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 § 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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
Claim(s)s 2-3, 5-8, 10, and 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2019124264A1(US20210090881A1 cited for convenience).
Regarding claims 14-15 and 10, US20210090881A1 disclose a surface treatment agent for surface treatment of a workpiece, comprising the following components:
(I) at least one kind selected from the group consisting of silicon compounds represented by the general formulas [1], [2] and [3];
(II) at least one kind selected from the group consisting of a nitrogen-containing heterocyclic compound represented by the following general formula [4], a nitrogen-containing heterocyclic compound represented by the following general formula [5], and imidazole; and
(III) an organic aprotic solvent. See claims 1 and 9.
The concentration of the component (II)(catalyst) is 0.05 to 10 mass% based on the total amount of the components (I) to (III). The concentration of the component (I) ( silylating agent) is 0.1 to 35 mass % based on the total amount of the components (I) to (III). See claims 2 and 6.
The reference differs from Applicant's recitations of claims by not disclosing
identical ranges (catalyst content, silylating agent/ catalyst, ratio, total content of the silylating agent and catalyst). However, the reference discloses "encompassing" ranges, and encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05).
For example, the silylating agent content is %, the catalyst content is 5% and the solvent content can be 80%.
A recitation of the intended use of the claimed invention must result in a composition difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art compositions capable of performing the intended use, then it meets the claim.
Regarding claim 5, the concentration of the component (II)(catalyst) is 0.05 to 10 mass % based on the total amount of the components (I) to (III).
Regarding claim 6, (I) is at least one kind selected from the group consisting of silicon compounds represented by the general formulas [1], [2] and [3]. See claim 1.
Regarding claims 16- 17, No water contained in the above compositions.
Regarding claims 2-3, and 18-19, the Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the prior art composition, since the prior teaches an invention with a substantially similar chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claims 7-8, (I) at least one kind selected from the group consisting of silicon compounds represented by the general formulas [1], [2] and [3]; The silicon compound of the general formula [2] can be commercially available. For instance, trimethylsilyltrifluoroacetate ((CH3)3Si—OC(═O)CF3). The concentration of the component (I) is 0.1 to 35 mass % based on the total amount of the components (I) to (III). See claims 2 and 6. Thus, it is reasonable to use silicon compounds from formula (I) 17.5%) and trimethylsilyltrifluoroacetate (17.5%). When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claim(s) 2-3, 5-9,14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018193841.
Regarding claims 14-15 and 7-9, WO2018193841 disclose a surface composition comprising only a silylating agent, the fluorine-containing ether (aprotic solvent, Novec 7200), and an acid(catalyst). See pages 2 and 4.
The amount of the silylating agent relative to the total amount of the silylating agent and the solvent is 2 to 30% by mass. See page 4
The amount of the acid relative to the total amount of the silylating agent, the solvent and the acid is 0.01 to 30% by mass preferable. See page 6
The silylating agent and the solvent contained in the above composition do not contain much water. See page 7.
Specific examples of the acid include trimethylsilyl trifluoroacetate, trimethylsilyl trifluoromethanesulfonate, dimethylsilyl trifluoroacetate, dimethylsilyl trifluoromethanesulfonate, butyldimethylsilyl trifluoroacetate, butyldimethylsilyl trifluoromethanesulfonate, hexyldimethylsilyl trifluoroacetate, hexyldimethylsilyl . S
trifluoroacetate, Hexyldimethylsilyl trifluoromethanesulfonate, octyldimethylsilyl trifluoroacetate, octyldimethylsilyl trifluoromethanesulfonate, decyldimethylsilyl trifluoroacetate, and decyldimethylsilyl trifluoromethanesulfonate, and the like can be mentioned. See page 6.
The reference differs from Applicant's recitations of claims by not disclosing
identical ranges (silylating agent/ catalyst ratio, total content of the silylating agent and catalyst). However, the reference discloses "encompassing" ranges, and encompassing ranges have been held to establish prima.
For example , the silylating agent amount is %, the acid content is 5% and the solvent content can be 80%.
A recitation of the intended use of the claimed invention must result in a composition difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art compositions capable of performing the intended use, then it meets the claim. facie obviousness (MPEP 2144.05)
Regarding claims 16-17, WO2018193841 disclose a surface composition comprising only a silylating agent, the fluorine-containing ether (aprotic solvent, Novec 7200,), and an acid(catalyst). See page 4.
Regarding claims 2-3, and 18-19, the Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the prior art composition, since the prior teaches an invention with a substantially similar chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 5, the amount of the silylating agent relative to the total amount of the silylating agent and the solvent is 2 to 30% by mass. The amount of the acid relative to the total amount of the silylating agent, the solvent and the acid is 0.01 to 30% by mass preferable. See page 6, Thus, the silylating agent content encompasses the claimed range.
Regarding claim 6, the silylating agent represented by the following general formula [1].
PNG
media_image1.png
56
511
media_image1.png
Greyscale
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 2-3, 6, 10,14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No.11670498. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent discloses a composition comprising: a silylating agent (silicon compound I with general formula [1],[2], and [3]) of a content of 0.1-35%; a catalytic compound (compound II); and an aprotic solvent, wherein a content of the catalytic compound is 0.05-10% by mass or more with respect to 100% by mass of the composition for film formation. The patent differs from Applicant's recitations of claims by not disclosing identical ranges (catalyst content, silylating agent/ catalyst ratio, the total content of the silylating agent and catalyst). However, the patent discloses "encompassing" ranges, and encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Response to Arguments
Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive.
The rejection of claim(s) 1-9 and 11 under 35 U.S.C. 102(a)(1) as being anticipated by US20200350176A1(US'176) is withdrawn based on the amendment.
The applicant argues that WO2019124264A1 or US20210090881A1 or US11670498 fails to tech the contents of the catalyst, silylating agent, the total amount of the catalyst and silylating agent and the ratio of silylating agent/catalyst.
WO2019124264A1 or US20210090881A1 or US11670498 discloses a silylating agent (silicon compound I with general formula [1],[2], and [3]) of a content of 0.1-35%; a catalytic compound (compound II); and an aprotic solvent, wherein a content of the catalytic compound is 0.05-10% by mass or more with respect to 100% by mass of the composition for film formation. The reference differs from Applicant's recitations of claims by not disclosing identical ranges (catalyst content, silylating agent/ catalyst, ratio, the total content of the silylating agent and catalyst). However, the reference discloses "encompassing" ranges, and encompassing ranges have been held to establish prima facie obviousness (MPEP 2144.05).
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 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 SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
Prosecution Insights