9DETAILED 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 .
This communication is responsive to the claim set and Applicant Remarks filed 07/22/2025. Claims 1-21 are pending and under examination in this Office Action.
The 35 USC 112 (b) rejection dated 04/22/2025 is WITHDRAWN due to Applicant’s amendments.
The provisional double patenting rejection based on co-pending application 17/787,309 is WITHDRAWN in responsive to the Terminal Disclaimer filed in this application on 08/07/2025.
The provisional double patenting rejections based on copending Application No.
17/787,311 ('311) in view of lto (JP2009191101A), 17/787,312 in view of Ito (JP2009191101A), and 17 /785,414 in view of lto (JP2009191101A) are WITHDRAWN due to Applicant’s amendments.
This is the second non-final rejection because Examiner missed double patenting rejection on previous Claim 5, the current Claim 1, in the non-final rejection dated 04/22/2025.
The 35 USC 103 rejections on claims 1-3, 6-12 and 15-20 dated 04/22/2025 are maintained. Claims 1-21 are additionally rejected for the reasons set forth below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a previous Office Action.
Claim and Specification Objections
Claims 7 and 16 are objected for the image for formula (B2) is unclear. Specifically, it is hard to make out the subscripts and superscripts.
The specification submitted on 06/18/2022 has the same problem. Additionally, the formulae in paragraph [0108] are not clear.
Claim Rejections - 35 USC § 103
Claims 1, 6-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ito
(JP2009191101 A) in view of Takashi et al. (JPH09137027 A).
The non-final rejections dated 04/22/2025 at paragraph 7 (rejection on the previously presented claim 5, which is incorporated into the currently amended claim 1) and paragraph 6 are maintained.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP2009191101 A) in view of Takashi et al. (JPH09137027 A).
As discussed at paragraph 6 of the non-final rejection dated 04/22/2025, Ito teaches the inorganic fine particle of the composition having an average diameter of 5 nm to 10 μm ((lns 566-577), overlapping with the claimed 30 nm to 70 nm.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Takashi, as applied to Claim 1 above, and in further view of Heinz (DE102006021522Al).
The non-final rejections dated 04/22/2025 at paragraph 8 is maintained.
Claims 1-3, 6-7 and 12, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over
Takashi et al. (JPH09137027 A) in view of Ito (JP2009191101 A).
The non-final rejections dated 04/22/2025 at paragraph 9 is maintained.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Takashi et al. (JPH09137027 A) in view of Ito (JP2009191101 A).
As discussed in the non-final rejections dated 04/22/2025 at paragraph 9, the modified composition having an average diameter of 5 nm to 10 μm, overlapping with the claimed 30 nm to 70 nm.
Claims 8-11 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi in
view of lto, as applied to Claim 1 above, in further view of Heinz (DE102006021522Al).
The non-final rejections dated 04/22/2025 at paragraph 10 is maintained.
Claims 5, 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi et al. (JPH09137027 A) in view of in view of Stanjeck et al. (US2019/0048190 A1).
Regarding Claim 5, Takashi teaches a curable composition comprising compound (A) which contains perfluoropolyether (PFPE) group and have a hydrolysable silyl group at both ends of the compound ([0004]), thereby the compound (A) of Takashi reading on instant PFPE group-containing silane compound. Takashi further teaches the curable composition comprising an organic compound (B) (Id.), and examples of the organic compound (B) include methyltrimethoxysilane ([0034]) and vinyltrimethoxysilane (examples 1-2). Methyltrimethoxysilane or vinyltrimethoxysilane has three OCH3 each bonding with a Si atom, thereby reading on instant compound (B). Takashi furthermore teaches the composition comprising a condensation catalyst ([0032], dibutyltin dilaurate in examples). Moreover, Takashi teaches the composition comprising fillers, such as silica (examples 1-2), carbon carbonate (examples 4-5).
The difference between Takashi and instant Claim 5 is that Takashi is silent on that the composition comprising carbon black having a primary particle diameter of 0.01 to 0.1 μm.
However, Stanjeck teaches a composition comprising an organic compound (A) having hydrolyzable silyl end groups of ---O-(CH2)3-Si(CH3)(OCH3)2 or ---O-(CH2)3-Si(OCH3 )3 ([0056-57]), silanes such as vinyltrimethoxysilane (inventive Example 1 and inventive Example 4), a condensation catalyst ([0157] and [0167]), carbon black having an average particle size of 10 nm to 70 nm ([0108]), and one or more additional fillers such as calcium carbonate and silica ([0137]).
Both Takashi and Stanjeck teach their compositions are used as a sealing material for electrical or electronic devices ([0080] of Takashi and [0253] of Stanjeck), thereby Takashi and Stanjeck being analogues art. The compositions taught by Takashi and Stanjeck contain same components, such as silanes represented by vinyltrimethoxysilane, a condensation catalyst, fillers such as calcium carbonate and silica, and a polymer having a common structural characteristic, --alkoxysilane groups at both ends. Stanjeck teaches that a composition comprising the aforementioned components also contains carbon black. Therefore, it would have been obviousness to one ordinary skilled artisan, before the effective filing date of instant application, to incorporate carbon black into the composition of Takashi to obtain a modified composition because Stanjeck teaches a composition having the same and similar components of Takashi also contains carbon black.
