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 .
This action is responsive to Applicant's amendments/remarks filed 09/12/2025.
Claims 1-5 and 8-21 are currently pending and under examination.
The rejection of claim 22 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is withdrawn in view of the above amendments.
The rejection of claim 11 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, is withdrawn in view of the above amendments.
The rejection of claims 1, 2, 4, 5, 8-13, and 15-19 under 35 U.S.C. 103 as being unpatentable over Nijukken (JP 2002146155 A, hereinafter Nijukken) as evidenced by “Silaplane FM-0711” (“Silaplane® FM-0711 information”, 2025, hereinafter “Silaplane FM-0711”) is withdrawn in view of the above amendments.
The rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over Nijukken (JP 2002146155 A, hereinafter Nijukken) as evidenced by “Silaplane FM-0711” (“Silaplane® FM-0711 information”, 2025, hereinafter “Silaplane FM-0711”), and further in view of DeRuiter (“Carboxylic Acid Structure and Chemistry: Part 1”, Principles of Drug Action 1, 2005, hereinafter DeRuiter) is withdrawn in view of the above amendments.
The rejection of claims 1, 2, 4, 5, and 8-22 under 35 U.S.C. 103 as being unpatentable over Song (US 2014/0248504 A1, hereinafter Song) in view of Minorikawa (US 2018/0179383 A1, hereinafter Minorikawa) is withdrawn in view of the above amendments.
The rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over Song (US 2014/0248504 A1, hereinafter Song) in view of Minorikawa (US 2018/0179383 A1, hereinafter Minorikawa), and further in view of DeRuiter (“Carboxylic Acid Structure and Chemistry: Part 1”, Principles of Drug Action 1, 2005, hereinafter DeRuiter) is withdrawn in view of the above amendments.
The rejection of claims 1, 2, 4, 8-11, and 13-20 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/710,228 is withdrawn in view of the above amendments.
The rejection of claims 1-5 and 8-21 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 17, and 18 of copending Application No. 18/030,210 is maintained in view of the above amendments.
The rejection of claims 1-5 and 8-21 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-15, 17, and 18 of copending Application No. 18/030,253 is maintained in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 19 is objected to because of the following informalities:
Claim 19 fails to end with a period and is therefore not in proper form. Applicant is required to amend the claim such that it properly ends with a period. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See also MPEP 608.01(m).
Appropriate correction is required.
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 1-5 and 8-21 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.
Claim 1 recites “a content of the (meth)acrylic monomer unit A is from 0.05 to 90 mol% based on a total of 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the (meth)acrylic monomer unit C”.
However, the instant invention discloses “The content of the unit A is, based on the total 100 mol % of the unit A, the unit B, and the unit C, preferably 0.03 to 70 mol%” (instant [0030]). Tables 1-4 (Examples 1-20) of the instant invention also discloses that the content of the unit A is from 0.1 to 68 mol % based on the total 100 mol% of the unit A, the unit B, and the unit C. Therefore, there is no support in the specification that a content of the (meth)acrylic monomer unit A is from 0.05 to 90 mol% based on a total of 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the (meth)acrylic monomer unit C.
Claims 2-5 and 8-21 depend from claim 1. Therefore, claims 2-5 and 8-21 are also 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.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 8-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 17, and 18 of copending Application No. 18/030,210 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other, because both sets of claims recite a copolymer having a (meth)acrylic monomer unit A having an anionic group, a (meth)acrylic monomer unit B having a cationic group, and a silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that the anionic group comprises one or more selected from the group consisting of carboxy groups, phosphate groups, and phenolic hydroxy groups.
The pending claims of the reference application recite that the (meth)acrylic monomer unit A further has an electron-withdrawing group bound to the anionic group.
The pending claims of the reference application recite that the cationic group comprises one or more selected from the group consisting of primary amino groups, secondary amino groups, tertiary amino groups, and quaternary ammonium salts.
The pending claims of the reference application recite that the (meth)acrylic monomer unit B further has an electron-donating group bound to the cationic group.
The pending claims of the reference application recite that a weight average molecular weight of the copolymer (a) is 5,000 to 500,000.
