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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 11, 2026 has been entered.
Claim Rejections - 35 USC § 112
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.
Claims 1-3, 5, 7, and 9-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the amended claim requires that “2 of a total of 6 of R1 and R2 are an alkenyl group,” while simultaneously requiring that “R1 is independent of each other” and “R2 is also independent of each other.” This renders the claim indefinite because R1 and R2 cannot be selected independently if the selection of a contingent thereof as alkenyl groups dictates that the remainder cannot also be alkenyl groups – doing so would be dependent selection. For the sake of examination, the claim will be interpreted to mean that any of R1 and R2 can be selected as the 2 required alkylene groups.
Regarding claims 2-3, 5, 7, and 9-12, the claims are rendered indefinite because they depend, either directly or indirectly, on claim 1 which is indefinite as described above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 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.
Regarding claim 3, the claim requires that claimed component “(A)” contains a perfluoropolyether structure, however claim 1 as amended already requires a structure having a perfluoropolyether structures (the substructures of claimed “formula (3)” having subscripts “c” and “d” are perfluoropolypropylene oxide groups). Rather than narrow the scope of claim 1, claim 3 broadens the scope of claim 1 to include other perfluoropolyether structures not falling therein.
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.
Claim Rejections - 35 USC § 103
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 1-3, 5, 7, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (JPH08199070 A, hereinafter referring to the attached ESPACENET translation) in view of Koshikawa-778 (JP 2014091778 A, cited in Applicant’s IDS; machine translation referred to herein) and Koike (US Patent No. 8,143,359 B2).
Regarding claims 1 and 3, Sato teaches a curable composition ([0001]), comprising:
100 parts by weight ([0042]) of component (A), which is a fluorine-containing amide compound represented by the following formula ([0006]):
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Formula 1 of Sato (JPH08199070 A)
Wherein Rf is a divalent perfluoroalkylene group or a divalent perfluoropolyether group ([0018]). The structure of Sato meets some of the structural features of the claimed “general formula (3),” including claimed R1-2 (Sato teaches that R1 are monovalent hydrocarbon groups, and the alkylene groups likewise fall within the claimed “R1” and “R2”) and R5 (Sato teaches that R2 may be a phenylene group, which meets the phenylene group attached to nitrogen, and which comprises hydrogen atoms at every “R5” position). Furthermore, Sato meets the claimed limitation requiring “2 of a total of 6 R1 and R2 are alkenyl” because Sato includes the two specifically shown alkenyl groups, and explicitly prefers that substituents R1 exclude aliphatic unsaturated bonds ([0009]); Sato therefore preferably only includes two alkenyl groups therein. However, Sato differs from the claimed structure because it is silent with regard to (i) the claimed perfluoropolyether structure with the claimed number of repeat units, and (ii) with regard to the claimed alkylene chain which links the amide moiety to the silicon end group moiety.
Regarding (i) the perfluoropolyether structure -- in the same field of endeavor, Koshikawa-778 teaches a highly similar component (A), having a perfluoropolyether structure in the main chain, as follows, on page 2:
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Furthermore, the main chain of Sato (i.e., the portion of chemical formula 1 of Sato, shown above, between the two most-distal carbonyl groups) may be comprised of only a polyfluoroalkylene group (c.f. [0020] of Sato which indicates that variable a may be equal to zero, in which case the bracketed portion of chemical formula 1 will be absent). Finally, it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to substitute the main chain portion of Sato with the main chain portion of Koshikawa-778, shown above, as Koshikawa-778 recognizes it as a suitable main chain portion for a linear polyfluoro compound used in curable fluoropolymer products. Koshikawa-778 teaches that, within the aforementioned structure, m and n are each an integer of 1 to 100 (page 3), which overlaps the claimed range of “b is an integer of 4 to 302,” establishing a prima facie case of obviousness.
