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 .
Applicants’ Claims
The objections and rejections set forth hereinbelow pertain to the version of claims submitted on March 06, 2024.
Claim Objections
Claims 4 and 5 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend upon another multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims 4 and 5 have not been further treated on the merits.
Claim Rejections - 35 USC § 112
Claims 1-3 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.
In claim 1, the substituents defining the “substituted” R2 group are unclear.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019131806 A (Asakura) abstract and machine translation in view of US 2016/0326340 (Tabei).
Asakura discloses an infrared transmitting curable composition comprising:
an addition reaction product having two addition-reactive carbon-carbon double bonds made from (a) a compound having two silicon-bonded represented by formula (1)
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and
(b) a polycyclic hydrocarbon having two addition-reactive carbon-carbon double bonds (meets Applicant’s addition reaction product (A));
(B) a dye having an absorption band in the wavelength region of 350 to 650 nm (meets Applicant’s dye (B));
(C) an organosilicon compound having at least two hydrogen silicon-bonded hydrogen atoms and no addition-reactive carbon-carbon double bond-containing groups, no epoxy groups, no alkoxysilyl groups, nor carboxylic acid anhydride groups (meets Applicant’s organosilicon compound (C));
(D) a hydrosilylation reaction catalyst (meets Applicant’s catalyst (D)); and
(E) optional additives inclusive of fumed silica (generically embraces Applicant’s hydrophobic fumed silica) (e.g., abstract, p.8, examples, claims).
In essence, Asakura differs from claim 1 in not expressly disclosing a hydrophobic fumed silica. In this regard, Tabei teaches that hydrophobic fumed silica is commonly used in similar-such curable compositions for its addition effect on viscosity and workability performance (e.g., abstract, [0082-0085], Table 1). Thus, it would have been obvious to one having obvious to one having ordinary skill in the art to use a hydrophobic fumed silica as the fumed silica disclosed by Asakura for its expected additive effect in accordance with the desired properties and with the reasonable expectation of success.
As to claim 2, Asakura discloses the same polycyclic hydrocarbon compounds (p. 3 and examples).
As to claim 3, Asakura discloses the same addition reaction product of formula
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482
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(p. 3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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