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 .
DETAILED ACTION
Claims 1-14, 16 and 17 of Y. Cheng et al., US 17/761,236 (Nov. 9, 2020) are pending. Claims 1-4, 10-14, and 16 and 17 to non-elected inventions of Groups (I) and (III)-(V) are withdrawn as not directed to the elected invention. Claims 5-9 (Group (II)) are under examination on the merits. Claims 5-8 are rejected. Claim 9 is objectionable.
Election/Restrictions
Applicant elects Group (II), (claims 5-9) with traverse in the Response to Restriction Requirement filed on August 6, 2025. Claims 1-4, 10-14, and 16 and 17 to non-elected inventions of Groups (I) and (III)-(V) are withdrawn as not directed to the elected invention. The restriction/election requirement is made FINAL.
Pursuant to the election of species requirement Applicant elected the species of branched oxydisilane/siloxane oligomer with unit formula [(CH3)3SiO1/2]5[(CH3)3Si2O3/2][(CH3)2Si2O4/2], which is shown in Table 1 as, without traverse, the species of:
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for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
Claims 5-9 read on the elected species. The elected species were searched and determined to be free of the art of record. The search/examination was extended to the additional species cited in the § 102 rejection below. MPEP § 803.02 (III)(C)(2). The provisional election of species requirement is given effect and no claims are withdrawn from consideration as not reading on the elected species. MPEP § 803.02(III)(A).
Applicant’s Traversal
Applicant argues that A. Chernyavskii et al., 55 Russian Chemical Bulletin, International Edition, 748-750 (2006) (“Chernyavskii”) does not teach or suggest any branched structure. In this regard claim 1 recites:
Claim 1 A method comprising using a branched oxydisilane/siloxane oligomer comprising unit formula: [(CH3)3SiO1/2]5[(CH3)3Si2O3/2][(CH3)2Si2O4/2] . . .
The specification does not define “branched”. The term “branched” in the context of claim 1 is reasonably interpreted as linear series of atoms (in this case Si atoms) that has a subordinate chain of one or more Si atoms. See, Hawley's Condensed Chemical Dictionary, page 303 (16th ed., 2016, R.J. Larrañaga ed.) (defining “chain” and “branched chain” with respect to a series of carbon atoms). Chernyavskii discloses compounds 4a-e,
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These compounds meet the claim 1 limitation of “[comprise] unit formula: ((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y”. But, as argued by Applicant, compounds 4a-e are not branched and also do not meet the 1 claim 1 proviso of “a quantity (y + z) = [n + (2 x o) + 2]”.
However, unity of invention is lacking in view of the § 102 rejection over B. Zhu et al., US 2010/0143686 (2010) (“Zhu”). Further, the genus of branched oxydisilane/siloxane oligomers comprising unit formula: ((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y of Group (I) is much narrower than the branched oxydisilane/siloxane oligomers prepared according to the method of Group (II), which are undefined by any chemical formula.
However, as noted below in “Subject Matter Free of the Art of Record”, claims 1-4 and 17 have been fully searched and are free of the art of record. If Applicant appropriately addresses the § 112(b) issue respecting claims 1-4 and 17, as noted below, and overcomes the claim rejections of Group (II) such that they are in condition for allowance, then claims 1-4 and 17 would be considered for rejoinder (in the interest of efficient prosecution), and if rejoined subject to an updated search and fully examined for any additional § 112 issues.
Information Disclosure Statement
The Information Disclosure Statement filed March 17, 2022 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document and each non-patent literature publication or that portion which caused it to be listed. Applicant has not submitted a copy of the following reference, which has been lined-through.
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The Information Disclosure Statement has been placed in the application’s file, but the information referred to therein, that has been lined through, has not been considered.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See, MPEP § 2111. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification. MPEP § 2111.
Structural Interpretation of Claim 1
Although claim 1 is withdrawn, it is interpreted here for completeness and in view of Applicant’s traversal of the restriction. Instant claim 1 is directed to a polyorganosiloxane having a formula ((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y. The formula is represented using silyloxy shorthand format. 1
Applying standard shorthand silyloxy nomenclature (per footnote 1) to the claim 1 formula of ((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y, the units can be drawn in standard form to have the following structures, where the wavy line indicates an open valence, and where the Si-Si group is equated with the single Si atom of the shorthand format.