Regarding Claim 14, Takashi teaches the PFPE-group-containing compound (A), has a formula of Y-[ R1 -( Rf -R2 )a -Rf -R1]-Y wherein Y is a hydrolyzable silyl group ([0007]), special example of Y is
(MeO)3Si ([0038], [0049], [0054], [0058]). R1 and R2 are each same or different divalent hydrocarbon
groups ([0007]), Rf is the PFPE group, such as CF2-(OC2F4)n-(OCF2)m-OCF2, n is an integer of 5 to 50, m is an integer of 1 to 10 ([0009]), the disclosed formula reads on instant formula (1) of Claim 2, provided X1 and X1' each is a single bond, j=k=l, R4 is a hydrogen atom.
The difference between Takashi and instant Claim 14 is that Takashi is silent on that the composition comprising carbon black having a primary particle diameter of 0.01 to 0.1 μm.
However, Stanjeck teaches a composition comprising an organic compound (A) having hydrolyzable silyl end groups of ---O-(CH2)3-Si(CH3)(OCH3)2 or ---O-(CH2)3-Si(OCH3 )3 ([0056-57]), silanes such as vinyltrimethoxysilane (inventive Example 1 and inventive Example 4), a condensation catalyst ([0157] and [0167]), carbon black having an average particle size of 10 nm to 70 nm ([0108]), and one or more additional fillers such as calcium carbonate and silica ([0137]).
Both Takashi and Stanjeck teach their compositions are used as a sealing material for electrical or electronic devices ([0080] of Takashi and [0253] of Stanjeck), thereby Takashi and Stanjeck being analogues art. The compositions taught by Takashi and Stanjeck contain same components, such as silanes represented by vinyltrimethoxysilane, a condensation catalyst, fillers such as calcium carbonate and silica, and a polymer having a common structural characteristic, --alkoxysilane groups at both ends. Stanjeck teaches that a composition comprising the aforementioned components also contains carbon black. Therefore, it would have been obviousness to one ordinary skilled artisan, before the effective filing date of instant application, to incorporate carbon black into the composition of Takashi to obtain a modified composition because Stanjeck teaches a composition having the same and similar components of Takashi also contains carbon black.
Regarding Claim 21, the discussion of Claim 5 above is applicable to instant Claim 1, and Stanjeck teaches carbon black having an average particle size of 10 nm to 70 nm ([0108]), overlapping with the claimed 30 to 70 nm.
Double Patenting
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-12 and 14-15 of copending Application No. 17/787,311 ('311) dated 09/11/2025 in view of Stanjeck et al. (US2019/0048190 A1).
Regarding Claims 1 and 5, claim 1 of ‘311 claims a curable composition comprising the instant
compound (A), compound (B), a condensation catalyst, and a surface treated silica.
The difference between Claim 1 of ‘311 and instant Claim 1 is that Claim 1 of ‘311 is silent on the composition comprising carbon black or calcium carbonate having a primary particle diameter of 0.01 to 0.1 μm.
However, Stanjeck teaches a composition comprising an organic compound (A) having hydrolyzable silyl end groups of ---O-(CH2)3-Si(CH3)(OCH3)2 or ---O-(CH2)3-Si(OCH3 )3 ([0056-57]), silanes such as vinyltrimethoxysilane (inventive Example 1 and inventive Example 4), a condensation catalyst ([0157] and [0167]), carbon black having an average particle size of 10 nm to 70 nm ([0108]), and one or more additional fillers such as calcium carbonate and silica ([0137]). Therefore, Stanjeck teaches a composition comprising an organic compound (A) having a same characteristic to the compound (A) of ‘311 Claim 1, - hydrolyzable silyl end groups, a compound reading the compound (B) of ‘311 Claim 1, the component (C ), and (D) a filler including silica. Thus, one ordinary skilled artisan would have been motivated, before the effective filling date of ‘311, to incorporate carbon blacking having an average particle size of 10 nm to 70 nm to obtain a modified composition due to the similarities of the compositions of ‘311 and Stanjeck.
Claims 1-4 and 6-12 and 14-15 of '311 claim the limitations of instant claims 2-4, 6-11, 13, 15-
20, respectively.
Regarding Claim 12, same reasoning as set forth above, the composition of '311 modified by Stanjeck is substantially identical to the composition of instant claim 1, therefore, the fluidity property is expected.
Regarding Claim 14, as discussed above, the modified composition comprising carbon black.
Regarding Claim 21, as discussed above, the modified composition comprising carbon blacking having an average particle size of 10 nm to 70 nm, overlapping the claimed 30 nm to 70 nm.
Claims 1-7, 12-16 and 21 are provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-3 and 5-11 of copending Application No. 17/787,312
('312) dated 06/18/2025 in view of Stanjeck et al. (US2019/0048190 A1).
