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 .
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 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.
Claims 1-3, 5-7, 9-12, 15-16, 19-22, 25-36 are pending.
Applicant’s previous election of Group I, claims 1-3, 5-7, 9-12, 15-16, 19-21, 26, 29, 31-36 still applies and claims 22, 25, 27-28, 30 remain withdrawn.
Response to Amendment
Applicant’s amendment of 02/26/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 35 and 36 is/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 pre-AIA the applicant regards as the invention.
Claim 35 recites “liquid solid” which is contradictory and unclear.
Claim 36 recites a viscosity property at normal temperatures and pressure and also at 65-85 Celsius (not normal temperature and contradictory) such that it is unclear how to measure this property. It is also unclear in claim 36 is the “devoid of solvent” limitation is merely for testing the polysiloxane for the property recited in claim 36 or if it also extends to the overall composition being devoid of solvent.
Claim Rejections - 35 USC § 103
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-3, 5-7, 9-12, 15-16, 19-21, 26, 29, 31-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moody (U.S. 4,265,801) in view of Allen (U.S. 4,663,378) in view of Kenichi (JP 2009-144003, see machine translation) in view of Decker et al. (CN 1751106, see machine translation) in view of David (U.S. 2016/011529).
Regarding claims 1-3, 5-7, 9-12, 15-16, 19-21, 26, 29, 31-36, Moody teaches a composition (inherently capable of being using in molding) comprising a thermoplastic resin and a solid (as in claim 35) polysiloxane additive with a number average MW overlapping claim 3, and with hydroxyl groups as in claim 6, and with phenyl or methyl/phenyl organic groups as in claim 5, and also disclosing that the silicone resin provides fire retardant properties such that the amount is also obvious (besides just overlapping ranges) based on the result effective optimization of the amount of siloxane to optimize the art-recognized effect of improving flame retardant properties, as well as aluminum oxide filler (and hydroxides/hydrates thereof and chemically treated versions thereof, i.e., surface treated), as in claim 1, 11, 19, 33, 34, having a size and amount overlapping claim 26, as well as an inherently high thermal conductivity (higher than the thermoplastics suggested in Moody, within the scope of claim 20), as well as titanates, and with the amount of filler and titanates being obvious to adjust as art-recognized result effective variables (to within the ranges of claims 12 and 26) in order to optimize the degree of enhanced fire retardant properties (for the filler) and compatibility of the filler in the overall composition (for the titanates) (col. 2, lines 5-10, col. 4, line 35-col. 6, line 5, col. 7, line 40-col. 8, line 20).
Moody also teaches a co-agent for crosslinking which is considered a type of curing synergist as in claim 32 (col. 8, line 65-col. 9 line 5). Further curing synergists are obvious in view of David below.
Moody does not disclose the Tg of the silicone resin, the thermoplastic resins as claimed, or the properties of claims 1 and 29. However, Allen, Kenichi, and Decker, in combination with Moody, render these aspects obvious.
Allen is also directed to a silicone additive for high temperature properties (heat resistance, like the fire retardant property in Moody) and teaches that such silicone additives may be phenyl functional as in Moody and also teaches that such silicone resins have particularly good effect in polyetherimides (e.g., flow improvement for molding, compatibility and impact strength improvement) and also suggests amounts overlapping the claimed ranges (of claims 1, 7, and 31, taking into account the other ingredients disclose in Moody to arrive at the amount of thermoplastic in claim 7) (see abstract col. 5, lines 10-col. 6, lines 40). Thus, it would have been obvious to have used polyetherimide as the thermoplastic in Moody because Allen teaches that such plastics have superior physical and chemical properties (col. 1, lines 10-30) (as in claims 10 and inherently a Tg within claim 9) and especially because the type of phenyl silicone resins in Moody are disclosed in Allen as providing improvement for flow during molding, compatibility, and impact strength for polyetherimide at amounts overlapping the claimed range (such that the amounts from Allen are obvious to use for the silicone in Moody).