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That is, in these silicone building blocks, the numerator in the subscript "fraction" (in this case 2) following the "O" represents the number of oxygen atoms connected to the particular silicon, and the denominator "2" indicates that each of these oxygen atoms are shared between two silicon atoms.
The above units are reasonably interpreted, consistently with the specification, as connected to each other by chemical bonds. MPEP § 2111.01 (“words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification”). Also, the units are interpreted as sharing oxygen atoms, as shown below, with reference to the elected species (third compound listed in Specification Table 2 (page 5)):
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third compound listed in Specification Table 2 (page 5)
Where the united (R"3Si2O3/2)n; (R"2Si2O4/2)o; and (R3SiO1/2)z are circled . And which has the formula ((R"4Si2O2/2)0(R"3Si2O3/2)1(R"2Si2O4/2)1(R3SiO1/2)5(HO1/2)0. And in the above compound
subscript m = 0,
subscript n = 1,
subscript o = 1,
subscript y = 0,
subscript z = 5
The above compound meets the claim 1 proviso of “a quantity (y + z) = [n + (2 x o) + 2]”, where 0+5 = 1 + (2 x 1) + 2.
Claim Objections
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 102 (AIA )
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
35 U.S.C. § 102(a)(1)/(2) over B. Zhu et al., US 2010/0143686 (2010) (“Zhu”)
Claims 5-8 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by B. Zhu et al., US 2010/0143686 (2010) (“Zhu”). In Example 2, Zhu teaches combining composition A with PhSiCl3 and then adding this mixture to water, which is summarized by the Examiner as follows:
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Zhu’s compound PhSiCl3 meets the claim 1 limitation of
A) a triorganohalosilane of formula R3SiX
Any of Zhu’s compounds Me4Cl2Si2 + Me3Cl3Si2 + Me2Cl4Si2 can correspond to the claim 1 recitation of:
B) a halodisilane of formula
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,
where each R' is independently selected from the group consisting of an alkyl group of 1 to 6 carbon atoms and X, with the proviso that an average of > 2 R' per molecule are halogen atoms;
Zhu teaches mixing composition A with PhSiCl3 and adding this mixture to water. Zhu therefore meet each and every limitation of claim 5, which is therefore anticipated.
The further limitations of claim 6-8 are clearly met.
It is noted that in Example 5, Zhu performs the procedure as Example 2, but replaces the PhSiCl3 with MeSiCl3. Example 5 therefore anticipates the claims for the same reasons as above.
Subject Matter Free of the Art of Record
Claim 9 is free of the art of record.
9. The method of claim 5 further comprising: adding D) a strong acid to C) the water before step 2).
The closest art of record is B. Zhu et al., US 2010/0143686 (2010) (“Zhu”). Zhu teaches preparation of a silicon resin by (i) reacting at least one halodisilane having the formula Z3-aR1aSi-SiR1bZ3-b, and, optionally, at least one halosilane having the formula R1bSiZ4-b, with at least one alcohol having the formula ROH in the presence of an organic solvent to produce an alcoholysis product; (ii) reacting the alcoholysis product with water at a temperature of from 0 to 40° C. to produce a hydrolyzate; and (iii) heating the hydrolyzate to produce the resin. Zhu at page 2, [0031].
As discussed above, in Example 2, Zhu teaches combining composition A with PhSiCl3 and then adding this mixture to water, which is summarized by the Examiner as follows:
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However, Zhu does not teach or suggest the claim 9 step of “adding D) a strong acid to C) the water before step 2)”. Although it is noted that the above Zhu reaction evolves HCl in step 1, which is a strong acid.
Withdrawn claims 1-4 and 17 have been fully searched and are also free of the art of record. These claims are drawn to a method comprising using a branched oxydisilane/siloxane oligomer comprising unit formula: ((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y as a heat transfer liquid.
The closest are of record to claims 1-4 and 17 is B. Zhu et al., US 2010/0143686 (2010) (“Zhu”) and A. Chernyavskii et al., 55 Russian Chemical Bulletin, International Edition, 748-750 (2006) as discussed above.
