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 4-8 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.
Claim 4 recites the limitation "the surface" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 4 and 6-8 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Tamai et al. (US 2012/0107513, cited by applicant).
Tamai discloses an article having a silicone polymer coating on at least a portion of the surface of the article, in which the silicone polymer coating is formed from the coating composition comprising: (i) about 90 - about 99 wt% of an organic solvent comprising: (a) about 25 - about 50 wt % of hexamethyl disiloxane and (b) about 50 - about 75 wt % of 1,1,1,4,4,4-hexafluoro-butene, and (ii) about 1 - about 10 wt% of a silicone polymer (since the solvent is not present anymore, paragraphs [0048-0061]).
Tamai also discloses wherein the article comprises a material selected from metals, plastics, rubbers, glass, papers, ceramic, latex and woods, wherein the article is a medical device, wherein the medical device is selected from a needle, a syringe, a stopper, and a medicine bottle (paragraphs [0048-0061])
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamai et al. (US 2012/0107513, cited by applicant).
Tamai does not specifically disclose wherein the thickness of the silicone polymer coating is about 0.01 to about 1 micrometer. However, finding the optimum range or value for a result effective variable is obvious and well within the level of one of ordinary skill in the art (MPEP 2144.05). It would have been obvious to have provided applicant’s recited thickness in order to provide improved mechanical properties and/or lower costs via the use of less materials.
Allowable Subject Matter
Claims 1-3 and 9-10 are allowed. The prior art does not teach or suggest applicant’s recited coating composition, or method thereof, comprising (i) about 90 - about 99 wt% of an organic solvent comprising: (a) about 25 - about 50 wt % of hexamethyl disiloxane and (b) about 50 - about 75 wt % of 1,1,1,4,4,4-hexafluoro-butene, and (ii) about 1 - about 10 wt% of a silicone polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
August 5, 2026
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