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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 10, 2026 has been entered.
Election/Restriction
Applicant’s election without traverse of Group I Claim 1-19 in the reply filed on July 21, 2025 is acknowledged.
Claims 20-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 21, 2025.
At the present time, claims 20-24 are in condition for rejoinder if Claim 1 becomes allowable. Claims 25-27 are not in condition for rejoinder because they polymers claimed are not tied to the polymers of Claim 1.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in India on December 16, 2018. It is noted, however, that applicant has not filed a certified copy of the IN201821049325 application as required by 37 CFR 1.55. The Examiner can find no indication a certified copy of the foreign priority document has been filed manually or through PDX exchange or even a failed PDX exchange.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
Claims 1, 4-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In Claim 1, Applicant has amended K to be “K' is oxygen or a (CH2) group subject to the limitation that the molecule contains an even number of O1/2 and even or odd number of (CH2)1/2 and the O1/2 and (CH2)1/2 groups both are all paired in the molecule”. (emphasis added)
Applicant states the Examiner has indicated this is supported by the specification in the Final Action §112(a) rejection of August 8, 2025, however, this is patently false. The limitation from that section of the final action, and the one found throughout the specification is as follows:
“K is oxygen or a (CH2) group subject to the limitation that the molecule contains an even number of O1/2 and even number of (CH2)1/2 and the O1/2 and (CH2)1/2 groups both are all paired in the molecule”
The inclusion of an odd number of (CH2)1/2 is not supported by the specification and also was not stated to be supported by the Examiner.
Applicant has also not stated where support lies in the as-filed specification for this odd number of (CH2)1/2 groups with respect to claim other than to point to the Examiner’s action and statement. The as-filed specification has K in the above limitation without the odd number of (CH2)1/2 rectiation throughout the specification. Every single disclosure of K in the as-filed specification and the originally filed claims has the above K limitation. As such, one of ordinary skill in the art is not reasonably suggested Applicant had in their possession K is oxygen or a (CH2) group subject to the limitation that the molecule contains an even number of O1/2 and even or odd number of (CH2)1/2 and the O1/2 and (CH2)1/2 groups both are all paired in the molecule”. (emphasis added)
Claims 4-19 are rejected based on their dependency to Claim 1.
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.
Claims 1, 4-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For Claim 1, the limitation of W’ “K' is oxygen or a (CH2) group subject to the limitation that the molecule contains an even number of O1/2 and even number of (CH2)1/2 and the O1/2 and (CH2)1/2 groups both are all paired in the molecule” renders the claim indefinite at it is unclear how this condition is evaluated. The as-filed specification is silent on what constitutes paired or unpaired and how to count the number of groups and the as-filed examples do not help one of ordinary skill in the art in evaluating this limitation.
For example, Structure IV of the as filed spec is below:
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The circled portion represents (CH3)SiO1/2 (CH2)1/2 (a M3 unit from the claim) and the boxed portion is (CH3)2HSiO1/2. (another kind of M3 unit). The portion between the two is a (CH3)----2SiO2/2 unit (D7 of the claim). Per arm there are 2 O1/2 and 1 (CH2)1/2 units and, therefore, 6 O1/2 and 3 (CH2)1/2 per molecule. This does not meet the first part of the limitation of the supported K from the as-filed specification but does meet the instantly claimed K (See §112 1st above)
However, an alternative interpretation of the above units leaves the N--CH2CH2CH2-----Si-O-linkage (which would be j’=3 in Formula 2m’ and also M3 unit above) with a (CH2)1/2 unit. In other words, >N--CH2CH2(CH2)1/2[(CH2)1/2-----Si(CH3)2-O1/2-]. This meets the K of the as-filed specification as 2 O1/2 and 2 (CH2)1/2 units and, therefore, 6 O1/2 and 6 (CH2)1/2 per molecule. However, this interpretation does not meet the j’ repeat of Formula 2m’ as CH2CH2(CH2)1/2 is not permitted.
