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/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Claims 20-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected inventions, there being no allowable generic or linking claim.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 1-19 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 away “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”. Applicant has also not stated where support lies in the as-filed specification for this broadening of the claim language. The as-filed specification has K frame in the above limitation throughout the specification and there is no indication the examples for a basis to argue the K is not somehow framed by the above limitation. 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 being oxygen or (CH)2 group in any potential combination as currently recited.
Claims 2-19 are rejected based on their dependency to Claim 1.
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 1 and 4-19 are rejected under 35 U.S.C. 103 as being unpatentable over Chowdhury (U.S. 20150014577) in view of Kumar (U.S. 20160280918).
Chowdhury teaches thermally conductive silicone composites comprising silicone polymers one of which has graphene grafted to it. See Figure 1. The exemplified vinyl terminated silicones meet Formula 1d of Polymer 1 but do not appear to meet Formula 2 of Polymer B.
Kumar, working in the field of addition curable siloxanes similar to Applicant and Chowdury, teaches a formula D11-5 that is W’ (cyclic version) of Formula 2 and D11-5 has an (CH2)1/2 group (R’ = (CH3)(OCH2)Si(CH2)1/2 (K’= CH2)) as an adhesive promoting component (D1 ¶[0084-0096]). This is a silyl hydride of triazine.
It would have been obvious to a person having ordinary skill in the art at the invention was filed to practice the invention of Chowdury by adding the adhesion imparting component D11-5 of Kumar to improve the adhesion of the compounds of Chowdury as suggested by Kumar and as this D11-5 silyl hydride of triazine is exemplified by Kumar and has Si-H functionality to participate in the curing reaction of Chowdury.
Platinum catalysts are taught by Chowdury in ¶[0037].
Curing inhibitors are taught in ¶[0145] of Kumar along with liquid hydrocarbons, and ketones ¶[0149-0153] and epoxy silanes (D2 of Kumar¶[0104] - ¶[0113])
Response to Arguments
Applicant’s claim amendments and remarks filed November 3, 2025 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 which significantly broadens the scope of K. This has necessitated the new matter rejection against the claims and necessitated the withdrawal of previously indicated allowable subject matter and a new ground of prior art rejection.
Applicant submits no remarks with respect to their support of the newly presented K limitation. Therefore, new grounds of rejection are made and previously indicated allowable subject matter is withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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).
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 examiner’s supervisor, Randy Gulakowski can be reached on (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766