DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/24/26 has been entered.
Amended claims 1, 2, 4 and 5 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: These claims specifically exclude the “second solvent” which was embraced by and included in the original claims. As such claims directed to a composition that specifically excludes this solvent are considered to be a distinct invention from the originally examined claim.
While the original claims may have had the second solvent as optional (0 mass%), this did not completely exclude the solvent from being present in the composition.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Claims 1, 2, 4 and 5 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
Claims 6 to 11 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.
It is unclear if the second solvent is required to be present in the liquid medium.
On one hand it appears to be present as the claims states that “the liquid medium contains water, a first organic solvent and a second organic solvent” in both claims 6 and 9. On the other hand the claims include the language “a content of the second organic solvent in the liquid medium is… not less than 0%”. From this it appears to be optional.
The Examiner recognizes that this issue was raised in the parent application but does not believe that the prosecution history in this application adequately address this issue such that ambiguity is still present.
Claim Interpretation
After reading applicants’ arguments and giving the claims reconsideration, the Examiner wants to clarify on the record the interpretation given to the limitation found in claim 9 that “a content of the water in the liquid medium is, in terms of % by mass, not less than 6% and not more than 8%” (emphasis added). This does NOT place a limita-tion on the amount of water in the entire liquid composition. The liquid composition allows for components other than the silica precursor and the liquid medium.
This interpretation does not apply to claim 6 since this claim limits the liquid com-
position to “consist of” the silica precursor and liquid medium. While the word “contains” in the liquid medium allows for additional components, “a content of water in the liquid medium…” only allows for the defined amount of water in the liquid medium and thus in the liquid composition.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 6 to 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma 2009/0053645.
Sharma teaches a method of preparing a coating on glass which includes apply-
ing a silane and solvent solution by spray coating. See paragraph 19 which specifically teaches spraying. While the entire teachings in Sharma are relevant to this rejection the Examiner directs particular attention to Table 1, found on paragraph 29.
The coating solution contains silanes corresponding to the silica precursor.
This solution also includes n-propanol, n-butanol, an intermediate solution (which is diluted with n-propanol) and water. This corresponds to the claimed liquid medium. According to the Examiner’s calculations, the total weight of water, n-propanol (including that in the intermediate solution) and n-butanol comes to around 88.71. Since there are 6.4 grams of water, this corresponds to 7.2 wt% water, which falls within the claimed range.
In addition, the amount of 1-butanol (n-butanol) in Sharma is 12.82 such that the amount of this solvent is present in an amount of around 14.5 wt%. This meets the second organic solvent (and claim 6) as well as the claimed mass amount.
The solution in Table 1 differs from the claims only in that it contains n-propanol rather than 2-propanol (isopropanol) as what would be considered the first solvent (also the solvent in claim 2). Note that n-propanol has a boiling point of 97oC.
Paragraph 30 teaches that isopropanol can be used as a suitable solvent in the coating solution therein. This, combined with fact that compounds which are position isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties, renders obvious the substitution of 2-propanol for the 1-propanol (n-propanol) found in Table 1. In view of this obviousness, each claim limitation of claims 6 to 8 are rendered obvious.
With regard to applicants’ arguments that the amended claims exclude the presence of acetone and rheological enhancer, please note that while claim 6 uses “consist” to limit the liquid composition to the silica precursor and liquid medium, the term “contains” broadens the scope of the liquid medium. This term is consistent with open interpretation. Since the claimed liquid composition is a combination of these components in mixture, no patentable weight is given where or how the acetone and rheological enhancer are added. The term “consists” of does not aid in this distinction. As such this rejection applies.
Claims 9 to 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsuda et al. 2002/0011182.
Matsuda et al. teach a method of forming a transparent coated substrate. In this
method the coating composition can be applied by spray coating. See paragraph 61. This meets the claimed method step of “applying a liquid composition…”.
Paragraphs such as, but not limited to, 29-34 and 42 teach various components that are silica precursors and organic solvents. While the entire teachings in Matsuda et al. are relevant to this rejection the Examiner calls particular attention to Example 1. This shows a composition that contains butanol, isopropyl alcohol and water and meets the requirement of a liquid medium that contains water, a first organic solvent (IPA which also meets claim 2) and a second organic solvent (butanol which also meets claim 3). Given the amount of each organic solvent as well as the water the amount of butanol is about 16 wt% of the total weight of the liquid medium.
Table 1 also contains methyltrimethoxysilane which meets the requirement of a silica precursor. See for instance the examples given in paragraphs 14 and on of the instant specification.
Since Matsuda et al. teach each of the claimed components in the claimed amounts, as well as the step of spray coating onto a substrate, each of claims 9 to 11 are anticipated.
With regard to applicants’ remarks regarding acetone, this necessitated the “new” rejection over Matsuda et al., as Matsuda et al. do not require acetone.
Regarding the fact that the liquid composition in Matsuda et al. contains more water than the 6 to 8 mass% limitation, note that this only limits the liquid medium and not the weight of water in the entire liquid composition. Since the claimed liquid is a combination of these components, no patentable weight is gen as to where or how the water is added. As such this rejection applies.
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
3/21/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765