DETAILED ACTION
Claims 1 and 3-13 are pending. Claims 1, 3, and 4 have been amended and claims 2 and 14-20 were previously canceled.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 3-5, and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kazumasa et al. (WO2009054508). Translation provided.
Kazumasa et al. teaches a condensate (A) of alkoxysilane represented by the following general formula (1):
PNG
media_image1.png
31
632
media_image1.png
Greyscale
[0014] (claim 13) where P is represented by the following general formula (2), Q represents an alkyl group, an aryl group, an aralkyl group, an alkenyl group, or hydrogen, R3 represents hydrogen or a monovalent organic group, R0 represents an alkyl group having 1 to 6 carbon atoms, x represents a positive number, y, z, and a represent 0 or a positive number and satisfy the conditions of x + y = 1, 0.3 ≦ x ≦ 1, 0 ≦ y ≦ 0.7, 0 ≦ z ≦ 2, and 0 ≦ a ≦ 1, P, Q, R0, and R3 in one molecular may each contain two or more different groups, and Q and R0, Q and R3, or and in one molecular may each be identical groups or different groups [0015]:
PNG
media_image2.png
160
365
media_image2.png
Greyscale
[0016] where R1 and R2 each independently represent hydrogen, a halogen atom, an alkyl group, an alkenyl group, or an aryl group, or R1 and R2 together form a 5- or 6-membered ring, and R represents a divalent group [0017] preferred examples of the maleimide group are formulae (5) to (10) [0020] where formula (7) is the following:
PNG
media_image3.png
160
270
media_image3.png
Greyscale
[0022]. Kazumasa et al. also teaches a method for producing condensate (A) includes Production Method 1: the compound (p) is hydrolyzed and condensed, or the compound (p) and the compound (q) are hydrolyzed and condensed. Hereinafter, the compound (p-1), the compound (p-2), and the compound (q), which are raw material compounds, will be described. The compound (p-1) may be any compound as long as it satisfies P-Si (OR3) 3, and specific preferred examples thereof include compounds obtained by the production methods [1] to [4] [0038-0039] in which [1] includes: [1] An addition reaction product of a compound having a maleimide group and an ethylenically unsaturated group other than the maleimide group, and trialkoxysilane [0040] in which preferred examples of a compound having a maleimide group and an ethylenically unsaturated group includes the following formula (11):
PNG
media_image4.png
139
380
media_image4.png
Greyscale
[0046] where R1 and R2 are as defined above. R7 means a group containing an ethylenically unsaturated group at the terminal. Preferred examples of R7 in the starting material production method [1] include an allyl group. The addition reaction product of the compound represented by the formula (11) and trialkoxysilane can be produced by a method such as a hydrosilylation reaction in the presence of a platinum-based catalyst [0047]; Compound (p-2) is a compound represented by P-Si (R0) (OR3) 2. The compound (p-2) may be produced by replacing trialkoxysilane with alkyldialkoxysilane in [1] in the raw material production method; and the compound (q) is a compound represented by the general formula Q-Si (OR3) 3. Specific examples of the compound (q) include the following examples. When Q is an alkyl group, specific examples thereof include methyltrimethoxysilane, methyltriethoxysilane, methyltripropoxysilane, ethyltrimethoxysilane, ethyltriethoxysilane, and ethyltripropoxysilane. When Q is an aryl group, specific examples thereof include phenyltrimethoxysilane, phenyltriethoxysilane, and phenyltripropoxysilane. When Q is an aralkyl group, specific examples thereof include benzyltrimethoxysilane, benzyltriethoxysilane, and benzyltripropoxysilane. When Q is a (meth) acryloyloxyalkyl group, specific examples thereof include
γ-(metha)acryloyloxypropyl trimethoxysilane , γ-(metha)acryloyloxypropyl
triethoxysilane , and γ-(metha)acryloyloxypropyl tripropoxysilane. When Q is an
aminoalkyl group, specific examples thereof include compounds in which the (meth)