Regarding (ii) the alkylene chain which links the amide moiety to the silicon end group moiety – Sato teaches that the inventive fluorine-containing amide compound, of Formula 1 above, is formed by reacting an acyl fluoride compound with a primary or secondary amine ([0022]). In the case of the structure in formula 1, above, the amine is one wherein the nitrogen is connected to the silicone end group moiety via a phenylene group.
In the same field of endeavor, Koike teaches an organic silicon compound which has a vinyl group more reactive than those of conventional organic silicon compounds, and which can be bonded with another compound (Abstract), wherein the compound is similar to the above- described amine used to form the compound of formula 1 of Sato, including similar vinyl silicone, nitrogen, and phenyl group (optionally taking the place of R2- in Sato). The primary difference between these two amines, however, is that the amine of Koike is an alkyl group having 1 to 4 carbon atoms, whereas the corresponding group of the amine in Sato comprises a phenylene group. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Koike teaches that the amine is specifically useful for reacting with acyl fluorides (c.f. Koike col. 5, line 15 – col. 6, line 12). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the amine within the synthetic method of Sato as modified by Koshikawa-778 with the secondary amine taught by Koike, as Koike teaches said amine as suitable for the formation of substantially similar perfluoropolyether compounds. Koike additionally contemplates the suitability of products of the inventive amine as useful for adhesives (col. 8, line 36). The number of carbons taught by Koike, 1-4, falls within the claimed range of “1 to 6 carbon atoms,” establishing a prima facie case of obviousness.
The resulting structure of component A of Sato, as modified by Koshikawa-778 and Koike, meets the limitations of claimed “formula (3),” because these aforementioned variables overlap the claimed variables “R1,” through “R5,” and “c, d, and e,” respectively, and because the remaining structure is identical to the claimed structure.
Component (B), a fluorine-containing organohydrogensiloxane ([0035]), which may contain inter alia a monovalent perfluorooxyalkyl group, and which further contains two or more Si-H groups. This component does not require the incorporation of an epoxy group, and thus may be free of an epoxy group. Component (B) therefore reads on the claimed component “(B).”
Component (C), a catalyst for the curing reaction within the composition ([0043]), in amounts ranging from 1 to 1000 ppm (platinum group metal equivalent, [0046]), which falls within the claimed range of “0.1 to 2,000 ppm,” of component “(D),” establishing a prima facie case of obviousness.
Sato differs from claim 1 because, while it teaches a fluorine-containing amide compound as described above, which contains a perfluoropolyether structure, Sato is silent with regard to the particularly claimed linear polyfluoro compound having the specifically claimed structure.
Sato further differs from claim 1 because it is silent regarding a component which reads on the claimed component “(E).” In the same field of endeavor, however, Koshikawa-778 teaches a curable fluoropolymer product (page 1) used as an optical semiconductor (i.e., light emitting diode (LED)) sealing compound (page 2) comprising a linear linear polyfluoro compound (page 2), A fluorine-containing organohydrogensiloxane comprising a silicon atom (page 3), and 0.1 to 500 ppm, in terms of mass of platinum group metal ion, of a platinum group metal catalyst (page 5). Koshikawa-778 further teaches the incorporation of 0.10 to 10.0 parts by mass with respect to 100 parts of (Component A) of an organopolysiloxane (page 6), which reads on the claimed “(E) 0.1 to 20 parts by weight of an organopolysiloxane,” comprising the following structure:
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Wherein
H refers to a hydrogen atom, thereby reading on the claimed “hydrogen atom directly bonded to a silicon atom (SiH group).”
D is a monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed “monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group.”
E is an epoxy group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom (page 6), which reads on the claimed “epoxy group or a trialkyoxysilyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom”
It is prima facie obvious to select a material for its art-recognized suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the cyclic organopolysiloxane of Koshikawa-778 into the formulation of Sato, as Koshikawa-778 teaches it as a suitable component for curable fluorine-containing elastomer compositions.
