Prosecution Insights
Last updated: October 02, 2026
Application No. 18/862,010

GLASS CLOTH TREATMENT LIQUID AND SURFACE TREATED GLASS CLOTH

Non-Final OA §102§103§112
Filed
Oct 31, 2024
Priority
May 09, 2022 — JP 2022-077058 +1 more
Examiner
GILLETT, JENNIFER ANN
Art Unit
Tech Center
Assignee
Shin-Etsu Chemical Co., Ltd.
OA Round
1 (Non-Final)
30%
Grant Probability
At Risk
1-2
OA Rounds
2y 3m
Est. Remaining
67%
With Interview

Examiner Intelligence

Grants only 30% of cases
30%
Career Allowance Rate
101 granted / 341 resolved
-30.4% vs TC avg
Strong +38% interview lift
Without
With
+37.7%
Interview Lift
resolved cases with interview
Typical timeline
4y 2m
Avg Prosecution
54 currently pending
Career history
396
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
50.4%
+10.4% vs TC avg
§102
11.9%
-28.1% vs TC avg
§112
35.9%
-4.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 341 resolved cases

Office Action

§102 §103 §112
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 . Claim Rejections - 35 USC § 112 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. Claim 5 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 5 recites the limitation “wherein from 0.05 to 0.5 wt% of the methacrylamide group-containing organosilicon compound of formula (1) is deposited on the glass cloth.” It is unclear if the referenced 0.05 to 0.5 wt% is an add-on amount, based on the total weight of the surface-treated glass cloth, or percentage of the weight of the added solution. 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. Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 2004/0096659 to Gonthier. Regarding claims 1-4, Gonthier teaches glass strands coated with an aqueous sizing composition (treatment solution) comprising at least one unsaturated monosilane B, including (meth)acrylaminoalkyltrialkoxysilane (methacrylamide group-containing organosilicon compound of formula (1)) (Gonthier, abstract, para 0041, 0043). Gonthier teaches a specific composition embodiment comprising 0.2 wt% aminobis(propyltrimethoxysilane) and 0.25 wt% of an unsaturated monosilane that is a mixture of methacrylamidopropyltrimethoxysilane and methacrylamindopropyltriethoxysilane that is adjusted to a 4 pH (Id., para 0077-0089, Example 2), reading on a treatment solution comprising 0.2 wt% of a methacrylamide group-containing organosilicon compound of formula (1) with R1 being a methyl group and n1 is 3 (claim 2) and m1 is 3 dissolved in water that has been adjusted to acidity (claim 3). Gonthier does not require a dimethyacrylamide group-containing organosilicon compound of formula (2) (If., all, para 0077-0089, claim 1), therefore a content of dimethyacrylamide group-containing organosilicon compound of formula (2) is less than 1 part by weight per 100 parts by weigh of the methacrylamide group-containing organosilicon compound of formula (1), specifically 0 parts. Regarding claim 4, Gonthier teaches the glass strands being in various forms including fabrics or mats of continuous or cut strands (Id., para 0001, 0004), reading on a surface-treated glass cloth having a surface treated with the sizing composition (glass cloth treatment solution). Claim Rejections - 35 USC § 102 / 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 6 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2004/0096659 to Gonthier, remaining as applied to claims 1-4 above. Regarding claim 6 and the claimed tensile strength with respect to cloth weight (g/mm2) being at least 2.1 rimes the tensile strength prior to surface treatment, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not disclose this feature, the claimed properties are deemed to be inherent to the structure in the prior art since the Gonthier reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Gonthier teaches glass strands treated with a composition containing methacrylamide group-containing organosilicon compound as claimed formed into a fabric. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise. Claim Rejections - 35 USC § 103 Claims 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2004/0096659 to Gonthier, remaining as applied to claims 1-4 and 6 above. Regarding claims 4-8, in the event it is shown that Gonthier does not disclose the claimed invention with sufficient specificity, the invention is obvious because Gonthier discloses the claimed constituents and discloses that they may be used alternatively or in combination. It would have been obvious to one of ordinary skill in the art before the effective filing date for the glass strands of Gonthier into a fabric motivated by the desire of forming conventionally known structure predictably suitable for reinforcing composite and disclosed by Gonthier as conventional known. Regarding claim 5, Gonthier teaches the glass strands coated with the sizing composition exhibiting a loss on ignition of less than 1.5% (Gonthier, para 0055). Gonthier teaches the solids content of the sizing composition being about 6% (Id., para 0075). With 0.25 wt% of the composition being unsaturated monosilane B, this would read on about 0.06% of ignition being attributed to the unsaturated monosilane B and 0.06 wt% of the methacrylamide group-containing organosilicon compound of formula (1) being deposited on the glass cloth, as best understood by examiner. Regarding claim 7, Gonthier teaches the glass strands coated with a sizing composition being used to reinforce organic material (Gonthier, para 0001), such as a composite (prepreg) comprising at least one thermosetting polymer material with there being an improvement towards ageing (Id., para 0076), reading on the surface-treated glass cloth and a matrix resin impregnated into the surface-treated glass cloth. Regarding the “printed wiring board” preamble recited in claim 8, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since the prior art teaches a substantially similar structure and composition as claimed, and since a printed wiring board does not impute a specific structure absent from the prior art, the invention of Gonthier appears to be capable of the claimed intended use recited. Claims 7-8 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2004/0096659 to Gonthier, remaining as applied to claims 1-8 above, in view of CN 107119455 to Tang. NOTE: The English Machine Translation of CN 107119455 is being used for prior art mapping. Regarding claims 7-8, alternatively, Gonthier teaches the glass strands coated with a sizing composition being used to reinforce organic material (Gonthier, para 0001), such as a composition comprising at least one thermosetting polymer material with there being an improvement towards ageing (Id., para 0076). Gonthier does not explicitly teach a printed wiring board using the composite. However, Tang teaches it is known to use a glass fiber cloth coated with a silane couple agent that as a formula of Y(CH2)nSiX3, wherein the Y represent an organic functional group including mechacrylamide and X represents a hydrolyzable group, including methoxy or ethoxy, in the production of reinforced resin-based composite materials, including the treated glass fiber cloth being impregnated with a matrix resin and dried into a prepreg and laminated into an insulating board or molded into an insulating part (printed wiring board composite). Tang teaches the coupling agent determining bonding strength of the resin and glass fiber interference and that once the bonding force is insufficient and the resin and glass are delaminated, interlayer breakdown and leakage will occur (Id., p. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the reinforced composite of Gonthier, wherein the composite is a prepreg used in an insulating board or part (printed wiring board) as taught by Tang, motivated by the desire of forming conventionally known composite parts predictably suitable for use with plastic reinforced with glass fibers coated with a silane composition having methacrylamide and siloxane functionality within the scope of the unsaturated monosilane B of Gonthier. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPN 6,204,403 to Pepe teaches an acrylamidoalkylalkoxysilane prepared from aminoalkylalkoxy silane, such as aminopropylmethyldimethoxysilane, and acrylate ester, such as methacrylate. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:00 PM EST M-H. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JENNIFER A GILLETT/Examiner, Art Unit 1789
Read full office action

Prosecution Timeline

Oct 31, 2024
Application Filed
Sep 04, 2026
Non-Final Rejection mailed — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
30%
Grant Probability
67%
With Interview (+37.7%)
4y 2m (~2y 3m remaining)
Median Time to Grant
Low
PTA Risk
Based on 341 resolved cases by this examiner. Grant probability derived from career allowance rate.

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