acryloyloxy group in the above is replaced by an amino group. When Q is an alkenyl group, specific examples thereof include vinyltrimethoxysilane, vinyltriethoxysilane, and vinyltripropoxysilane. When Q is a hydrogen atom, specific examples thereof include trimethoxysilane, triethoxysilane, and tripropoxysilane [0061-0067] and methyltrimethoxysilane, methyltriethoxysilane, phenyltrimethoxysilane, and phenyltriethoxysilane are preferable [0068] (claim 12) such that when compound (p-1) is the reaction product of formula (11) when R1 and R2 are CH3 and R7 is an allyl group and trialkoxysilane it is equivalent to a first siloxane monomer represented by Formula (1) of instant claims 1, 3, and 4 when R1 and R2 are alkyl having 1 carbon atom and L1=L2=L3=OR where R is straight-chain alkyl having 1 to 30 carbon atoms; and when compound (q) is methyltrimethoxysilane, methyltriethoxysilane, phenyltrimethoxysilane, and phenyltriethoxysilane, they are equivalent to a second, third, fourth (and fifth) siloxane monomer of instant claims 1, 5, and 7-10 represented by Formulae S2, T2, and F2 respectively when L11-L13, L21-L23, and L31-L33 are OR’, OR”, and OR’’’ respectively where R’, R”, and R’’’ are straight-chain alkyl having 1 carbon atom, R11 is a straight-chain alkyl having 1 carbon atom, R21 is an alkyl having 2 carbon atoms, and R31 is an aryl having 6 carbon atoms. Kazumasa et al. further teaches x, y, and z mean the mean values of the [(P - SiO3/2) 1-a (P-Si(R0) O2/2) a] unit, the (Q - SiO3/2) unit, and the (O1/2R3) unit in the entire condensation product (A), respectively, and a means the mean ratio of the (P-Si () /2) unit in the [(P - / 2) 1-a (P-Si () / 2) a] unit. O2 R0 O2 SiO3 R0 The range of x is 0.3 ≦ x ≦ 1, preferably 0.5 ≦ x ≦ 1. When x is 0.3 or more, the curability of the composition is excellent, which is preferable. The range of y is 0 ≦ y ≦ 0.7, preferably 0 ≦ y ≦ 0.5. When y is at most 0.7, the curability of the composition will be excellent, such being preferred. The range of z is 0 ≦ z ≦ 2, preferably 0 ≦ z ≦ 1.5, and more preferably 0 ≦ z ≦ 1. When z is 2 or less, the condensate (A) can have a high molecular weight, and the cured product of the composition is excellent in scratch resistance, which is preferable. The range of a is 0 ≦ a ≦ 1, and preferably 0 ≦ a ≦ 0.5. When a is 0.5 or less, the cured product of the
composition has excellent scratch resistance, which is preferable [0030] (claim 11). Although Kazumasa et al. does not teach a specific example of a condensate (A) produced by method 1 as defined above, it would have been obvious to one of ordinary skill in the art to perform such a method using the above compounds through routine experimentation of substituting known methods as well as substituting known maleimides and arrive at the instant claims with a reasonable expectation of success.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kazumasa et al. (WO2009054508) as applied to claims 1 and 5 above, and further in view of Ryang (U.S. 7,645,436).
With regard to claim 6, Kazumasa et al. teaches the above formula (2) but does not teach when the second siloxane monomer is represented by Structure S5 where W1 is represented by any one of Structures W1 to W4.
However, Ryang teaches known organofunctional silanes includes tris(3-methoxysilylpropyl)isocyanurate, and phenyltriethoxysilane (Kazumasa’s fifth monomer) among others [col 5 lines 8-54] in which tris(3-methoxysilylpropyl)isocyanurate is equivalent to a second siloxane monomer represented by Structure S5 of instant claim 5 when n is 3, Z1 is a straight-chain alkylene having 3 carbon atoms, L11-L13 are -OR’ when R’ is a straight-chain alkyl having 1 carbon atom, and W1 is represented by Structure W3 of instant claim 6. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, Kazumasa and Ryang teach known polymers in which the selection of known silanes considered equally suitable for the preparation of said polymers is well known in the art. Furthermore, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 205 USPQ 1069 1072. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kazumasa et al. to include other known silane monomers such as those taught by Ryang and arrive at the instant claims through routine experimentation of combining and/or substituting equally suitable silanes.
Response to Arguments
Due to the amendment filed June 5, 2025 of instant claim 1, the 103 rejections over Kimura and Kimura further in view of Ryang have been withdrawn. Applicant’s arguments with regard to these rejections have been considered but are moot due to the amendment of instant claim 1. However, Ryang is still being used as prior art because it continues to teach claim 6.
Due to the amendment of the abstract, the objection has been 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 ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 8:00-4:30 EST M-F.
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, Mark Huff can be reached at 571-272-1385. 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.
/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737