The pending claims of the reference application recite that a total content of the (meth)acrylic monomer unit A and the (meth)acrylic monomer unit B is 0.05 to 90 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a content of the (meth)acrylic monomer unit A is 0.03 to 85 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a content of the (meth)acrylic monomer unit B is 0.1 to 10 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a content of the silicone (meth)acrylic monomer unit C is 10 to 99.5 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a molar ratio of the (meth)acrylic monomer unit A to the (meth)acrylic monomer unit B is 0.01 to 50.
The pending claims of the reference application recite that a resin composition comprising a copolymer, a silicone resin, and a filler; and the filler is one or more selected from the group consisting of aluminum, aluminum hydroxide, aluminum oxide, aluminum nitride, boron nitride, zinc oxide, magnesium oxide, and diamond.
The pending claims of the reference application recite that an electronic device comprising a heat generator, a heat sink, and the thermally conductive resin composition, wherein the thermally conductive resin composition is disposed between the heat generator and the heat sink.
Claims 1-5 and 8-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-15, 17, and 18 of copending Application No. 18/030,253 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other, because both sets of claims recite a copolymer having a (meth)acrylic monomer unit A having an anionic group, a (meth)acrylic monomer unit B having a cationic group, and a silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that the anionic group comprises one or more selected from the group consisting of carboxy groups, phosphate groups, and phenolic hydroxy groups.
The pending claims of the reference application recite that the (meth)acrylic monomer unit A further has an electron-withdrawing group bound to the anionic group.
The pending claims of the reference application recite that the cationic group comprises one or more selected from the group consisting of primary amino groups, secondary amino groups, tertiary amino groups, and quaternary ammonium salts.
The pending claims of the reference application recite that the (meth)acrylic monomer unit B further has an electron-donating group bound to the cationic group.
The pending claims of the reference application recite that a weight average molecular weight of the copolymer is 5,000 to 500,000.
The pending claims of the reference application recite that a total content of the (meth)acrylic monomer unit A and the (meth)acrylic monomer unit B is 0.05 to 90 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a content of the (meth)acrylic monomer unit A is 0.03 to 85 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a content of the (meth)acrylic monomer unit B is 0.1 to 10 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a content of the silicone (meth)acrylic monomer unit C is 10 to 99.5 mol% based on the total 100 mol% of the (meth)acrylic monomer unit A, the (meth)acrylic monomer unit B, and the silicone (meth)acrylic monomer unit C.
The pending claims of the reference application recite that a molar ratio of the (meth)acrylic monomer unit A to the (meth)acrylic monomer unit B is 0.01 to 50.
The pending claims of the reference application recite that a resin composition comprising a copolymer, a silicone resin, and a filler; and the filler is one or more selected from among aluminum, aluminum hydroxide, aluminum oxide, aluminum nitride, boron nitride, zinc oxide, magnesium oxide, and diamond.
The pending claims of the reference application recite that an electronic device comprising a heat generator, a heat sink, and the thermally conductive resin composition, wherein the thermally conductive resin composition is disposed between the heat generator and the heat sink.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
1. Applicant's arguments filed 09/12/2025 with respect to the prior 35 U.S.C. 103 rejections have been considered but are moot, because the rejection of claims 1, 2, 4, 5, 8-13, and 15-19 under 35 U.S.C. 103 as being unpatentable over Nijukken (JP 2002146155 A) as evidenced by “Silaplane FM-0711” (“Silaplane® FM-0711 information”, 2025) is withdrawn in view of the above amendments, and the rejection of claims 1, 2, 4, 5, and 8-22 under 35 U.S.C. 103 as being unpatentable over Song (US 2014/0248504 A1) in view of Minorikawa (US 2018/0179383 A1) is withdrawn in view of the above amendments.
2. Applicant's arguments filed 09/12/2025 with respect to the prior double patenting rejection, have been considered.
The rejection of claims 1, 2, 4, 8-11, and 13-20 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/710,228 is withdrawn in view of the above amendments.
The rejection of claims 1-5 and 8-21 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 17, and 18 of copending Application No. 18/030,210 is maintained in view of the above amendments.
The rejection of claims 1-5 and 8-21 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-15, 17, and 18 of copending Application No. 18/030,253 is maintained in view of the above amendments.
