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 1-22 are pending. Applicant’s previous election of Group I (Group II was subsequently included with Group I), and the following species (the requirement for species 3 was withdrawn), claims 1-16, 18, 19, 21-22 still applies and claims 17 and 20 remain withdrawn.
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Response to Amendment
Applicant’s amendment of 07/30/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 21 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 recites “withstands water contact” which is not supported. There is support for “withstand contact in an aqueous solution” and “withstand moisture” but these are not the same as the recited limitation.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same new matter issue(s) via their dependency.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 1-16, 18, 19, and 21-22 is/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 pre-AIA the applicant regards as the invention.
Claims 1 and 21 recite a monolayer comprising an unreacted silicon sulfur compound (see the above elected species) having reactive groups (i.e., methoxy) which will react upon exposure to ambient moisture, such that it is unclear if the claim is intended to be interpreted literally (i.e., would only encompass a monolayer as it exists for the brief period of time in which the silane compound remains unreacted) or if the claim is instead intended to encompass a monolayer including the reacted product of such silane compound (in which case the claims should be amended to recite something like “monolayer formed by curing a composition comprising…”).
Claim 22 is not recited because it clarifies that the monolayer is formed from a composition comprising the recited ingredients.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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:
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.
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) 1-16, 18-19, 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aliane (U.S. 2017/0141291) in view of Tatemichi (U.S. 2012/0293909) in view of Wu (U.S. 2012/0141757) in view of Connelly (U.S. 4,879,345) in view of Bissinger (U.S. 2018/0257361), in view of Vibrational spectroscopic studies of (3-mercaptopropyl)trimethoxylsilane sol–gel and its coating (2005)
Regarding claims 1-16, 18, 19, 21 and 22 Aliane teaches a dielectric coating, 18, applied as a single layer (monolayer) contacting a gold/copper substrate, 12 and 14, to form an assembly/component/device as in claims 12-16, 18 and 19, wherein the coating is formed with a thickness overlapping claim 10 (see FIG. 5C, [0054]-[0056]) after evaporating the solvent ([0064] and in claim 22, though this is a product by process limitation), wherein the dielectric layer includes a fluoropolymer corresponding to the elected species (as in claims 2 and 3, [0028]-[0029]) at an amount overlapping claim 4 ([0061], after accounting for evaporation of the solvent). Aliane does not disclose the claimed vinyl polymer or silicon compound.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
However, Tatemichi and/or Wu each independently render obvious the claimed vinyl polymer in a PVDF coating composition. That is, Tatemichi teaches that acrylate polymers (acrylate being a repeating unit as in claims 7-8) may be added to a dielectric PVDF composition to improve temperature dependent dielectric loss (see abstract, [0013], [0031], [0033]) such that it would have been obvious to have added such an acrylate polymer to Aliane (with the amount being obvious to optimize to within claim 9 as part of optimizing the degree of temperature dependent dielectric loss). Also, Wu teaches that acrylate polymers (acrylate being a repeating unit as in claims 7-8) may be added to a dielectric PVDF composition to lower surface tension and improve wetting/leveling (see abstract, [0048], [0053], [0054]) such that it would have been obvious to have added such an acrylate polymer to Aliane (with the amount being obvious to optimize to within claim 9 as part of optimizing the degree of lower surface tension and improve wetting/leveling).
Additionally, Connelly and/or Bissinger each independently render obvious the claimed silane compound in a PVDF coating composition to promote adhesion (Connelly- see abstract, col. 2, lines 1-60, with the elected silane falling within the disclosed formula I, and Bissinger- [0061]-[0064], [0065], mercaptopropylmethyldimethoxysilane), such that it would have been obvious to have added such a silane compound, as in claim 5, into Aliane with the amount of the silane compound being obvious to optimize to within the range of claim 6 as part of optimizing the degree of improved adhesion, as taught by Connelly and/or Bissinger.
Further to the above, although the adhesion promotion benefit disclosed by Connelly and/or Bissinger is already sufficient motivation to render the claimed silane compound obvious, the Vibrational NPL further discloses that mercapto groups of such silane compounds are specifically suitable for covalent bonding to copper and gold (see introduction) such that this motivation makes such silane compounds from Connelly and/or Bissinger even more obvious to include in the dielectric layer of Aliane to promote adhesion to the copper/gold substrates taught by Aliane.
