Patent Application 18167235 - COMPOSITION FOR FORMING A CONFORMAL COATING ON - Rejection
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Patent Application 18167235 - COMPOSITION FOR FORMING A CONFORMAL COATING ON
Title: COMPOSITION FOR FORMING A CONFORMAL COATING ON AN ELECTRONIC DEVICE
Application Information
- Invention Title: COMPOSITION FOR FORMING A CONFORMAL COATING ON AN ELECTRONIC DEVICE
- Application Number: 18167235
- Submission Date: 2025-05-13T00:00:00.000Z
- Effective Filing Date: 2023-02-10T00:00:00.000Z
- Filing Date: 2023-02-10T00:00:00.000Z
- National Class: 428
- National Sub-Class: 336000
- Examiner Employee Number: 80299
- Art Unit: 1763
- Tech Center: 1700
Rejection Summary
- 102 Rejections: 1
- 103 Rejections: 0
Cited Patents
No patents were cited in this rejection.
Office Action Text
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 Applicantâs election of species (a) that is polysiloxanes, linear and cyclic silicone and species (b) that is functionalized or non-functionalized polysiloxanes, linear and cyclic silicone, and poly oligomeric silesquioxanes in the reply filed on 2/13/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 55-64 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/13/2025. Claim Objections Claims 34 and 35 are objected to because of the following reasons: With respect to claim 34, the term âat least one hygroscopic materialâ has antecedent basis in claim 5 and should read as âthe hygroscopic materialâ to be consistent. With respect to claim 35, last line, the term âviscoelaasticâ is a misspelling of âviscoelastic.â Appropriate correction is required. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (B) CONCLUSION.âThe 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. Claims 7, 28, 29, 38-40, 43, 48-50, and 54 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. With respect to claims 7, 28, 29, 38-40, 48-50, and 54, these claims contain limitations that are drawn to both a composition and coating product. Case law holds that a single claim that claims both a composition and the method steps of using it is indefinite under 35 U.S.C. 112, second paragraph. See Ex Parte Lyell, 17 USPQ 2d 1548 (Bd. Pat. App. 7 Inter.1990). If these claims remain as composition claims, the limitations in these claims are only functional language. If these claims are coating article claims, they will be withdrawn as not selected by original presentation. In the interest of compact prosecution, these claims are given the former interpretation. With respect to claim 43, the term âsaid particleâ lacks antecedent basis. Claim Rejections - 35 USC § 101 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Claims 7, 28, 29, 38-40, 48-50, and 54 are rejected under 35 U.S.C. 101 because the claims are directed to neither a âcompositionâ nor an âarticle of manufacture,â but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. §101, which is drafted so as to set forth the statutory classes of invention in the alternative only. 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 â (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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 1, 2, 4-8, and 28-54 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shorin (US 4,806,391). With respect to claims 1, 31, 32, 35, 41, 42, 45, 51, and 52, Shorin discloses silicone-based, hydrophobic coating composition comprising vinyl or hydroxyl chainstopped polysiloxane (âMQ resinâ) (claimed a) and vinyl or hydroxyl chainstopped diorganopolysiloxane (claimed b) (abstract). Shorin teaches that the coatings compositions exhibit non-Newtonian behavior at different shear rates (col. 5, line 27-36; col. 7, lines 41-50). Regarding preamble âfor forming a conformal coating,â case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). It is the examinerâs position that the preamble does not state any distinct definition of any of the claimed inventionâs limitations and further that the purpose or intended use, i.e. as a conformal coating, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art invention and further that the prior art structure which is a composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use. With respect to claim 2, Shorin teaches that an uncured coating composition is applied and subsequently cured (col. 19, lines 43-62). It is the examinerâs position that before curing the uncured coating composition, it is able to redistribute. With respect to claims 4, 5, 36, and 46, Shorin discloses adding rheological fillers such as clay (col. 11, lines 21-26) and transition metals (col. 12, lines 24-33) and exemplifies a formulation comprising powdered fluorocarbon resin (col. 16, line 55). With respect to claims 6, 37, and 47, Shorin teaches adding hydrocarbon oils such