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 .
Claim Interpretation
For purpose of clarity, it is noted that “R1” of claim 1, “is an aliphatic hydrocarbon group having 1 to 10 carbon atoms” is interpreted to mean that the group R1 comprises an aliphatic hydrocarbon group having 1 to 10 carbon atoms (open-ended to comprise other atoms such as oxygen); since dependent claim 2 states that “R1 is an alkyl group having 1 to 10 carbon atoms or an alkyloxy group having 1 to 10 carbon atoms.” Thus, the Examiner is interpreting, for example, the R1 group of claim 1 comprises an alkyl and/or alkyloxy group.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US Patent No. 5824240).
Regarding claims 1-2; Sato et al. teaches polymer prepared from the following compounds of formulae (8) and (8A) (reads on siloxane-based derived structural unit and silane-based structural unit 1):
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Wherein X1 and X2 each represent a divalent organic group having not less than 2 carbon atoms; X1A represents tetravalent organic residue having not less than two carbon atoms; Y1 represents a hydrolyzable functional group (e.g. alkoxy; methoxy, ethoxy); Y2 represents a monovalent or divalent non-hydrolyzable organic group (e.g. alkyl); methyl, ethyl; n is 1-3 and m is 0-2 [col8, line60-col9, line30]. Sato et al. teaches an example of the X1A group is an benzene [col13, line1-5].
Sato et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Sato et al. does not specifically disclose an embodiment containing the above formulae. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing the above formula (8) and (8A) based on the invention of Sato et al., and would have been motivated to do so since Sato et al. suggests that the composition can contain units derived from formula (8) and (8A). Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767