Sato teaches the incorporation of component (B) such that the amount of hydrosilyl groups (Si-H) range from 0.5-5 per mole of aliphatic unsaturated groups in the composition ([0006]), which encompasses the claimed range of “0.5 to 3,” establishing a prima facie case of obviousness.
Sato as modifed by Koshikawa-778 and Koike further differs from claim 1 because it is silent with regard to the incorporation of 20 to 120 parts by weight of sodium fluoride. Sato does however teach the incorporation of a filler within the composition ([0049]).
In the same field of endeavor, Osawa teaches a curable fluoropolymer resin ([0001])]), comprising reinforcing fillers ([0069]) at concentrations of 5 to 200 parts by mass relative to 100 parts of the fluoropolyether compound ([0071]), which encompasses the claimed “(C) 20 to 120 parts of sodium fluoride,” establishing a prima facie case of obviousness. It is prima facie obvious to select a material for its art-recognized suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the sodium fluoride of Osawa into the formulation of Sato as modified by Koshikawa-778, as Osawa recognizes sodium fluoride as a reinforcing filler suitable for fluororubber compositions.
Sato as modified further differs from claim 1 because it is silent with regard to the total light transmittance of the cured product.
Nevertheless, Sato as modified above results in a curable fluoropolymer resin that is structurally identical to the claimed formulation, with the same chemical components and composition. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed light transmittance will therefore necessarily be present in Sato as applied to claim 1 above.
While Sato does contemplate the incorporation of silica within the formulation as a filler ([0049]), this incorporation of silica is not required; thus, Sato teaches embodiments where silica is not included in the inventive formulation, which reads on the claimed limitation requiring that “the composition does not contain silica as a filler.”
Finally, Sato as modified differs from claim 1 because it is silent with regard to the claimed total light transmittance characteristic. Nevertheless, Sato as modified results in a fluororubber composition which is structurally identical to the claimed composition, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed total light transmittance characteristic will therefore necessarily be present in Sato as modified and as applied above.
Regarding claim 2, Sato exemplifies the inventive component (A) as having vinyl group contents of 0.035 mol/100g ([0054] Example 1), 0.013 mol/100g ([0058], Example 2 and [0067], Example 5), 0.009 mol/100g ([0061], Example 3), and 0.007 mol/100g ([0064], Example 4), all of which fall within the claimed range of “0.005 to 0.3 mol/100 g,” establishing prima facie cases of obviousness.
Regarding claim 5, as stated above, Koshikawa-778 teaches (Component D), an organopolysiloxane (page 6), with the following structure:
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Wherein:
i (which corresponds to the claimed “t”) is an integer of 1 to 6 (page 6), which overlaps the claimed “t is an integer of 1 to 6”
j (which corresponds to the claimed “u”) is an integer of 1 to 4 (page 6), which overlaps the claimed “u is an integer of 1 to 4”
k (which corresponds to the claimed “v”) is an integer of 1 to 4 (page 6), which overlaps the claimed range of “v is an integer of 1 to 4”
i + j + k is an integer of 4 to 10, which overlaps the claimed “t + u + v is an integer of 4 to 10”
R7 (which corresponds to the claimed “R7”) is a substituted or unsubstituted monovalent hydrocarbon group (page 6), which may have 1 to 12 carbon atoms, and which may include alkyl and aryl groups such as methyl, ethyl, propyl, butyl, hexyl, cyclohexyl, octyl, benzyl and phenylethyl (page 6 and page 2). The range of 1 to 12 carbon atoms and exemplified substituents, taught by Koshikawa-778, overlaps the claimed ranges of “1 to 20” and “1 to 12” carbon atoms.
D (which corresponds to the claimed “E”) is a monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed “E is each independently a monovalent perfluoroalkyl group or a perfluorooxyalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain a silicon atom, an oxygen atom, and a nitrogen atom”
E (which corresponds to the claimed “G”) is an epoxy group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, which reads on the claimed “G is each independently an epoxy group or a trialkoxysilyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, provided that the order of bonding of -(SiO)(H)R7-, -(SiO)(E)R7- and -(SiO)(G)R7- is not limited.” Koshikawa-778 does not cite any limitations on the bonding order of the corresponding substituents.
