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 1-17 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 5/29/2025 have been fully considered but they are not persuasive. Initially, Applicant notes that their amendments have addressed the 35 U.S.C. 112(b) rejections. However, the Examiner disagrees and notes that Applicant’s amendments only corrected a portion of the issues pointed out in the rejection. Therefore, these rejections are maintained.
Applicant argues, with respect to the rejections over Sato, that Sato fails to explicitly teach the trans isomer of 1233zd. Applicant further notes that they do not agree that the isomers will act similarly for the purposes of the claimed invention. However, the Examiner maintains that Sato does teach the use of 1233zd as noted by Applicant. Further, given the structural similarity between the isomers, it is assumed that the isomers will act similarly as carriers for the perfluoropolyether-modified alkyloxysilane. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the trans isomer for Sato's generic 1-chloro-3,3,3-trifluoropropene. Note that, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c). Finally, Applicant has not provided evidence or reasoning for why they contend that the trans and cis isomers will behave significantly differently. Therefore, the rejections over Sato are maintained.
Applicant argues, with respect to the rejections over Iyer, that it would not have been obvious to use 1233zd of Tamai as the carrier in Iyer and the results achieved would not be reasonably expected. However, the Examiner disagrees and maintains that one would have been motivated to make this modification as Tamai teaches that their carrier solvent is good in coating properties, is nonflammable, has low toxicity, and is easy to handle (0013). Furthermore, Applicant has not pointed to what results would not have been reasonably expected. Therefore, the rejections over Iyer in view of Tamai are maintained.
Finally, Applicant believes that the selection of trans1233zd provides unexpected results and submits that data can be provided to show that the properties of the isomers are not the same. However, Applicant has not provided the data to support these claims. Therefore, these arguments are moot.
Claim Objections
Claims 2 and 9 are objected to because of the following informalities:
In claim 2, “repating units” should correctly be “repeating units”.
In claim 9, “repating units” should correctly be “repeating units”.
Appropriate correction is required.
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.
1. Claims 2, 9 and 13 are 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.
The formulas in claims 2, 9 and 13 are indefinite as they provide structures that would be impossible. For example, the unit “Si(R1f)(R)a(X)1-a” in Formula (III), where a can be 0 to 2, allows for a unit of (X)-1 and a unit of Si(R1f)(R)2 which are both impossible. Therefore, claims 2, 9 and 13 are indefinite. For examination purposes, “Si(R1f)(R)a(X)1-a” has been interpreted as “Si(R1f)(R)b(X)1-b wherein b is 0 or 1”.
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 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:
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.
2. Claims 1-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (WO 2012/096320, of which reference is made to U.S. PGPUB No. 2013/0303689 as an English translation).
I. Regarding claims 1-6 and 17, Sato teaches a composition comprising a coating agent comprising perfluoropolyether-modified alkyloxysilane having a formula as claimed in claim 2 (0033) and a carrier to at least partially solvate or emulsify the coating agent that includes a mixture of compounds including 1-chloro-3,3,3-trifluoropropene, and fluorocarbon and non-fluorous co-carriers as claimed in claims 3-6 (0048). Additionally, Sato teaches that the fluorinated solvent (which can be the 1-chloro-3,3,3-trifluoropropene) can be used in an amount of 60-100%, thereby overlapping the ranges of at least 70%, at least 90% and wherein the carrier consists essentially of the trans-1-chloro-3,3,3-trifluoropropene (note that overlapping ranges are prima facie evidence of obviousness). Sato fails to specifically teach the use of trans-1-chloro-3,3,3-trifluoropropene, instead simply reciting generically 1-chloro-3,3,3-trifluoropropene.
However, while Sato teaches the use of generic 1-chloro-3,3,3-trifluoropropene, Sato fails to teach whether the cis, trans or a mixture of the isomers is utilized. However, given the structural similarity between the isomers, it is assumed that the isomers will act similarly as carriers for the perfluoropolyether-modified alkyloxysilane. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the trans isomer for Sato's generic 1-chloro-3,3,3-trifluoropropene. Note that, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c).
II. Regarding claims 7-9, Sato makes obvious a composition as claimed (see above). Sato fails to explicitly teach a sprayable composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Sato teaches an essentially identical composition; therefore, Sato's composition is also considered as being capable of performing the intended use. Thus, Sato makes obvious claims 7-9.
III. Regarding claims 10-15, Sato makes obvious a composition as claimed (see above), and Sato further teaches applying the composition to the surface of a substrate by brush coating (0054), and removing the carrier by evaporation (0058). Furthermore, as Sato is teaching an essentially identical composition and process, the Examiner contends that inherently after removing the carrier the coating produced will have a water contact angle of greater than about 105°. Sato makes obvious all the critical limitations of claims 10-15; therefore, Sato makes obvious the claims.
3. Claims 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al. (U.S. PGPUB No. 2011/0081496) in view of Tamai et al. (U.S. PGPUB No. 2012/0107513).
I. Regarding claims 1-6 and 17, Iyer teaches a composition comprising a coating agent comprising a perfluoropolyether-modified alkyloxysilane having a formula as claimed in claim 2 (abstract and 0020-0027) and a carrier for partially solvating or emulsifying the coating agent (0053). Iyer fails to teach the carrier comprising the components as claimed.
However, Tamai teaches a carrier to partially solvate or emulsify silicone coating agents (abstract) that includes trans-1-chloro-3,3,3-trifluoropropene alone (reading on the carrier consisting essentially of trans-1-chloro-3,3,3-trifluoropropene, greater than about 70% and greater than about 90%), see 0036-0038, or a mixture of compounds including trans or cis-1-chloro-3,3,3-trifluoropropene (abstract and 0035-0036), and fluorocarbon (abstract) and non-fluorous co-carriers as claimed in claims 3-6 (abstract and 0040). Tamai further teaches that the 1-chloro-3,3,3-trifluoropropene is present in the mixture in amounts from 40-80% (thereby reading on at least about 70% and at least about 90%). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize Tamai's carrier in Iyer's composition. One would have been motivated to make this modification as Tamai teaches that their carrier solvent is good in coating properties, is nonflammable, has low toxicity, and is easy to handle (0013).
II. Regarding claims 7-9, Iyer in view of Tamai teach an essentially identical composition as claimed (see above). Iyer in view of Tamai fail to explicitly teach a sprayable composition. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Iyer in view of Tamai teach an essentially identical composition; therefore, Iyer in view of Tamai's composition is also considered as being capable of performing the intended use. Thus, Iyer in view of Tamai also make obvious claims 7-9.
III. Regarding claims 10-16, Iyer in view of Tamai make obvious a composition as claimed (see above), and Iyer further teaches applying the composition to the surface of a substrate by dip coating (0061), and removing the carrier by evaporation (0061). Furthermore, as Iyer in view of Tamai teach an essentially identical composition and process, the Examiner contends that inherently after removing the carrier the coating produced will have a water contact angle of greater than about 105°. Therefore, Iyer in view of Tamai also make obvious claims 10-16.
Conclusion
Claims 1-17 are pending.
Claims 1-17 are rejected.
THIS ACTION IS MADE FINAL. 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.
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/ROBERT S WALTERS JR/
January 9, 2026Primary Examiner, Art Unit 1717