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, 2, 4, 6-22 are pending. Applicant’s previous election of Group I, claims 1, 2, 4, 6-7, 21 still applies and claims 8-20 remain withdrawn. New claim 22 is also withdrawn because it is directed to non-elected invention II (i.e., curable composition, see restriction of 10/12/23).
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/20/26 has been entered.
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
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:
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.
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, 2, 4, 6-7 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koellnberger (U.S. 2016/0319079).
Regarding claims 1-2, 4, 6-7, and 21, Koellnberger discloses a linear, Si-H bearing polydimethylsiloxane polymer with a chain length overlapping the claimed formula that is hydrosilation reacted with an unsaturated anhydride group (allylsuccinic anhydride), and with the anhydride group being bound to a terminal silicon atom (as in M*) and with the non-terminal silicon atoms independently bearing two non-anhydride organic groups (as in the claimed D unit) and bearing a hydrogen atom and a non-anhydride organic group (as in the claimed DH unit), yielding a linear PDMS polymer with at least one Si-H group and at least one succinic anhydride terminal group, as in claims 1, 2, 4, 6-7 and 21 (see abstract, [0012]-[0021], [0028] explaining that the monovalent carboxylate group depicted in Formula I bearing the R1 group may instead form an anhydride ring, [0035], [0121], exemplifying the reaction of allyl succinic anhydride with a hydrogen functional polydimethylsiloxane, and while the example has only terminal hydrogen atoms, Formula 1 shows that hydrogen atoms also may be included in non-terminal positions, also note that [0121] indicates there may be an excess of Si-H groups to allyl groups, resulting in unreacted hydrogen atoms as claimed). Although this is an intermediate product in Koellnberger, it is still sufficient to render obvious the claimed compound.
In light of the overlap between the claimed compound and that disclosed by Koellnberger, it would have been obvious to one of ordinary skill in the art to use a compound that is both disclosed by Koellnberger and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Although the reaction of claim 6 is taught by Koellnberger, this is an immaterial product by process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Response to Arguments
Applicant’s remarks are not persuasive.
This action is final because the same rejection is presented above as in the previous office action.
At the bottom of page 10, Applicant argues that the rejection states “it would have been obvious to one of ordinary skill in the art to modify a compound that is both disclosed by…” which is not correct. The statement to which Applicant is referring states that “it would have been obvious to one of ordinary skill in the art to use a compound that is both disclosed by Koellnberger and is encompassed within the scope of the present claims.” The word “modify” is not used because the statement is indicating that Koellnberger renders obvious compounds that overlap the claimed scope (there is no “modification” necessary since the teachings of Koellnberger alone are sufficient to render the claims obvious).
Applicant then argues that the prior art fails to teach the claimed DH units based on the examples. However, the reference is not limited to the examples and clearly teaches that DH groups may be present (see explanation in the rejection above).
Applicant argues that the prior art teaches away from the claimed compound because the second (equilibrium) step causes the intermediate compound to no longer fall within the claimed scope. This is an incorrect application of “teaching away.” The existence of the intermediate compound within the claimed scope in the prior art is sufficient to render obvious the claims. It does not matter what happens after that compound exists. The present claims read on that intermediate compound and if Applicant was awarded a patent on the present claims, such an intermediate compound would infringe on Applicant’s hypothetical patent even if it was subsequently converted to a non-claimed compound. There is nothing in the prior art to teach away from the creation of such an intermediate compound. As explained in the previous office action, the arguments presented related to the equilibrium step (currently re-submitted as a declaration) are not persuasive because they do not change the fact that the intermediate product renders obvious the claims.
Applicant then states that the intermediate compound in the prior art is “theoretical.” There is no evidence to support this and the prior art clearly teaches that the intermediate compound exists.
Applicant then argues that Kollenberger is non-analogous art. There does not appear to be any explanation for this argument and instead Applicant argues that overlapping subject matter is insufficient for prima facie obvious (which is incorrect), that “all compounds contain carbon, oxygen, etc. and overlap with other compounds” (incorrect, not all compounds contain carbon or oxygen, and not all carbon/oxygen containing compounds overlap other carbon/oxygen containing compound). Even so, arguments against Applicant’s non-analogous art remarks were presented in the previous office action (bottom of page 4) and are maintained.
Applicant also argues that the prior art’s intermediate compound does not overlap the claimed compound. Again, Applicant is referring only to the examples, without accounting for the multiple instances in Kollenberger where it is shown that an additional pendant hydrogen group may be present (which is the only difference between the example intermediate compound of Kollenberger and the claimed compound). This is not a “modification” of the teachings of Kollenberger but rather simply a consideration of the references a whole (not just the specific examples). Applicant cites [0021] of Kollenberger as having a proviso that supposedly precludes the claimed compound but this is not true (the proviso would be satisfied by the pendent Si-H group discussed above, corresponding to the claimed DH unit).
