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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on 09/05/2025 is acknowledged.
Claim Rejections - 35 USC § 102
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 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) 1-9 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20200350176A1(US’176),
Regarding claim 1, US’176 discloses a Protective Film-Forming Liquid Chemical containing 1.5 % trimethylsilyl trifluoroacetate (TMS-TFA: (CH3)3Si—OC(═O)CF3) read on catalytic compound, hexamethyldisilazane (HMDS: (CH3)3Si—NH—Si(CH3)3) read on silylating agent and propylene glycol monomethyl ether acetate (PGMEA) as an aprotic solvent. See [0152] and Table 1.
A recitation of the intended use of the claimed invention must result in a structural 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 structure is capable of performing the intended use, then it meets the claim.
Regarding claims 2-3, 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 4, US’176 discloses that TMS-TFA content is 1.5% and HMDS content is 3.8%. Thus HMDS/TMS-TFA is 1.69. See Table 1, Ex1-1, 1-4.
Regarding claim 5, US’176 discloses a Protective Film-Forming Liquid Chemical containing 1.5 % trimethylsilyl trifluoroacetate (TMS-TFA: (CH3)3Si—OC(═O)CF3) read on catalytic compound. See Table 1, Ex1-1, 1-4.
Regarding claim 6, US’176 discloses the Protective Film-Forming Liquid Chemical containing hexamethyldisilazane (HMDS: (CH3)3Si—NH—Si(CH3)3) read on silylating agent. See [0152] and Table 1.
Regarding claims 7-8, US’176 discloses a Protective Film-Forming Liquid Chemical containing 1.5 % trimethylsilyl trifluoroacetate (TMS-TFA: (CH3)3Si—OC(═O)CF3) read on catalytic compound. See Table 1, Ex1-1, 1-4.
Regarding claim 9, US’176 discloses a Protective Film-Forming Liquid Chemical containing 1.1% TMS-TFMSA (trimethylsilyl trifuoromethanesulfonate (CH3)3Si—OS(═O)2CF3) read on catalytic compound, 6.4 % hexamethyldisilazane (HMDS: (CH3)3Si—NH—Si(CH3)3) read on silylating agent and propylene glycol monomethyl ether acetate (PGMEA) as an aprotic solvent. See [0148]; Table 3, EX 3-6
Regarding claim 11, US’176 discloses a Protective Film-Forming Liquid Chemical containing 1.5 % trimethylsilyl trifluoroacetate (TMS-TFA: (CH3)3Si—OC(═O)CF3) read on catalytic compound, 6.8 % hexamethyldisilazane (HMDS: (CH3)3Si—NH—Si(CH3)3) read on silylating agent and propylene glycol monomethyl ether acetate (PGMEA) as an aprotic solvent. See Table 1, EX 1-3. Thus, total content of the silylating agent and the catalytic compound contained in 100% by mass of the composition for film formation is 8.3% by mass.
Claim(s) 1 and 10 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by WO2019124264A1(US20210090881A1, US’881, is cited for convenience).
Regarding claim 1, US’881 discloses a surface treatment agent includes the following components: (I) at least one kind selected from the group consisting of silicon compounds represented by formulas [1], [2] and [3]; (II) at least one kind selected from the group consisting of a nitrogen-containing heterocyclic compound represented by the general formula [4], a nitrogen-containing heterocyclic compound represented by the general formula [5], and imidazole; and (III) an organic solvent. US’881 discloses the Surface Treatment Agent comprising N-methyl-N-trimethylsilyltrifluoroacetamide ((CH3)3SiN(CH3)C(═O)CF3; MSTFA) as the component (I), which is read on the silylating agent, 1.2% of the component (II), which is read on the catalyzing agent, and propylene glycol monomethyl ether acetate (PGMEA) as the organic solvent (III), which is read on aprotic solvent See abstract; claim 1, table 4 and example 2-1.
A recitation of the intended use of the claimed invention must result in a structural 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 structure is capable of performing the intended use, then it meets the claim.
Regarding claims 2-3, 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 10, US’881 discloses component 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. See abstract; claim 1, table 4 and example 2-1.
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 1-6,10-11 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 disclose 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.
Conclusion
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.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731