The pending claims of copending Application No. 18/030,210 and copending Application No. 18/030,253 recite a copolymer having a (meth)acrylic monomer unit A having an anionic group, a (meth)acrylic monomer unit B having a cationic group, and a silicone (meth)acrylic monomer unit C.
The transitional phrases “having” can be interpreted in light of the specification to determine that closed claim language is intended. See MPEP 2111.03.IV.
Allowable Subject Matter
Claims 1-5 and 8-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
The closest prior art of record (Song (US 2014/0248504 A1); Nijukken (JP 2002146155 A); Hayakawa (JP2016121350 A)) fail to teach or suggest a copolymer consisting of: a (meth)acrylic monomer unit A having an anionic group; a (meth)acrylic monomer unit B having a cationic group; and a (meth)acrylic monomer unit C other than the (meth)acrylic monomer unit A and the (meth)acrylic monomer unit B, wherein the (meth)acrylic monomer unit C comprises one or more selected from the group consisting of oxyalkylene skeletons, siloxane skeletons, and phosphodiester skeletons.
Song (US 2014/0248504 A1) teaches (para [0085]-[0086]) a copolymer having a structure represented by the following Formula (2):
PNG
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533
880
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Greyscale
,
wherein a, b, c and d at each of the structural units that constitute a polymer indicate the contents (mole %) of the structural units in the total structural units; each of R21 and R22 independently represents an alkyl group; and each of R23 to R26 independently represents a methyl group. Song fails to teach or suggest a copolymer consisting of: a (meth)acrylic monomer unit A having an anionic group; a (meth)acrylic monomer unit B having a cationic group; and a (meth)acrylic monomer unit C other than the (meth)acrylic monomer unit A and the (meth)acrylic monomer unit B, wherein the (meth)acrylic monomer unit C comprises one or more selected from the group consisting of oxyalkylene skeletons, siloxane skeletons, and phosphodiester skeletons.
Nijukken (JP 2002146155 A) teaches ([0001], claim 1) that a resin is obtained by copolymerization of monomers comprising (a) an α,β-ethylenically unsaturated monomer containing an alkoxysilyl group such as γ-methacryloxypropyltrimethoxysilane ([0009]), (b) an α,β-ethylenically unsaturated monomer containing a polyorganosiloxane ([0010]), (c) a radically polymerizable ultraviolet absorber such as 2-hydroxy-4-methacryloxybenzophenone ([0011]), (d) a radically polymerizable light stabilizer such as 1,2,2,6,6-pentamethyl-4-piperidyl methacrylate ([0012]), (e) a carboxyl group-containing α,β-ethylenically unsaturated monomer such as methacrylic acid [0013]), and (f) α,β-ethylenically unsaturated monomer (f) other than (a) to (e) ([0014]), wherein the total amount of the monomers (a) to (f) is 100 weight %. Nijukken fails to teach or suggest a copolymer consisting of: a (meth)acrylic monomer unit A having an anionic group; a (meth)acrylic monomer unit B having a cationic group; and a (meth)acrylic monomer unit C other than the (meth)acrylic monomer unit A and the (meth)acrylic monomer unit B, wherein the (meth)acrylic monomer unit C comprises one or more selected from the group consisting of oxyalkylene skeletons, siloxane skeletons, and phosphodiester skeletons.
Hayakawa (JP2016121350 A) teaches ([0008]-[0010]; claim 1) that dispersant (B) is a reactant of a constituent unit derived from a (meth)acrylate (a) having an epoxy group, a constituent unit derived from a polysiloxane mono (meth) acrylate (b), and a constituent unit derived from a (meth) acrylate (c) having an amino group. Hayakawa fails to teach or suggest a copolymer consisting of: a (meth)acrylic monomer unit A having an anionic group; a (meth)acrylic monomer unit B having a cationic group; and a (meth)acrylic monomer unit C other than the (meth)acrylic monomer unit A and the (meth)acrylic monomer unit B, wherein the (meth)acrylic monomer unit C comprises one or more selected from the group consisting of oxyalkylene skeletons, siloxane skeletons, and phosphodiester skeletons.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761