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 .
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.
Claims 1- 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.
Considering Claim 1: Claim 1 recites the limitation "formula (I)" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, the claim is being interpreted as referring to “formula V”, which is recited in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-11 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 9-11 recite the limitation “R2 is not present”. However, claim 7, from which claims 9-11 depend, require the presence of formula R2 and does not allow for R2 to not be present. As such, the claim broadens the scope of claim 7. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al. (CN 109320097). Note: The machine translation provided by the applicant on 2/14/25 is being relied upon for citation.
Considering Claims 1 and 3-6: Guo et al. teaches a sol gel mixture (pg. 2) comprising tetraethoxysilane/a first organosilane having the structure of formula (V), vinyltriethoxysilane/a second organosilane having a structure of formula (V), and perfluorooctyltriethoxysilane/a hydrophobic agent (Example 1). The perfluorooctyltriethoxysilane is present at 1.5 g in a mixture with a total weight of 50 g (Example 1), or 3% by wight of the mixture.
Considering Claim 2: Guo et al. teaches the composition as comprising 2.25 g tetraethoxysilane and 3.8 g of vinyltriethoxysilane (Example 1).
Claims 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al. (CN 109320097). Note: The machine translation provided by the applicant on 2/14/25 is being relied upon for citation.
Considering Claims 7 and 9-11: Guo et al. teaches a sol gel mixture (pg. 2) comprising tetraethoxysilane/a first organosilane having the structure of formula (I), R1-R4 are silane group and X is oxygen, vinyltriethoxysilane/a second organosilane having a structure of formula (I), where R1-R3 are silane, X is oxygen, and R4 is an alkyl group, and perfluorooctyltriethoxysilane/a hydrophobic agent of formula I, where R1-R3 are silane and R4 is a alkylfluoride group (Example 1). The sol gel mixture is treated with UV radiation (Example 1), which would result in crosslinking of the vinyl groups into a “three-dimensional network” (pg. 2).
Considering Claim 8: Guo et al. teaches the composition as comprising 2.25 g tetraethoxysilane and 3.8 g of vinyltriethoxysilane (Example 1).
Claims 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al. (CN 109320097). Note: The machine translation provided by the applicant on 2/14/25 is being relied upon for citation.
Considering Claims 15, 17, and 18: Guo et al. teaches a sol gel mixture (pg. 2) prepared by a process comprising mixing tetraethoxysilane/a first organosilane having the structure of formula (V), vinyltriethoxysilane/a second organosilane having a structure of formula (V), and perfluorooctyltriethoxysilane/a hydrophobic agent (Example 1). The sol gel mixture is treated with UV radiation (Example 1), which would result in crosslinking of the vinyl groups into a “three-dimensional network” (pg. 2).
Considering Claim 16: Guo et al. teaches the composition as comprising 2.25 g tetraethoxysilane and 3.8 g of vinyltriethoxysilane (Example 1).
Considering Claim 19: Guo et al. teaches the perfluorooctyltriethoxysilane is present at 1.5 g in a mixture with a total weight of 50 g (Example 1), or 3% by wight of the mixture.
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.
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 7-11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (CN 109320097). Note: The machine translation provided by the applicant on 2/14/25 is being relied upon for citation.
Considering Claims 7, 9-10, 13, and 14: Guo et al. teaches a sol gel mixture (pg. 2) comprising tetraethoxysilane/a first organosilane having the structure of formula (I), R1-R4 are silane group and X is oxygen, vinyltriethoxysilane/a second organosilane having a structure of formula (I), where R1-R3 are silane, X is oxygen, and R4 is an alkyl group, and perfluorooctyltriethoxysilane/a hydrophobic agent of formula I, where R1-R3 are silane and R4 is a alkylfluoride group (Example 1). The sol gel mixture is treated with UV radiation (Example 1), which would result in crosslinking of the vinyl groups into a “three-dimensional network” (pg. 2).
Guo et al. does not teach the molecular weight of the sol gel, and thus does not teach the value for n, m, or p. However, the molecular weight would control the viscosity of the coating, and thus be considered a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the molecular weight, and the motivation to do so would have been to control the viscosity of the sol gel during the coating process.
Considering Claim 8: Guo et al. teaches the composition as comprising 2.25 g tetraethoxysilane and 3.8 g of vinyltriethoxysilane (Example 1).
Considering Claim 11: Guo et al. teaches the R4 as being perfluorooctyl (Example 1). This differs from the claimed R4 group by one carbon atom. 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). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP § 2144.09.
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Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (CN 109320097) as applied to claim 7 above, and further in view of Schuette et al. (US 2019/0240635).
Considering Claim 12: Guo et al. teaches the sol-gel of claim 7 as shown above.
Guo et al. does not teach the presence of a corrosion inhibitor. However, Schuette et al. teaches adding a corrosion inhibitor to a sol-gel coating (¶0014). Guo et al. and Schuette et al. are analogous art as they are concerned with the same field of endeavor, namely sol-gel coatings. It would have been obvious to a person of ordinary skill in the art to have added the corrosion inhibitor of Schuette et al. to the coating of Guo et al., and the motivation to do so would have been, as Schuette et al. suggests, to provide corrosion resistance to the underlying substrate of the coating (¶0014).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (CN 109320097) as applied to claim 15 above, and further in view of Schuette et al. (US 2019/0240635).
Considering Claim 20: Guo et al. teaches the process of claim 15 as shown above.
Guo et al. does not teach the presence of a corrosion inhibitor. However, Schuette et al. teaches adding a corrosion inhibitor to a sol-gel coating (¶0014). Guo et al. and Schuette et al. are analogous art as they are concerned with the same field of endeavor, namely sol-gel coatings. It would have been obvious to a person of ordinary skill in the art to have added the corrosion inhibitor of Schuette et al. to the coating of Guo et al., and the motivation to do so would have been, as Schuette et al. suggests, to provide corrosion resistance to the underlying substrate of the coating (¶0014).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Agustin Saenz et al. (EP 3842501) teaches a sol-gel coating comprising tetraethoxyorthosilicate, an organoalkoxysilane, and a hydrophobic fluorinated alkylsilane (Table 1A).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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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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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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