The overlapping ranges described above establish prima facie cases of obviousness for the claimed limitations.
Regarding claim 7, Sato is silent with regard to the formation of an optical component comprising a cured product of the inventive formulation; however, Koshikawa-778 teaches an optical semiconductor produced with the described formulation (page 2), which reads on the claimed “optical component comprising a cured product of the curable fluoropolyether adhesive agent composition.” Furthermore, the compositions of Sato and Koshikawa-778 are highly similar, as laid out in the rejection of claim 1, above. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize the formulation of Sato as modified within an optical semiconductor.
Regarding claim 9, Sato as modified teaches the incorporation of between 5 and 200 parts of sodium fluoride, which reads on the claimed range of “20 to 80 parts by weight,” establishing a prima facie case of obviousness.
Regarding claim 10, as described above, Koshikawa-778 teaches the incorporation of teaches (Component D), an organopolysiloxane (page 6), with the following structure:
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Wherein:
i (which corresponds to the claimed “t”) is an integer of 1 to 6 (page 6), which overlaps the claimed “t is an integer of 1 to 6”
j (which corresponds to the claimed “u”) is an integer of 1 to 4 (page 6), which overlaps the claimed “u is an integer of 1 to 4”
k (which corresponds to the claimed “v”) is an integer of 1 to 4 (page 6), which overlaps the claimed range of “v is an integer of 1 to 4”
i + j + k is an integer of 4 to 10, which overlaps the claimed “t + u + v is an integer of 4 to 10”
R7 (which corresponds to the claimed “R7”) is a substituted or unsubstituted monovalent hydrocarbon group (page 6), which may have 1 to 12 carbon atoms, and which may include alkyl and aryl groups such as methyl, ethyl, propyl, butyl, hexyl, cyclohexyl, octyl, benzyl and phenylethyl (page 6 and page 2). The range of 1 to 12 carbon atoms and exemplified substituents, taught by Koshikawa-778, overlaps the claimed ranges of “1 to 20” and “1 to 12” carbon atoms.
D (which corresponds to the claimed “E”) is a monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed “E is each independently a monovalent perfluoroalkyl group or a perfluorooxyalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain a silicon atom, an oxygen atom, and a nitrogen atom”
E (which corresponds to the claimed “G”) is an epoxy group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, which reads on the claimed “G is each independently an epoxy group or a trialkoxysilyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, provided that the order of bonding of -(SiO)(H)R7-, -(SiO)(E)R7- and -(SiO)(G)R7- is not limited.” Koshikawa-778 does not cite any limitations on the bonding order of the corresponding substituents.
Koshikawa-778 therefore teaches an organopolysiloxane component meeting the claimed limitations.
Regarding claim 11, as described above, k within the formula of Koshikawa-778 (which corresponds to the claimed “v”) is an integer of 1-4 (page 6), which encompasses the claimed range of “2 to 4,” establishing a prima facie case of obviousness. Furthermore, Koshikawa-778 teaches that the E groups (which correspond to the claimed “G” groups), may independently consist of monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed limitations.
Regarding claim 12, Koshikawa-778 teaches (Component D) 0.10 to 10.0 parts by mass with respect to 100 parts of (Component A) of an organopolysiloxane (page 6), which reads on the claimed which overlaps the claimed range of “0.1 to 2.2 parts by weight,” establishing a prima facie case of obviousness. It therefore would have been obvious to include this amount of said component within the modified formulation of Sato for the same reasons as described above.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed June 11, 2026, with respect to the rejections of claims 1-3, 5, 7, and 9-12 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sato, Koshikawa-778, and Koike, as described above.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
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