Kenichi is also directed to silicone additives for high temperature (e.g., flame retardant) applications and teaches that such silicone resins should be phenyl functional (as in Allen and Moody), be used in an amount overlapping the claimed range, have hydroxyl functionality (as already taught by Moody), have a MW overlapping the claimed range, and a Tg within the range of claim 2 ([0019]-[0021], [0025], [0035], [0059], [0077], [0088], [0092], the Tg used in the examples would be obvious to apply to the general silicone resin in Kenichi, not just the particular ones in the examples, because the examples show it is a suitable Tg for the silicone resin in Kenichi). Thus, Kenichi renders further obvious the phenyl functionality, amount, hydroxyl functionality, and MW already taught by Moody and also makes it obvious to use the claimed Tg for the silicone resins in Moody (Moody does not disclose any Tg values) because Kenichi teaches that such Tg is suitable for a silicone resin that provide flame retardant properties (as sought by Moody).
Decker is also directed to silicone resins with high heat resistance that may be used with thermoplastic (e.g., polyester) resins, and suggests that such heat resistant silicone resin should have a Tg above 45C, phenyl functionality, and hydroxyl functionality (as already suggested by the references cited above) and specifically suggests the Silres series of additives (including 603 and 604) as a known commercially available type of silicone resin that provides such heat resistant properties ([0024]-[0027]). Thus, it would have been obvious to have used the Silres products from Decker for the heat resistant silicone resin called for in modified Moody (i.e., based on the teachings of Moody, Allen, and Kenichi) because the product is disclosed as providing the desired properties (heat resistance) and is commercially available (i.e., does not need to be synthesized). Based on the present disclosure, Silres 603 and/or 604 have all the claimed Tg, MW, and phenyl/hydroxyl functionalities as claimed.
In addition to the claimed amount of polysiloxane being overlapped based on Allen above, this amount is also obvious to adjust (including to values within the claimed ranges) as an art recognized result effective variable based on Allen (for flow improvement for molding, compatibility and impact strength improvement) and/or Kenichi (as a flame retardant) and/or Decker (for heat resistance).
Regarding claims 15-16 and 21 and the polyhedral oligomeric silsesquioxane of claim 1, modified Moody teachers all the above subject matter but does not disclose these limitations of claims 15-16 and 21. However, David is also directed to high temperature (flame retardant) compositions and teaches that the same type of silsesquioxanes as in claims 1, 15 and 21 may be included as internal lubricant, process aid, mold release agent, and/or dispersant for the inorganic particles already taught by Moody (such that the amount of such ingredients is obvious to adjust to within the range of claim 15 as an art recognized result effective variable in order to optimize lubricant, process aid, mold release agent, and/or dispersant properties), and also teaches that biphenol may be included to increase Tg, and improve UV and light resistance (such that the amount of such ingredients is obvious to adjust to within the range of claim 16 as an art recognized result effective variable in order to optimize Tg, and UV/light resistance properties).
Thus, it would have been obvious to have included silsesquioxane as taught by David in the amount rendered obvious by David in the composition of modified Moody in order to improve lubricant, process aid, mold release agent, and/or dispersant properties and it would have been obvious to have included biphenol as taught by David in the amount rendered obvious by David in the composition of modified Moody in order to improve Tg, and UV/light resistance properties.
David also teaches various additives that would crosslink with the hydroxyl groups of the siloxane polymer discussed above and therefore are curing synergists as in claim 32 (e.g., coupling agents, page 12, which are obvious to use in modified Moody to promoter mechanical strength as taught by David).
Based on the above teachings from the combined references, the properties of claims 1 and 29 and 36 are inherently present in the silicone resins that have overlapping Tg, MW, and phenyl/hydroxyl functionalities compared to the overlapped teachings of the present applications (i.e., the silicone resins as taught by Moody in view of Allen and Kenichi) and also are inherently present in the more specific Silres resins (obvious to use in view of Moody, Allen, Kenichi, and Decker) because these are the same silicone resins used with the same type of thermoplastics as compared to the present application. The polysiloxanes taught by of Moody, Allen, Kenichi, and Decker also do not include solvent.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the amount of polysiloxane is a patentable distinction over the cited references. This is not persuasive. Moody does not require the amount cited by Applicant (it is merely preferred) and the other references cited above teach overlapping amounts and also teach motivations to adjust the amount of the polysiloxane. Applicant also appears to argue unexpected results but it is unclear what specific data (which inventive and comparative examples) is being relied upon and what aspect of the invention is considered critical in achieving the unexpected results. In any case, the claims do not appear to be commensurate with the present examples in terms of the type and amount of ingredients being far broader in the claims than in the examples.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787