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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,352,378 (hereafter referred to as “the ‘378 Patent”) is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely appraise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1422.01, and 1442.04.
Priority
U.S. Patent Application No. 16/649,834 which matured into the ‘378 Patent was filed on 26 September 2018 and claims priority to provisional application JP 2017-206986 filed on 26 October 2017.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 6/6/2024 has been considered by the Examiner.
Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The declaration states that the reissue is broadening but does not identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. A general statement that the patent is believed to be wholly or partly invalid or inoperative for patentee claiming less than they were allowed to claim is not sufficient to satisfy this requirement. See MPEP 1414 II.
Claims 42-45 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Status
The following is the status of the claims
Claims 1-45 are pending.
Claims 1-41 are original.
Claims 42-45 are new.
Original Patent Requirement Under 35 U.S.C. §251(a)
IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 42-45 are rejected as not complying with the original patent requirement under 35 U.S.C. §251.
New reissue claims 42-45 are directed to a film comprising a cured product of a generic organosilane compound of an unspecified formula.
As stated in Forum US, Inc. v Flow Valve, LLC, 926 F.3d 1346, 2019 USPQ2d 221227 (Fed. Cir.), for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus. Chems., 315 U.S. at 676. Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.
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The ‘378 Patent relates to an organosilane compound having the general formula (1):
The ‘378 Patent discloses only embodiments of a silane compound having the general formula (1) described immediately above. Regarding new reissue claims 42-45 directed to a film formed from a silane compound of an unspecified formula, there is no evidence from the specification or the drawings that the original patent intended to claim a film formed from anything other than a silane compound having the specific formula (1) shown above.
For example, the Abstract of the ‘378 Patent discloses:
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Under the heading “Solution to Problem,” the ‘378 Patent recites:
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Under the heading “DETAILED DESCRIPTION OF THE EMBODIMENTS,” the ‘378 Patent teaches:
Further, all six of the example organosilane compounds 1-6 presented in the original application have formulas (formulas (B), (D), (F), (G), (J), and (M)) which fall within the scope of the general formula (1).
In the present reissue, Patent Owner seeks to include new claims 42-45 which encompass embodiments which do not require the silane having the general formula (1).
The ‘378 Patent does not “clearly and unequivocally disclose” a film formed from a silane compound having anything other than the general formula (1). Accordingly, claims 42-45 do not comply with the original patent requirements under §251(a).
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 42 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogawa, US 2010/0183861(“Ogawa”).
Regarding claim 42, Ogawa discloses a film formed from a coating composition comprising an organosilane compound and a solvent [abstract, 0001, 0008, 0039, 0047-0076]. Ogawa teaches an exemplary organosilane compound of the formula CF2COO(CH2)15Si(OC2H5)3 [0058]. In this exemplary organosilane compound, the Si(OC2H5)3 corresponds to the claimed hydrolysable silyl group wherein the hydrolysable group is a C2 alkoxy group. The (CH2)15 moiety of the disclosed silane compound corresponds to the claimed lipophilic group since it is an aliphatic alkane which one of ordinary skill in the art would understand to be intrinsically be lipophilic.
Ogawa teaches forming the film by vaporizing (i.e., evaporating) the solvent [0041, 0074]. which is reasonably interpreted as curing. This interpretation is consistent with the ‘378 Patent which discloses forming the claimed cured film by evaporation of a carrier solvent (col. 18 lines 4-24). Thus, Ogawa reasonably teaches a cured film as claimed.
Claim 42 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koyanagi et al., JP20014187864 (“Koyanagi”)(machine translation provided herewith).
Regarding claim 42, Koyanagi discloses a film formed from a coating composition comprising an organosilicon compound of the formula (1):
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wherein R1 and R2 may each independently be a hydrogen atom or an alkyl group [abstract, 0007, 0009]. When R1 and/or R2 is a hydrogen atom the corresponding Si-O-R1 and/or Si-O-R2 moieties read on the claimed hydroxyl-containing silyl group.
Alternatively, as examples of alkyl groups which are suitable as of R1 and/or R2, Koyanagi teaches a methyl, propyl, ethyl, and butyl groups [0020]. When R1 and/or R2 are any of methyl, propyl, ethyl, and butyl groups, the resulting Si-O-R1 and/or Si-O-R2 moieties would respectively be a methoxysilyl, ethoxylsilyl, propoxysilyl, or butoxysilyl group which correspond to the hydrolysable silyl group that is a C1-C4 alkoxyl group encompassed by claim 42
Koyanagi further teaches that in the formula (1), X may represent -(CH2)n-, -(Ph)-(Ph) (where Ph is a benzene ring), -(CH2)n-(Ph)-, -(CH2)n-(Ph)-(CH2)n where n is an integer from 1 to 30 [0010]. The X group of the organosilicon compound disclosed by Koyanagi corresponds to the claimed lipophilic group.