as hydrotreated oils such as âMagiesols,â i.e., mineral oil. The âMQâ resin also reads on solvent that is low molecular weight linear or cyclic silicones. With respect to claims 7, 28, 29, 38-40, 48-50, and 54, these claims which limit the preamble are only intended use. It is the examinerâs position that the preamble does not state any distinct definition of any of the claimed inventionâs limitations and further that the purpose or intended use, i.e. as a conformal coating, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art invention and further that the prior art invention and further that the prior art structure which is a composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use. With respect to claims 8 and 30, Shorinâs hydrophobic and non-conductive composition inherently provides contaminant resistance and electrical insulating properties because such properties are evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). With respect to claims 33, 43, and 53, Shorin exemplifies a composition containing two PDMS polymers and two powdered fluorocarbon resins (col. 19, lines 9-15). With respect to claim 34, this claim which further limits hygroscopic material does not exclude the alternative embodiments of claim 5. Because Shorin discloses adding a rheological modifier, it is proper to reject this claim. With respect to claims 44 and 54, Shorin teaches that an uncured coating composition is applied and subsequently cured (col. 19, lines 43-62). It is the examinerâs position that before curing the uncured coating composition, it is able to redistribute and still has its non-Newtonian properties. 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 âright to excludeâ 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. Claims 1, 2, 4-8, and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, 13, and 14 of U.S. Patent No. 11,603,472. Although the claims at issue are not identical, they are not patentably distinct from each other because US â472 claims a method of coating an assembled printed circuit board with a conformal coating having non-Newtonian, hydrophobic, and electrically insulating properties prepared from a composition comprising a hydrophobic fluid; one or more functionalized polysiloxanes, linear and cyclic silicones, and functionalized or non-functionalized poly oligomeric silsequioxanes; solid fillers; surfactants, dispersants, hygroscopic material, or rheologic modifier; and carrier solvents. While the claims of US â472 are drawn to a method of coating a circuit board, they include the presently claimed composition. Therefore, it would have been obvious to one of ordinary skill in the art to obtain just the coating composition from the claims of US â472. Claims 1, 2, 4-6, 8, and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,603,473. Although the claims at issue are not identical, they are not patentably distinct from each other because US â473 claims an assembled printed circuit comprising a conformal coating having non-Newtonian, hydrophobic, and electrically insulating properties prepared from a composition comprising a hydrophobic fluid; one or more functionalized polysiloxanes, linear and cyclic silicones, and functionalized or non-functionalized poly oligomeric silsequioxanes; solid fillers; surfactants, dispersants, hygroscopic material, or rheologic modifier; and carrier solvents. While the claims of US â473 are drawn to an assembled circuit board, they include the presently claimed composition. Therefore, it would have been obvious to one of ordinary skill in the art to obtain just the coating composition from the claims of US â473. Claims 1, 2, 4-8, and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,149,150. Although the claims at issue are not identical, they are not patentably distinct from each other because US â150 claims a conformal coating on an assembled printed circuit board having non-Newtonian, hydrophobic, and electrically insulating properties made from a composition comprising a hydrophobic fluid; one or more functionalized polysiloxanes, linear and cyclic silicones, and functionalized or non-functionalized poly oligomeric silsequioxanes; solid fillers; surfactants, dispersants, or rheologic modifier; and carrier solvents. While the claims of US â150 are drawn to a coating, they include the presently claimed composition. Therefore, it would have been obvious to one of ordinary skill in the art to obtain just the coating composition from the claims of US â150. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday. 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 examinerâs supervisor, Ling-Siu Choi can be reached on (571)272-1098. 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. /Vickey Nerangis/ Primary Examiner, Art Unit 1763 vn