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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,746,237 (hereafter referred to as “the ‘237 Patent”) is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely appraise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1422.01, and 1442.04.
Priority
U.S. Patent Application No. 16/969,435 which matured into the ‘378 Patent was filed on 22 November 2018 and claims priority to provisional application JP 2018-023092 filed on 13 February 2018.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 9/4/2024 has been considered by the Examiner.
Claim Status
The following is the status of the claims
Claims 1-9 are pending.
Claims 1-5 are original.
Claims 6-9 are new.
Claim Objections
Claim 8 is objected to because of the following informalities: in lines 1 and 2 of claim 8 the phrase “Y is a C6-C20 arylene or a C2-C30 alkylene group” is unnecessarily in bold. Appropriate correction is required.
Recapture
Claims 6-9 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North
American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Analysis
As to STEP 1, new claim 6 encompasses embodiments wherein the “A” group is -CH3 which does not fall within the scope of claim 1 of the original patent. As such, new claims 6, 8, and 9 contain within their scope products which would not have infringed the original patent. Accordingly, claims 6, 8, and 9 have been broadened.
With respect to STEP 2, if an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by Applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by Applicant. The reliance by Applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art.
During the prosecution of U.S. Patent Application No. 16/969,435 (hereafter the ‘435 Application) which matured into the ‘378 Patent, Applicant amended the claims in order to overcome the prior art which was relied upon to reject the claims which encompassed embodiments wherein the “A” group is -CH3. More specifically, on 23 January 203 Applicant filed claims which included an amended claim 1 and a new claim 9 which are reproduced below:
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In the remarks filed with the claims, Applicant specifically indicated that claim 9 corresponds to original claim 1, wherein “-CH3” is deleted from the A group (page 5 – under “Status of the Claims”.
On 23 February 2023, a final Office action was filed wherein claim 1 was rejected as being anticipated by US 2007/0293624 to Matsumoto. In the grounds of rejection, the Examiner characterized Matsumoto as disclosing an organosiloxane compound which anticipated the organosiloxane compound of Applicant’s claim 1 where the “A” group is a -CH3 group (item 6). In the final Office action, the Examiner indicated that claim 9 was allowable as none of the cited prior art teaches or fairly suggests the claimed “A” group (which excluded -CH3).
On 23 May 2023, in a response after final Office action, Applicant filed amended claims wherein original claim 1 was canceled and the remaining claims were all amended so as to depend from independent claim 9. Along with the amended claim, Applicant filed Arguments/Remarks in which they assert that claims 4-7 have been amended so as to directly or indirectly depend from claim 9 which was indicated as being allowable by the Examiner.
As such, during the prosecution of the ‘435 Application which matured into the ‘378 Patent, the limitation in which the “A” group could be -CH3 was deleted by Applicant in order to render the claims patentable over the cited prior art. It is noted that any limitation presented, argued, or stated to make the claims patentable over the prior art “generates” the surrender of claimed subject matter that omits that limitation in its entirety, i.e. surrender of any claims whose scope does not contain the limitation.
Thus, new claims 6-9 in the instant reissue application are related to subject matter surrendered in the original prosecution.
As to STEP 3, new independent claim 6 is not materially narrowed in any other aspect.
Accordingly, claims 6-9 are rejected as being improper recapture of broadened claimed subject matter.
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 6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamaya et al., US 2005/0227092 (“Yamaya”).
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Regarding claims 6 and 8, Yamaya discloses a coating (i.e., a film) comprising a cured product of a surface treatment agent comprising an organosiloxane compound having the following general formula [abstract, 0002, 0011, 0012, 0016, 0018, 0019]:
Wherein “R” is a C1 -C6 alkyl group or phenyl group, each “R” may be the same or different and “Y” is -O-, or a C2 -C10 alkylene or arylene group or a combination thereof [0016, 0019]. The subscript “a” may be 1, “b” is 0, 1, 2, or 3, and “Z” is a halogen atom, a C1-C6 alkoxy, acyloxy or alkenoxy group or a -NCO group [0016, 0019]. As such, encompassed within the teachings of Yamaya is a coating comprising cured product
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having the following formula:
The methyl group (-CH3) at the leftmost side of the formula corresponds to the claimed “A” group. The C4 alkyl groups between the brackets and between the central and rightmost silicon atoms correspond to the claimed “Y” groups. The methyl groups (-CH3) bonded to the leftmost silicon atom correspond to the claimed “W” group and the methyl groups (-CH3) bonded to the central silicon atom correspond to the claimed “R” group. The methoxy groups (-O-CH3) bonded to the rightmost silicon atom correspond to the claimed “X” group.
Allowable Subject Matter
Claims 1-5 are allowed.
The following is a statement of reasons for the indication of allowable subject matter. The closest identified prior art references are described below.
As is described in the Notice of Allowability filed on 22 June 2023 during the prosecution of the ‘435 Application, US 2007/0293624 to Matsumoto discloses an organosiloxane of the formula C10H21-Me2SiO-SiMe2-CH2CH2-Si(OMe)3 [0052]. The disclosure of Matsumoto does not reasonably teach or suggest an organosiloxane having the claimed general formula (1) wherein “A” does not include a -CH3 group.
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Additionally, US 2014/0147628 to Kiyomori, was found to be close prior art as it discloses the following:
While the organosiloxane compound disclosed by Kiyomori is similar to the organosiloxane compound recited in the instantly pending claims it is noted that Kiyomori does not teach or suggest an organosiloxane compound which comprises any of the “A” groups recited in claims 1 and 7 or an organosiloxane which corresponds to the claimed general formula (1) wherein the subscript “q” is 2 or 3.
Moreover, a thorough search of the relevant prior art did not reveal any references or combination of references which provide motivation to structurally modify the above compound to obtain a claimed compound is absent as the art of record does not provide a substantial utility for this compound. MPEP § 2144.09(VI); citing In re Lalu, 747 F.2d 703, 223 USPQ 1257 (Fed. Cir. 1984); see also, In re Albrecht, 514 F.2d 1389, 1396, 185 USPQ 585, 590 (CCPA 1975). With respect to instant method claims 12 and 14-23, the above cited reference does not motivate one of ordinary skill in the art to employ the above compound in the instantly claimed methods.
As such, a thorough search of the relevant prior art did not reveal a reference or combination of references which reasonably teach(s) or suggest(s) the invention recited in instant claims 1-5.
Conclusion
Claims 1-5 are allowed. Claims 6-9 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571) 270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
Conferees:
/ELIZABETH L MCKANE/Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
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