DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Application
Claims 40-59 are pending. Claims 47-59 are withdrawn. Claims 40-46 are presented for examination.
Election/Restrictions
Applicant’s election without traverse of claims 40-46 in the reply filed on 5/8/2026 is acknowledged.
Claims 47-59 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/8/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In this case, “means for forming a clear coating on a surface” is interpreted as inclusive of compositions comprising 0-80% silazane, 0-60% siloxane and 5-80% silane as evidenced at paragraph 0007 of Applicant’s specification and equivalents.
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.
1. Claim 40-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-19 of U.S. Patent No. 9856400. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 17-19 of U.S. Pat. No. 9856400 anticipate claims 40-42.
2. Claim 40 and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of U.S. Patent No. 10301507. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 24 of U.S. Pat. No. 10301507 anticipates claims 40 and 41.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
3. Claim 46 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 46 depends from a cancelled claim and thereby fails to further limit the subject matter of a claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(b)
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.
4. Claim 46 is 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 46 recites the limitation "the polysilazane". There is insufficient antecedent basis for this limitation in the claim. Additionally, claim 46 depends from a cancelled claim and it is impossible to determine the metes and bounds of the claim. Therefore, claim 46 is indefinite. For examination purposes, claim 46 has been interpreted as depending from claim 40 and requiring the solvent to be n-butyl acetate or t-butyl acetate.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
5. Claim(s) 40 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Hirota (U.S. PGPUB No. 2008/0305611).
As an initial matter, the recitation that the composition after curing is a non-ceramic clear coating having a thickness and properties as claimed has not been given patentable weight. The claims are directed towards a composition, and not a coating prepared from the composition or the cured composition (which is a different product). Therefore, the claims are limited and defined by the components of the composition before curing. As such, any composition including the claimed components in the claimed amounts will anticipate the claims as presently presented.
Regarding claim 40, Hirota teaches an exemplary composition comprising: polysilazane (0037) in an amount of 17% (0069); polysiloxane in an amount of 0% (0069); a polysilane in an amount of 17% (0069); and an organic solvent (0069). As outlined above, this composition is a means for forming a clear coating on a surface and includes a solvent (see Claim Interpretation section above). Hirota teaches all the limitations of claims 40; therefore, Hirota anticipates the claim.
6. Claim(s) 40, 41, 43, 44 and 46 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Fandel et al. (U.S. PGPUB No. 2006/0121266).
As an initial matter, the recitation that the composition after curing is a non-ceramic clear coating having a thickness and properties as claimed has not been given patentable weight. The claims are directed towards a composition, and not a coating prepared from the composition or the cured composition (which is a different product). Therefore, the claims are limited and defined by the components of the composition before curing. As such, any composition including the claimed components in the claimed amounts will anticipate the claims as presently presented.
Regarding claims 40, 41, 43, 44 and 46, Fandel teaches a composition comprising: a solvent (claim 1), polysilane (claim1) and/or polysilazane (claim 1) in an amount of 10-80% (0048). As outlined above, this composition is a means for forming a clear coating on a surface and includes solvent (see Claim Interpretation section above). Fandel further teaches the inclusion of an additive, such as a catalyst (0042), and that the solvent can be ethyl acetate (0043), n-butyl acetate (0043) or a hydrocarbon (0043). Fandel teaches all the limitations of claims 40, 41, 43, 44 and 46; therefore, Fandel anticipates the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
7. Claims 42 and 45 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fandel in view of Bujalski et al. (U.S. Pat. No. 5364920).
I. Regarding claim 42, Fandel teaches all the limitations of claim 41 (see above), including the composition comprising a hydrocarbon solvent. Fandel fails to teach the hydrocarbon selected from the group as claimed.
However, Bujalski teaches the use of hexane as a hydrocarbon solvent for polysilazane compositions (column 5, lines 1-10). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Fandel’s composition by substituting hexane for Fandel’s hydrocarbon. One would have been motivated to make this substitution as one having ordinary skill in the art could have made this substitution with a reasonable expectation of success (in particular, Fandel teaches the use of a hydrocarbon solvent and Bujalski teaches hydrocarbon solvents suitable for polysilazane containing compositions), and the predictable result of providing a polysilazane composition in a compatible solvent.
II. Regarding claim 45, Fandel teaches all the limitations of claim 40 including a catalyst for curing a polysilazane mixture (see above), but fail to teach the composition including a curing hardener. However, Bujalski teaches including a curing hardener in a polysilazane crosslinking composition (see abstract, note that the silazane crosslinker is considered a curing hardener, see also applicant's specification at 0034 for their definition of curing hardeners). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Fandel’s composition by including a curing hardener as disclosed by Bujalski. One would have been motivated to make this modification as Bujalski teaches that the inclusion of the curing hardener provides better control over the curing reaction and can lower the Tg and storage modulus of the resin to impart a controllable tack (column 2, lines 15-22).
Conclusion
Claims 40-59 are pending.
Claims 47-59 are withdrawn.
Claims 40-46 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
May 26, 2026Primary Examiner, Art Unit 1717
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