The disclosed film is formed by coating a substrate which a liquid solution comprising the organosilicon compound of the formula (1) and subsequently drying and curing the solution resulting in the formation of a hardened film which corresponds to the claimed cured product [0012, 0040, 0063, 0064].
It is noted that the organosilicon compound of the formula (1) satisfies the proviso recited in claim 42.
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 45 is rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi as applied to claim 42 above.
Regarding claim 45, Koyanagi teaches that the disclosed film is transparent and has a refractive index in the range of 1.25 to 1.5 [0031] which overlaps, and therefore renders obvious, the claimed refractive index (see MPEP 2144.05).
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.
Claim 42 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11,905,368 (“the ‘368 reference patent).
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Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘368 reference patent claims a member comprising a layer (i.e., a film) composed of a cured product of a fluorinated organosilicon compound wherein the fluorinated organosilicon may be of the following structure:
The methoxy groups bonded to the silicon atom on the right hand side of the structure read on the hydrolysable group recited in instantly pending claim 42. The phenyl group bonded to the central nitrogen reads on the claimed lipophilic group. This position is supported by U.S. Patent No. 7,070,897 to Imafuku et al. which teaches that phenyl groups are highly lipophilic (col. 6 line 42). As such, instantly pending claim 42 and claim 1 of the ‘698 reference patent overlap in scope.
Claim 42 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of U.S. Patent No. 8,263,724 (“the ‘724 reference patent).
Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 24 of the ‘724 reference patent depends from (and therefore requires all the limitations of) claim 10. Claim 10 of the ‘724 reference patent claims an article having a surface upon which a cured coating is formed from a polyorganosiloxane represented by the formula:
Ak(R)nZ-Q-Rf-Q-Z(R)nAk
wherein A is a silane group represented by the following formula
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wherein R’ may be a phenyl group and Xa is a hydrolysable group. The phenyl group (R’) reads on the claimed lipophilic group. This position is supported by U.S. Patent No. 7,070,897 to Imafuku et al. which teaches that phenyl groups are highly lipophilic (col. 6 line 42). Claim 24 further defines X as being a methoxy or ethoxy group which read on the claimed hydrolysable silyl group of instantly pending claim 42.
As such, instantly pending claim 42 and claim 24 of the ‘698 refence patent overlap in scope.
Claim 42 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 8,362,186 (“the ‘186 reference patent).
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Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 9 of the ‘186 reference patent claims an article having a cured coating (i.e., a film comprising a cured product) wherein the coating is prepared from a composition comprising a silicone compound having the formula:
wherein R may be a phenyl group and X is a hydrolysable group. The phenyl group (R’) reads on the claimed lipophilic group. This position is supported by U.S. Patent No. 7,070,897 to Imafuku et al. which teaches that phenyl groups are highly lipophilic (col. 6 line 42). While claim 9 of the ‘186 reference patent does not recite that X is any of the hydrolysable groups recited in instant claim 42 it is noted that the ‘378 Patent for which reissue is requested discloses that the hydrolysable groups generate Si-OH groups upon curing of the coating (see col. 18 lines 8-24 of the ‘378 Patent). As such, the hydrolysable groups recited in instant claim 42 are lost during the formation of the instantly claimed cured coating. Thus, even though claim 9 of the ‘897 refence patent does not recite that X is any of the hydrolysable groups recited in instant claim 42, instantly pending claim 42 and claim 9 of the ‘186 refence patent still overlap in scope.
Allowable Subject Matter
Claims 1-41 are allowed.
The following is a statement of reasons for the indication of allowable subject matter. The closest identified prior art references are described below.
As is described in the Notice of Allowability filed on 11 April 2022 during the prosecution of the original application 16/649,834 which matured into the ‘378 Patent, CAS Registry No. R2093364-84-0 teaches the following organosilane compound:
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Motivation to structurally modify the above compound to obtain a claimed compound is absent as the art of record does not provide a substantial utility for this compound. MPEP § 2144.09(VI); citing In re Lalu, 747 F.2d 703, 223 USPQ 1257 (Fed. Cir. 1984); see also, In re Albrecht, 514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975). With respect to instant method claims 12 and 14-23, the above cited reference does not motivate one of ordinary skill in the art to employ the above compound in the instantly claimed methods.
Additionally, Koyanagi which teaches the organosilane compound of the formula (1) described above when addressing claim 42 does not reasonably teach or suggest an organosilane which comprises three silyl groups as required by claims 1-41.
As such, a thorough search of the relevant prior art did not reveal a reference or combination of references which reasonably teach(s) or suggest(s) the invention recited in instant claims 1-41.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571) 270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
Conferees:
/ELIZABETH L MCKANE/Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
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