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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-10 in the reply filed on 11/04/2025 is acknowledged.
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: reference numbers 51 and 55 in Fig. 5 are not mentioned in the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al. (JP 2021-091859) (cited in the IDS filed on 10/02/2024).
Citations to Sato et al. below refer to the machine translation document filed with the IDS submitted on 10/02/2024.
Regarding claim 1, Sato et al. discloses an anti-fogging agent including a coating hydrophilic polymer and a silicon-based compound. (Abstract). The silicon-based compound includes silane coupling agents such as 3-trimethoxysilylpropyl succinic anhydride (par. [0019]) which is a silane coupling agent having an acid anhydride group. Furthermore, the coating includes a binder compound (par. [0042]) and metal oxide fine particles including silica. (par. [0045]). Sato et al. further discloses a binder composition made from a reaction of ethylene adduct of dodecyl alcohol and 3-glycidoxypropyl trimethoxysilane (Synthesis Example 2) which is further mixed with a hydrolysate of 3-trimethoxysilylpropyl succinic anhydride (Example 4) (i.e. a silane coupling agent).
Regarding claim 2, the synthesis example 2 includes a binder that is an epoxy compound. (3-glycidoxypropyl trimethoxysilane).
Regarding claim 3, 3-trimethoxysilylpropyl succinic anhydride meets the limitations of General formula 1.
Regarding claim 4, Example 4 discloses the reaction product of 3-trimethoxysilylpropyl succinic anhydride with a binder material of Synthesis Example 2.
Regarding claim 5, Sato et al. further discloses a binder composition made from a reaction of ethylene adduct of dodecyl alcohol and 3-glycidoxypropyl trimethoxysilane (Synthesis Example 2) which is further mixed with a hydrolysate of 3-trimethoxysilylpropyl succinic anhydride (Example 4) (i.e. a silane coupling agent). Therefore, the binder contains an epoxy compound and the silane coupling agent includes the formula of claim 1.
Regarding claim 6, Sato et al. discloses in Example 4 producing a hydrolyzed condensate of 3-trimethoxysilylpropyl succinic anhydride using water and alcohol. The hydrolyzed condensate would have the structure shown in Formula 5 where R54 and R55 are H.
Regarding claim 8, Sato et al. discloses a silane material containing a polyether group produced by the reaction of ethylene oxide adduct of dodecyl alcohol and 3-glycidoxypropyltrimethoxysilane. (par. [0077]).
Regarding claims 9-10, Sato et al. discloses curing catalysts including aluminum acetotacetate, aluminum perchlorite and aluminum acetate derivatives. (par. [0072]).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP 2021-091859) (cited in the IDS filed on 10/02/2024).
Regarding claim 7, the content of the metal oxide particles is disclosed to be in the range of 1-500% by weight with respect to the water-soluble polymer (par. [0064]). The content of the silane agents in the inventive example can range from 1-200% by weight of the water-soluble polymer (par. [0063]). Therefore, the relative amount of metal oxide particles to the synthetic product produced by the reaction of the silane materials 1:500 x100 (0.2 parts by mass) to 200:1 x 100 (20000 parts by mass), overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 02/20/2026