Because the silane and acrylate ingredients disclosed above are obvious to optimize in terms of their amounts in the composition (as explained above), and because of the overlapping amount of fluoropolymer in Aliane, the amount of claim 11 (which is based on the combined amounts of fluoropolymer, silane compound, acrylate compound in the monolayer) is also obvious via the above described optimization and overlapping ranges (after the solvent evaporates). Furthermore, See MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
The above monolayer is inherently able to withstand water contact to at least some degree, as in claim 21.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 17 and 20 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 17-19 of copending Application No. 18/674,536 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method claims include the same application/mixing steps for the same ingredients as presently claimed and because the presently claimed “improving adhesion strength” is inherent from mixing such ingredients in the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Regarding the 112 rejection, Applicant argues that the specification clearly provides support for and description of a monolayer formed from the claimed ingredients, not merely the transient product of the unreacted ingredients applied to form the monolayer. This is correct but does not resolve the claimed ambiguity. There is support/description in the present application for a monolayer forming composition, a method of forming a monolayer from such composition, an unreacted monolayer of the claimed ingredients before the final product is formed, and a final product formed from such a composition. However, the 112 rejection was based on the claims technically reciting a monolayer comprising a highly reactive ingredient in an unreacted state (the silane compound with hydrolyzable groups). The examiner was merely trying to inform Applicant that the claim seemed (though unintentional ambiguity) to recite an invention much narrower than what was likely intended (i.e., an uncured monolayer instead of the formed monolayer). The cited portions of the specification cannot override explicit limitations in the claims and if the claims recite a layer with a silane compound having hydrolyzable groups, those claims would no longer read on a potentially infringing product if those hydrolyzable groups are all reacted. Regarding the “curing” suggestion by the examiner, this was merely a suggestion and the claim ambiguity could be resolved by simply reciting that the monolayer is formed from the claimed ingredients (without reciting drying or curing), because that would allow the claims to encompass a layer with the reaction product of the silane compound.
Applicant argues against the combination of references by arguing that no reference individually renders obvious all the claimed limitations which is improper piecemeal analysis. Applicant also argues that there is no reason to combine the references to arrive at the claimed subject matter but is simply ignoring the motivation cited in the rejection. Applicant is also assuming that the prior art must seek to solve the same problem as Applicant (for prima facie obvious and expectation of success) which is not true and the prior art merely needs to render obvious the claimed subject matter with an expectation of success (i.e., render obvious forming a monolayer with an expectation of success in achieving a monolayer). The particular problem solved by Applicant is addressed below in the context of unexpected results. The prior art does not need to have the same motivation for arriving at the claimed subject matter as Applicant.
Applicant argues against Bissinger on the grounds that it is not a monolayer but this is improper piecemeal analysis and Bissinger properly renders obvious including the elected silane compound in a PVDF coating to promote adhesion (and that motivation is not dependent on the other layers in Bissinger). Applicant appears to argue that the silane compound is in a different layer than the fluoropolymer in Bissinger but this is not true (see [0063]). In any case, Connelly would render obvious the silane compound even if Bissinger was removed from the rejection (arguendo).
Applicant argues that the NPL document is limited to sol-gel coatings, but the disclosed beneficial bonding of mercapto groups with the metal substrates of the other reference is not dependent on the sol-gel nature of the coating. It is further noted that the NPL document is cited to bolster the motivation of combining Connely and/or Bissinger with the other references (although Connely and Bissinger already provide sufficient motivation), and those references already clearly indicate that mercaptotrialkoxysilane compounds were known adhesion promoters for PVDF coatings (thus are not limited to sol-gel coatings to promote adhesion). The NPL document merely expands on this adhesion promotion to clarify that mercapto silanes are especially good at adhering to the specific metal substrates in Aliane.
Applicant argues hindsight but is ignoring the motivations provided in the references, with the rejection actually including multiple different references to provide multiple motivations for each ingredient (showing a more than sufficient amount of prima facie obviousness of the claimed invention).
Applicant argues that a benefit for each individual ingredient being brought into Aliane is not sufficient. This is not true and the cited benefits/motivations are more than sufficient.
Applicant argues that the ingredients of the prior art would not produce the “required long lasting adhesion after immersion.” First, this is not required in the claims (the “withstand water contact” of claim 21 is much, much broader). Second, even if it was recited, the prior art would still render obvious the same ingredients and amounts used in the present application to achieve such properties, thus making such properties inherent.
While the above improved property is not persuasive in arguing a lack of prima facie obviousness, it may be persuasive in rebutting the prima facie obviousness if presented as an unexpected result. However, the data relied upon by Applicant is far narrower in scope (in terms of the type and amount of ingredients) compared to the scope of the claims and therefore such an unexpected results argument is not persuasive.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
Prosecution Insights