Zhu discloses silicon resin of the formula (II):
[O(3-a)/2R1aSi-SiR1bO(3-b)/2]v(R13SiO1/2)w(R12SiO2/2)x(R1SiO3/2)y(SiO4/2)z
where v+w+x+y+z=1 and wherein each R1 is independently —H, hydrocarbyl, or substituted hydrocarbyl. Zhu at page 2, [0027].
If one of ordinary skill selects Zhu formula (II) variables as follows:
a is 1,
R1 is alkyl of 1 to 6 carbons,
w is 0.3 or more, and
x, y, and z are all zero,
then the so formed Zhu compound falls within the instantly claimed genus of formula ((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y. However, there is insufficient motivation to make such structural choices.2 Zhu discloses example species. See Zhu at page 2, [0030]. All but one of the disclosed Zhu species lack the instantly claimed structural unit (R3SiO1/2)z. Zhu at least fails to provide motivation to meet the claim 1 limitation of (R3SiO1/2)z where “subscript z [Symbol font/0xB3] 3” (i.e., 0.3 in the Zhu unit (R13SiO1/2)w). The closest Zhu species is the second listed on page 2, col. 2: (O2/2EtSiSiEt2O1/2)0.1 (O2/2MeSiSiO3/2)0.15 (Me3SiO1/2)0.05 (Ph-SiO3/2)0.5(SiO4/2)0.2, where correspond claim 1 variable z in this Zhu oligomer is 0.05 (or 0.5 as a non-ratio).
With respect to reference Chernyavskii, compounds 4a-e are disclosed:
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These compounds meet the claim 1 limitation of “[comprise] unit formula: ((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y”. However, these compounds are not branched and also do not meet the 1 claim 1 proviso of “a quantity (y + z) = [n + (2 x o) + 2]”. With respect to § 103, Chernyavskii provides no motivation to structurally modify compounds 4a-e so as to arrive at a claimed branched oxydisilane/siloxane oligomer as recited in independent claim 1.
Although free of the art of record as noted above, claims 1-4 and 17 are not in condition for rejoinder at this time because a clear method step is not recited in independent claim 1:
1 A method comprising using a branched oxydisilane/siloxane oligomer comprising unit formula:((R"4Si2O2/2)m(R"3Si2O3/2)n(R"2Si2O4/2)o(R3SiO1/2)z(HO1/2)y. . .
as a heat transfer fluid.
and is thus indefinite pursuant to § 112(b). See, MPEP § 2173.05(q) (citing Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986) where a claim which recited the preamble step of “using”: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced); however, see also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992). If Applicant appropriately addresses this § 112(b) issue and overcomes the claim rejections of Group (II) such that they are in condition for allowance, claims 1-4 and 17 would be considered for rejoinder, subject to an updated search, and fully examined for any additional § 112 issues.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Chemical shorthand nomenclature is often used to represent silicone polymers based upon polymer units. Dow Corning Corporation, Silicone Chemistry Overview, 1-11 (1997) (“Dow Corning”); A. Colas et al., Handbook of Polymer Applications in Medicine and Medical Devices, 131-143 (2013); A. O’Lenick, 3 Journal of Surfactants, 229-236 (2000) (page 231, col. 2, Table 1). Dow Corning provides a description of the short hand nomenclature for siloxane units as follows.
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In these silicone building blocks, the numerator in the subscript "fraction" following the "O" represents the number of oxygen atoms connected to the particular silicon, and the denominator "2" indicates that each of these oxygen atoms are shared between two silicon atoms. Id.; see also, J. Grande et al., 46 Chem. Commun., 4988-4990 (2010) (see page 4990 under “Notes and references”). For example with SiO4/2, that there are four single bonds to oxygen from silicon, and that each oxygen bonds to another silicon through a single bond, i.e., Si(OSi)4 rather than SiO2, which might imply SiO2 double bonds. Id. See also, e.g., US 2019/0225879 (2019) (page 3, [0038]); US 2020/0291189 (2020) (page 2, [0042] and page 6, [0097]]; US 2020/0283627 (2020).
2 A lead compound obviousness analysis is often employed regarding obviousness of chemical compounds requiring initial motivation to select a prior art compound and thereafter still further motivation to make the specific structural modifications thereto so as to arrive at a claimed compound. See MPEP § 2143(B) (discussing “lead compound cases” in Examples 9-11 with respect to pharmaceutical applications).