DETAILED ACTION
Response to Arguments
Applicant's arguments filed June 26, 2025 have been fully considered but they are not persuasive.
A) Applicant’s argument that D1/GB 1511508 relates only to base catalyzed reactions and there is no suggestion to use any other catalyst is not persuasive. The rejection is a 103 obvious type rejection. If GB 1511508 disclosed each of the limitations, the rejection would be a 102. In fact, FR 1323121 teaches that a mixture of acid and base catalysts are preferably (page 2 lines 39-60), and a basic compound added to the acid catalyzed system lead to unexpectedly increased rate of reaction (pg. 2 lines 60-70). Therefore, there is evidence in the prior art to use an acid catalyst with a base catalyst.
B) Applicant’s argument that D2/FR 1323121 starts with an organosilicon that already has an alkoxy group whereas GB 1511508 starts with a organosilicon that has a hydroxyl group is not persuasive. FR 1323121 does teach that the starting polysiloxane compounds used in the reaction can have hydroxyalkyl radicals (pg. 5 lines 207-222), just as in GB 1511508 and the instant application. Additional, unclaimed functional groups, such as additional alkoxy groups, are not excluded by the claim language.
C) Applicant’s argument that one skilled in the art would not look to transesterification catalysts is not persuasive. FR 1323121, like GB 1511508 teaches the reaction of organosiloxanes having hydroxyl groups with an organic alcohol. As discussed above, FR 1323121 recognizes that a mixture of acid and base components as a catalyst works well for the reaction.
D) In response to applicant's arguments that because D1 is already base catalyzed, there is no reason to incorporate further base, nor does D2 teach that acid can be utilized in excess in base catalyzed systems, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, FR 1323121 provides teaching and motivation to use the claimed catalyst in a similar reaction. A person having ordinary skill in the art, based on the teaching of GB 1511508 and FR 1323121, would be able to add the catalyst of FR 1323121 to the reaction of GB 1511508.
E) Applicant’s argument that FR 1323121 prefers alkali metal hydroxides is not persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123 II). Each embodiment disclosed in a reference is taught by that reference.
F) Applicant’s argument that there is no objective reason to modify D1 with D2 is not persuasive; motivation statements are provided in the rejection.
G) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
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.
Claims 1 -12 are rejected under 35 U.S.C. 103 as being unpatentable over GB 1511508 in view of FR 1323121.
Regarding claim 1 and 4-7: GB 1511508 teaches a method of preparing an alkoxysiloxane/alkoxy-functional organosiloxane (pg. 2 lines 4-25) comprising reacting a linear hydroxyl-terminated dimethylsiloxane/initial organosiloxane having at least one silanol group (pg. 2 lines 10-15) and an organic alcohol (pg. 2 lines 20-25) and a catalyst (pg. 2 line 6).
GB 1511508 does not teach the catalyst comprises an ammonium carboxylate compound. However, FR 1323121 teaches a similar method using a catalyst made by reacting ammonia (which is an amine compound having a moiety of the general formula in claim 5 where a is 0) and an organic acid such as formic, acetic or propionic acid (which are carboxylic acids overlapping with the formula in claims 6 and 7) (pg. 2, lines 70+). GB 1511508 and FR 1323121 are analogous art since they are both concerned with the same field of endeavor, namely alkoxylated organosilane synthesis. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the catalyst of FR 1323121 in the method of GB 1511508 and would have been motivated to do so in order to unexpectedly increase the rate of transesterification, as evidenced by FR 1323121 (page 2).
Regarding claim 2: The final product has the structure:
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(first page) where n is 5-200. Therefore, the initial structure has the claimed formula where R2 is -OH on the terminal groups, claimed m is 5-200, and claimed n is 0.
Regarding claim 3: In the above final product, the R groups come from the organic alcohol, and are monovalent hydrocarbon groups having at least 10 carbon atoms (page 1 lines 30-40).
Regarding claims 8 and 9: GB 1511508 teaches the basic claimed method as set forth above. Not disclosed is the claimed organosilicon (D). However, FR 1323121 teaches the presence of an organosilane such as methyltriethoxysilane (pg. 4 line 143), which overlaps the claimed general formula. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the organosilane of FR 1323121 in the method of GB 1511508 and would have been motivated to do so since FR 1323121 teaches low molecular weight starting materials are less dependent on the catalyst to react.
Regarding claim 10: GB 1511508 taches the reaction product (page 1).
Regarding claim 11: The combined prior art teach the claimed method. The product would naturally flow from the suggestion of the prior art.
Regarding claim 12: The final product has the structure:
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(first page) where n is 5-200. This is the claimed formula where R1 and R11 are a hydrocarbyl group, and the terminals have -OR3 groups, where R3 is a hydrocarbyl group, claimed m is 5-200, and claimed n is 0.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over GB 1511508 in view of FR 1323121 as applied to claim 10 set forth above and in view of Trego (EP 0 314 315).
Regarding claim 13: GB 1511508 teaches the basic claimed composition set forth above. Not disclosed is less than 0.1% cyclic polydiorganosiloxanes. However, Trego teaches less than 5% polydimethylsiloxane cyclics (example 3), which overlaps the claimed range, and that the reactant mixture can be purified to separate the linear oligomers from the cyclic polysiloxanes (col. 1 lines 15-20). GB 1511508 and Trego are analogous art since they are both concerned with the same field of endeavor, namely polysiloxane synthesis. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to purify the reactants to remove the cyclic polysiloxanes of GB 1511508 as in Trego and would have been motivated to do so to obtain a purer product.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/
Primary Examiner, Art Unit 1767
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