Further, only 3 Si units have O1/2 pairs with (CH2)1/2 if one considers the pairing per repeat unit, however, the limitation is per molecule. The boxed Si unit’s O1/2 does not reasonably seem to be paired with a (CH2)1/2 unless one considers the (CH2)1/2 from the j’ unit, however, that interpretation is not supported by the claims of as-filed specification as the j’ is not recited as a (CH2)1/2 group from above. If pairing is equal number of O1/2 and (CH2)1/2 in the entire molecule then odd numbers of (CH2)1/2 are not possible as this would require odd numbers of O1/2 which is not allowed by the claimed K.
Therefore, it does not appear that Applicant’s Example 4 Polymer B reads on the claimed limitation. Example 5 in the as-filed specification is similar.
Examples 6 and 7 of the as-filed specification appear to have the even O1/2 and (CH2)1/2 units met but suffer from the same pairing indefiniteness as Examples 4 and 5. Based on the above analysis, it is unclear what the scope of pairing is within the claims.
Claims 2-19 are rejected base on their dependency to Claim 1.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closet prior art is Chowdhury (U.S. 20150014577) which teaches thermally conductive silicone composites comprising silicone polymers one of which has graphene grafted to it. See Figure 1. The exemplified vinyl terminated silicones can be meet Formula 1 of Polymer 1 but cannot meet Formula 2 of Polymer B as there is no teaching or suggestion on how to arrive at the claimed W’ along with the O1/2 and (CH2)1/2 limitations of the claim. While Chowdhury is not limited to a specific siloxane formulation for the host matrix other than it being addition cured siloxane, there is not apparent teaching or suggestion the prior art that would motivate one of ordinary skill in the art to choose a host matrix which is the claimed Polymer A and Polymer B including the claimed W’ along with the O1/2 and (CH2)1/2 limitations of the claim.
Kumar (U.S. 20160280918) teaches a formula D11-3 or D11-5 that is related to W’ (cyclic version) of Formula 2m’ but any formula ethoxy silane does not meet R’ as there is an unpaired (CH2)1/2--. For example the ethoxy silane of D11-5 is M3 unit with K’=CH2 and represented by [(CH3)(CH2O)]2CH3Si(CH2)1/2 where R25-R27 are (CH3)(CH2O)- or CH3 as no R25-R43 or any other R44-R48 or similar R groups of Formula 1 can be a single bond in order to meet M, T, D, Q units in the recited formulas and also cannot fit in the limitation non-R’ of R44-R48 (i.e. the monovalent hydrocarbons) There is no direction to arrive at the claimed W’ along with the O1/2 and (CH2)1/2 limitations of the claim without the use of hindsight.
Response to Arguments
Applicant’s claim amendments and remarks filed July 10, 2026 have been fully considered but are not sufficient to move the application to allowance. Applicant has amended Claim 1 to remove the previous K limitation and added a new K limitation they argue is supported by the as-filed specification. This has necessitated the new matter rejection against the claims and further has expanded the §112 2nd rejection of record.
Applicant’s argument filed July 10, 2026 have been fully considered but are not persuasive.
Applicant argues the new K limitation allowing for even and odd (CH2)1/2 is supported because the Examiner has stated it is supported. This is not persuasive. The Examiner has made no such statement and indicating Applicant’s exemplified compounds do not meet the claim limitation is not basis to assert the Examiner states the new language is supported simply because the exemplified compound can be interpreted to encompass said new language (i.e. odd numbers of (CH2)-1/2).
Applicant argues one of ordinary skill in the art would know how to count the pairing to determine which compounds meet the claim and do not. This argument is not persuasive. The arguments do not address any of the analysis of this issue in previous §112 2nd for this issue and also do not address any of the expanded analysis of this issue leading to the conclusion of indefiniteness. Therefore, the remarks are not persuasive at this time and the rejections are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached on 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766
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