proton and form a water-repellent film) for forming a coating on a silicon based substrate (column 7, lines 15-22). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kumon’s process by substituting (N,N,N’,N’-tetramethylguanidinato)trimethylsilane as the silane agent for the ones disclosed in Kumon. One would have been motivated to make this modification as one could have substituted one silane for another with a reasonable expectation of success (note that both are intended for application on silicon wafers and would yield a silylated silicon wafer), and the predictable result of providing a wafer coated with a silane material.
Conclusion
Claims 14-23 are pending.
Claims 14-23 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
June 25, 2026Primary Examiner, Art Unit 1717
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