Applicant argues that the Examiner must state what specific intermediate product would read on the claimed subject matter. This was already indicated in the rejection (“exemplifying the reaction of allyl succinic anhydride with a hydrogen functional polydimethylsiloxane, and while the example has only terminal hydrogen atoms, Formula 1 shows that hydrogen atoms also may be included in non-terminal positions, also note that [0121] indicates there may be an excess of Si-H groups to allyl groups, resulting in unreacted hydrogen atoms as claimed”)
Applicant then provides citations from [0034]-[0035] of Kollenberger as supposedly not disclosing a method of forming an intermediate compound that reads on the present compound. However, Applicant appears to be overlooking where Kollenberger discloses allyl succinic acid (disclosed without a space between allyl and succinic, i.e., “allylsuccinic acid”), which when reacted with the “Si-H containing cyclo-, oligo-, or polysiloxane” (as cited by Applicant) produces the claimed compound (provided the “Si-H containing cyclo-, oligo-, or polysiloxane” has terminal and pendant Si-H groups, which is obvious as explained above, and provided some of such groups remain unreacted, which is also obvious as explained in the rejection above based on the “excess” language in [0121], and especially because the Formula I in Kollenberger explicitly may include such terminal and pendant Si-H groups in the final compound, such that they must be present in the intermediate compound in order to be present in the final compound).
Applicant then discusses “reverse engineering.” This appears to refer to improper hindsight which is not applicable. The rejection is based on the explicit teachings of Kollenberger. Kollenberger teaches reaction of allyl succinic acid with a linear Si-H bearing polysiloxane that may have Si-H groups in terminal and/or pendant positions, and may have such Si-H groups remain unreacted (e.g., via having a stoichiometric excess of Si-H groups relative to the allyl succinic acid) so they are present in the final product. This is explicitly taught in the reference. The intermediate product in [0121] makes such a teaching even clearer because it explicitly teaches this reaction, and only deviates from the claimed compound in that there are no disclosed pendant Si-H groups in that example (which are clearly an obvious embodiment in Kollenberger as explained above) and the examples does not explicitly state that some of the Si-H groups remain unreacted (which is obvious in view of the “excess” language in [0121] and even more clearly obvious in view of such Si-H groups remaining unreacted not only in the intermediate product but also in the final product of Formula I).
Applicant then cites formula from Kollenberger to show the supposedly unreasonable “modifications” needed by the Examiner to arrive at the claimed compound. First, Applicant does not seem to appreciate that formula I of Kollenberger already encompasses the claimed DH group (formula I is a final product but is still relevant as a constraint on the intermediate product, i.e., if a DH group is present in the final compound of Kollenberger it must be present in the intermediate product as well). Applicant argues there is no indication that different R3 groups may be used in the formula, but is simply ignoring where Kollenberger states that R3 may be “identical or different”. Thus, in each of the “n” repeating units in the formula of Kollenberger, each R3 may be different, e.g., methyl or H, resulting in a mix of D and DH units as claimed.
Applicant then makes additional reference to the equilibrium reaction, which is not persuasive as explained above.
Applicant also asserts various “selections” required by the Examiner. The “selection” of a combination of D and DH units is indeed part of the rejection (and obvious as explained above). Applicant also indicates another “selection” based on the circled end groups and “monovalent radical optionally containing heteroatoms.” This selection is unclear, but does not appear to be part of the rejection and appears to be based on Applicant’s interpretation that only the final product in Kollenberger can read on the claimed compound (which is incorrect).
Applicant then argues there is no indication that Si-H groups may remain unreacted. This is not true as explained above. Applicant more specifically argues that such Si-H are not suggested in the final product, which is explicitly contradicted by [0021].
Applicant then argues Kollenberger does not “use” the intermediate compounds. However, “use” is not required as long as such compounds exist, and they are actually “used” to create the final product.
Applicant then makes counter arguments based on the equilibrium reaction destroying the anhydride groups to produce the final product. This is irrelevant as explained above because the intermediate compound is what renders obvious the claims.
Applicant then argues that the “excess” in [0121] could only be an excess of allyl succinic compounds since that example produces terminal succinic groups on the polydimethylsiloxane. However, the sentence indicates that an “excess” of “individual reactants” may “likewise” be used. Thus, the sentence is indicating that while the example produces terminal succinic groups on the polydimethylsiloxane, other embodiments/examples may be created with an excess of certain reactants. That is, the sentence is suggesting that Kollenberger is not limited to terminal succinic groups on the polydimethylsiloxane. This is confirmed by such Si-H groups being explicitly suggested for the final compound ([0021]). Since there is no mechanism suggested to create Si-H groups in the reaction that produces the intermediate compound or the final compound, such Si-H groups must remain unreacted throughout both reactions (via an excess of Si-H groups relative to the allyl/vinyl functional groups that would destroy the Si-H groups).
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
Prosecution Insights