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 .
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 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.
Claims 1-14 are pending.
Election/Restrictions
Applicant’s election, without traverse, of Group I and the following species, claims 1-11 in the reply filed on 08/06/26 is acknowledged.
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Claim(s) 12-14 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/06/26.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-7, 9-11 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Claims 1, 2, and 5 recite elastic modulus distribution limitations with very broad, almost unlimited, recitation of the type and amount of ingredients used to create the layer that achieves such properties, while the specification fails to provide enabling support for this broad scope being claimed (i.e., the specification does not enable one of ordinary skill in the art to achieve the claimed properties using a layer formed of “siloxane bond” with “one or more” organic groups and not containing a fluorine atom, without extreme/undue amount of experimentation). The narrowed scope of claim 8 would limit the type and amount of materials in the layer such that a reasonable amount of experimentation would be necessary to achieve the claimed properties from the claimed scope of claim 8 (thus claim 8 is not rejected). Anything broader than claim 8 would require experimenting with all the possible types of hydrolyzable silicone and hydrolyzable alkylsilane compounds (e.g., as recited in claim 7) of which there are countless possibilities (such that this amount of experimentation would be undue/unreasonable). Furthermore, without the HSP range and amount of silicone/alkylsilane in claim 7 (from which claim 8 depends), the amount of experimentation would include experimenting with all possible solvents and all possible amounts of silicone and alkylsilane (which is also an unreasonable amount of experimentation). The present disclosure fails to provide any guidance on how to achieve the claimed properties with a claim scope broader than claim 8 (i.e., no guidance on how to achieve the claimed properties with organic solvents having HSP values outside the range of claim 7, or with amounts of silicone and alkylsilane outside the range of claim 7, or with types of hydrolyzable silicone and hydrolyzable alkylsilane compounds outside the scope of claim 8).
Upon applying the Wands factors to claim 1-7, 9-11, undue experimentation would be required:
The breadth of the claims; (as explained above, the claims are broad in terms of the type and amount of ingredients relative to the much narrower guidance provided in the specification)
The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the properties as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types and amounts of ingredients without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain types and amounts of ingredients, without any corresponding direction provided for achieving the claimed properties with the broader types and amounts of ingredients as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and fail to resolve the above enablement problem.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(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(s) 7-8 is/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 pre-AIA the applicant regards as the invention.
Claim 7 recites an HSP 10.8-12.1 which is vague because HSP is made of three components (dispersion, intermolecular, and hydrogen bonds) and/or can be calculated as an comparative interaction radius between an ingredient being dissolved and the solvent based on three dimensional coordinates (from the three components listed above). The claim does not specify which HSP component is being referred to or if the radius is instead being used (and if so, based on a comparison with which ingredient?). The claims also do not refer to the units of the parameter (which may be inverse MPa or square root of calories over centimeter cubed). Furthermore, the HSP values for the solvents used in the present specification seems to deviate substantially from reported HSP values of those solvents (for any of the three possible HSP components). Based on the above, the recitation of HSP in the claims is vague.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
Claim Rejections - 35 USC § 103
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art 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).
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino (JP 2015-145463, cited by Applicant, see machine translation) in view of Hironaga (U.S. 2018/0201796).
Regarding claims 1-11, Hoshino teaches a water repellent film with a water repellent layer over a glass substrate (as in claim 11) and with an underlayer between the repellent layer and the glass substrate, wherein the underlayer includes tetralkoxysilanes and bistrialkoxysilyl ethane compounds (as in claim 9-10), and wherein the water repellent layer is formed by dry curing (an immaterial product by process limitation of claim 7) a composition that includes an organic solvent, which may be a mixture of lower alcohols, and siloxane and silane compounds that overlap the type and amounts in claims 3, 7 and 8 (e.g., when R3 is a C4 alkyl, each R2 is methyl, Y1 is C2 alkylene, and n1 is 3 for formula 1 of Hoshino, and octadecyltrimethoxysilane, as in the elected species) ([0009], [0023], [0051], [0056], [0063], [0069], [0084], [0088]-[0093], [0101], [0104]). Hoshino also discloses a water contact angle overlapping claim 6 as desirable ([0146]) and does not require any fluorine atoms in the underlayer or water repellent layer as in claims 1 and 9.
Hoshino does not disclose the claimed elastic modulus distribution properties of claims 1, 2, 4, and 5, or the HSP values of the solvent. However, as explained above, a mixture of lower alcohol solvents is suggested and Hironaga is also directed to a siloxane based water repellent film for glass substrates and discloses that propanol and butanol were know lower alcohol solvents for such coatings (see abstract, [0008], [0011], [0065], [0126], [0127], [0145]) such that it would have been obvious to have used such specific lower alcohol solvents from Hironaga as the lower alcohol solvents generally called for by Hoshino because Hironaga shows they are suitable for the same desired purpose as in Hoshino.
Based on the above, modified Hoshino renders obvious an overlapping type and amount of siloxane and silane compounds in the water repellent layer and an overlapping type and amount of solvents used to form the water repellent layer (see below regarding solvents/HSP) relative to the compositions in the present application that achieve the claimed properties of claims 1, 2, 4, and 5, such that these overlapping embodiments of the prior art will inherently have the same properties as the overlapped embodiments in the present application.
The solvents discussed above (i.e., propanol and butanol) correspond to those in the present examples, except their isomer structure is not disclosed. However, the isomers used in the present examples are prima facie obvious based on the prior art’s disclosure. See MPEP 2144.09 II. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Furthermore, regarding the ratio of these solvents relative to each other, given that Hoshino already discloses mixing lower alcohol solvents like propanol and butanol, including mixing them based on polarities and evaporation rates ([0063]) the particular ratio of the solvents relative to each other is considered obvious as an art recognized variable for adjusting the polarities and evaporation rates. Furthermore, even without considering the art’s teachings of polarities and evaporation rates, the ratio of such solvents relative to each other is considered a prima facie obvious condition that is obvious to adjust under MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Based on the above, the prior art renders obvious a mixture of propanol and butanol solvents of overlapping isomers and amounts relative to the solvents that achieve the claimed HSP value in the present application.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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