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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 5/27/2026, with respect to the rejection of claim 9 under 35 U.S.C. 112(d) as set forth in paragraph 6 of the action mailed 3/2/2026, have been fully considered and are persuasive. The rejection of claim 9 has been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 16, the current claim recites that component (ii) is a straight organic polysiloxane, which does not further limit the linear organic polysiloxane of current claim 1.
Allowable Subject Matter
Claims 1-6, 9-12 and 14 and claims 7-8 and claim 13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art reference is:
The Examiner notes that a reasonable interpretation of presently recited Formula 2 of component (ii) demonstrates the following requirements:
only the (R1R2SiO2/2)x moiety is required of the claimed invention give that x = 1, y = 0,
z = 0, and thus x + 0 + 0 = 1;
R3, R4, R5, and R6 are not required;
only one of R1 and R2 needs to be a vinyl group;
SiO4/2 moieties are excluded from Formula 2.
US 2017/0029571 A1 to Kusunoki et al. teaches an addition curable silicone composition (organic polysiloxane composition) to form a film (para 0132) comprising an adhesive aid (silicone-based adhesive protective film) (para 0134), and comprising:
(A) a linear organopolysiloxane having at least two alkenyl groups per molecule;
(B) an organopolysiloxane having at least 4 terminal hydrosilyl groups per molecule (crosslinking agent);
and (C) a hydrosilylation catalyst (abstract).
General formula (1) (para 0046) teaches the structure of component (B), with an exemplary structure given in paragraph 0054 of the reference, wherein it is noted that the -SiH structure is provided at various pendant placements, including at two of the ends (i.e., at Si-H group at both ends). Kusunoki also teaches that component (A) has the structure given by formula (11) with at least two of R11 being an hexenyl group (component (i), organic polysiloxane having at least one silicon-bonded C3 to C10 alkenyl group per molecule) (para 0088-0089).
Kusunoki further teaches that silicone composition comprises (D) an organopolysiloxane having at least two alkenyl groups per molecule, such as two vinyl groups, and given by formula (12) (para 0102-0104). The Examiner notes that formula (12) is given by
(R113SiO1/2)o (R112SiO2/2)p (R11SiO3/2)q (SiO4/2)r
with r = 0 (free from SiO4/2 unit), and, for example, o = 1, p = 1 and q = 1, and thus formula (12) is given by,
(R113SiO1/2)o (R112SiO2/2)p (R11SiO3/2)q
Moreover, the inventive examples of Kusunoki demonstrate that the disclosed invention was intended to demonstrate an elongation of 80 to 180% and a tensile strength of less than 5 MPa (Table 2, para 0208).
While Formula (12) teaches the structure given by,
(R113SiO1/2)o (R112SiO2/2)p (R11SiO3/2)q,
and while Formula 2 presently claimed does not specifically include the (R113SiO1/2)o and (R11SiO3/2)q units of Kusunoki, it does not specifically exclude them; and wherein the (R112SiO2/2)p moiety of said formula (12) teaching the presently claimed,
(R1R2SiO2/2)x, x + y + z = 1, y and z = 0, R1 and/or R2 a vinyl group
However, Formula (12) of the cited prior art does require the (R11SiO3/2)q unit (i.e., q = 1), and thus Formula (12) cannot have a linear structure as required by at least current claim 1 and current claim 7.
Current claim 13 does not require that component (ii) comprises a linear organic polysiloxane as in current claim 1, but Kusunoki is silent to the curable silicone composition further comprising at least one of components (iii) and/or (iv)
Claim 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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, Alicia A Chevalier can be reached at 571-272-1490. 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.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 7/14/2026
Prosecution Insights