DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 10/17/25 is acknowledged.
While applicants elected without traverse, they did submit in their response that the claims are different from di-tert-butylsilanediol noted in the restriction requirement. Note that this application has been transferred in response to this election and the current examiner agrees with this statement. Note the following prior art rejection below which does not rely on this teaching.
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.
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.
Conclusion
The remaining reference cited in the attached PTO-892 is cited as being of general interest. This publication does not qualify as prior art in the instant application.
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.
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Mgm
12/11/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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