DETAILED ACTION
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.
These rejections are maintained from the previous office action as applicants’ response is not persuasive, for reasons noted below.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over CN 112961548, as interpreted by the English language translation as well as the CN document containing the “Key Substances in Patent” found at the end of the CN reference (both provided in the current office action).
The CN reference teaches a homopolymer prepared from silanes such as silane-
diol, 1-butoxy-1-propyl and silanediol, 1-heptyl-1-methoxy. See “Mark” 50, 52, 63 and 71 in the attachment at the end of the CN document. These corresponds to the alkoxy silane diols in claims 1 and 2 but do not specifically show the same R1 and OR2 groups.
As can be seen from the English language translation the claimed R1 and OR2 groups correspond to the prior art R3, R4, R5 and R6 groups, one of which is required to be a C1-C4 alkoxy. See the top of page 3/13 in the translation. Additionally, among the selection of alkyl groups for R3, R4, R5 and R6 are C1-C12 alkyl groups, including branched alkyl groups.
Thus, for instance, in the compound 71, a silanediol 1-butoxy-1-propyl homopoly-mer, it would have been obvious to one having ordinary skill in the art to use branched groups in the precursor silane diol rather than the 1-propyl and 1-butoxy groups that are shown. This is one example of the modifications that can be done to the specifically disclosed silane diols in the CN reference that render the claims obvious. Motivation comes from the teachings in the CN reference that state that the alkyl groups therein can be either branched or linear. In this manner the specific silanes of claims 1 and 2 are rendered obvious.
Claims 1 to 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura et al. 2008/0213494.
Kimura et al. teach preparing an organic thin film from various silane compounds.
While the entire teachings in Kimura et al. are relevant to this rejection, for discussion purposes the Examiner draws attention to the various silanes found in paragraph 183 which have two hydroxyl groups and one alkoxy group. This corresponds to the alkoxy-silanediol in claim 1. This differs from that claimed in that none of the silanes shown the R1 and OR2.
With this in mind, attention is directed to silane (VI) in paragraph 18 which shows the general formula for the specific silanes disclosed. Note that R100 corresponds to the alkyl group in these silanes and embraces various branched alkyl groups such as t-butyl. See paragraphs 37 and 49. Note too that the X in the silane of paragraph 18 corresponds to the alkoxy group and includes various branched alkoxy groups such as t-butoxy. See paragraph 54.
Thus, when considering the first silane found in paragraph 183 as having a C8 alkyl group, one methoxy group and two hydroxyl group, the skilled artisan would have found it obvious to replace the C8 alkyl with a branched alkyl (either a branched C8 alkyl or another such as t-butyl) and the methoxy with a branched alkoxy group such as t-butoxy. Motivation to make such a modification comes directly from the teachings in Kimura et al. that such groups can be used in the alternative with the expectation of obtaining comparable and/or predictable results.
In this manner both of the silanes of claims 1 and 2 are rendered obvious.
For claims 3 and 4, the Examiner draws attention to the specific silanes in para-graph 182 which contain 2 alkoxy groups and one hydroxyl groups. Consistent with that noted above, these alkoxy groups and the attached group corresponding to claimed R (R100 in Kimura et al.) can be branched alkoxy groups and alkyl groups.
Thus, when considering the first silane found in paragraph 182 as having a C8 alkyl group, two methoxy groups and a hydroxyl group, the skilled artisan would have found it obvious to replace the C8 alkyl with a branched alkyl (either a branched C8 alkyl or another such as t-butyl) and the methoxy with a branched alkoxy group such as t-butoxy. Motivation to make such a modification comes directly from the teachings in Kimura et al. that such groups can be used in the alternative with the expectation of obtaining comparable and/or predictable results.
In this manner both claims 3 and 4 are rendered obvious.
Response to Arguments
Applicant's arguments filed 6/30/26 have been fully considered but they are not persuasive.
For the rejection over the ‘548 reference, applicants’ arguments appear to be misguided. The Examiner does not understand why applicants are of the position that “The table entitled “Key Substances in Patent” is “clearly incorrect”. The specific silanes referenced in the rejection are clearly and specifically taught in this table. Regarding the polysiloxane shown as [0098] in the response, one having ordinary skill in the siloxane art would readily recognize the unit –
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95
132
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as the homopolymer of silanediol, 1-butoxy-1-hexyl. The ‘548 reference involves each of a silanol, a silanol homopolymer, and a siloxane prepared therefrom.
As such the Examiner maintains the rejection over the ‘548 reference.
For the rejection over the Kimura et al. reference, the Examiner recognizes the broad definition of R100 but draws attention to paragraph 100 which provides preferred embodiments that embrace the claimed groups. Since the skilled artisan would have been motivated to select from the preferred embodiments, this significantly narrows the selection required to arrive at the instantly claimed silanes.
Applicants also argue that the office offers no citation for the broad generalization
regarding making modifications and expecting comparable and/or predictable results. This is a rationale that is commonly referenced from the MPEP. See MPEP 2144.06 II. Note that the prior art teaches that these different groups can be used equivalently (as they are taught to be useful in the alternative for the same purpose) such that the skilled artisan would have expected them to be used in a comparable manner. An express suggestion to substitute one equivalent component for another is not necessary to ren-der such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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