Regarding Claims 1-2 and 5, claim 1 of '312 claims a curable composition comprising PFPE-containing silane compounds (al) and (a2), an organic silicon compound (b) which is the same as instant
compound (B) and a condensation catalyst. Wherein the PFPE-containing silane compound (al) reads on
the Compound (A) of instant claim 2, provided that R4 is a hydrolysable group containing an alkoxy
group, the PFPE-containing silane compound (a2) reads on the Compound (A) of instant Claim 2 when g
of instant formula (1) = 0.
The difference between claim 1 of '312 and instant claims 1-2 is that claim 1 of '312 is silent on
the composition comprising a filler.
However, Stanjeck teaches a composition comprising an organic compound (A) having hydrolyzable silyl end groups of ---O-(CH2)3-Si(CH3)(OCH3)2 or ---O-(CH2)3-Si(OCH3 )3 ([0056-57]), silanes such as vinyltrimethoxysilane (inventive Example 1 and inventive Example 4), a condensation catalyst ([0157] and [0167]), and carbon black having an average particle size of 10 nm to 70 nm ([0108]). Therefore, Stanjeck teaches a composition comprising an organic compound (A) having a same characteristic to the compound (A) of ‘312 Claim 1, - hydrolyzable silyl end groups, a compound reading the compound (B) of ‘312 Claim 1, the component (C ), and (D) carbon black having an average particle size of 10 nm to 70 nm. Thus, one ordinary skilled artisan would have been motivated, before the effective filling date of ‘312, to incorporate carbon blacking having an average particle size of 10 nm to 70 nm to obtain a modified composition due to the similarities of the compositions of ‘312 and Stanjeck.
Claim 2 of '312 claims the corresponding limitation of instant claim 3.
Claim 3 of '312: the X2 reads the limitation of X2 and X2' of instant claims 2-3.
Claim 5 of '312: the X3 reads on X10 of instant claim 2.
Claim 6 of '312: they reads on g of instant claim 2.
Claims 7-8 of '312 claim the limitation of instant claim 3.
Claim 9 of '312 claims the limitations of instant claim 4 and 13.
Claims 10-11 of claim '312 claim the limitations of instant claim 6-7 and 15-16, respectively.
Regarding Claim 12, same reasoning as set forth above, the composition of '312 modified by Stanjeck is substantially identical to the composition of instant claim 1, therefore, the fluidity property is expected.
Regarding Claims 14 and 21, discussed above, the modified composition comprising carbon blacking having an average particle size of 10 nm to 70 nm, overlapping the claimed 30 nm to 70 nm.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-4 and 19-20 of copending Application No. 17 /785,414
('414) in view of Stanjeck et al. (US2019/0048190 A1).
Regarding claims 1 and 5, claim 1 of '414 claims a curable composition comprising PFPE-containing silane compound corresponding instant Compound (A), a compound (B) corresponding instant compound (B), a condensation catalyst and a compound (D) corresponding instant compound (B3).
The difference between claim 1 of '414 and instant claim 1 is that Claim 1 of '414 is silent on the
composition comprising a filler.
However, as discussed above, Stanjeck teaches a composition comprising an organic compound (A) having a same characteristic to the compound (A) of ‘414 Claim 1, - hydrolyzable silyl end groups, a compound reading the compound (B) of ‘414 Claim 1, the component (C ), and (D) carbon black having an average particle size of 10 nm to 70 nm. Thus, one ordinary skilled artisan would have been motivated, before the effective filling date of ‘414, to incorporate carbon blacking having an average particle size of 10 nm to 70 nm to obtain a modified composition due to the similarities of the compositions of ‘414 and Stanjeck.
Claims 2-6 and 19-20 of '414 claim the limitations of instant claims 2-4, 6-7, 13 and 15-16,
respectively. The compound (D) of claim 1 of' 414 reads on the compound (B3) of instant claims 8-11.
Therefore, claims 1-2 of' 414 reads on instant claims 8-11 and 17-20.
Regarding Claim 12, same reasoning as set forth above, the composition of '414 modified by Ito
is substantially identical to the composition of instant claim 1, therefore, the fluidity property is expected.
Regarding Claims 14 and 21, discussed above, the modified composition comprising carbon blacking having an average particle size of 10 nm to 70 nm, overlapping the claimed 30 nm to 70 nm.
Response to Arguments
Applicant's arguments filed on 7/22/2025 have been fully considered but they are not persuasive.
Applicant’s argument: Ito lists several "suitable examples of inorganic fine particles." None of them are calcium carbonate. Magnesium carbonate is a totally different compound.
Examiner’s answer: calcium is directly below magnesium in the periodic table. One ordinary skilled artisan would reasonably expect calcium carbonate and magnesium carbonate having similar properties. Additionally, Examiner rejected the previously presented Claim 5 with Ito in view of Takashi. Takashi discloses a similar curable composition to that of Ito and Takashi discloses that carbon carbonate being preferred filler of the composition. Therefore, it would have been obvious to one skilled artisan to use carbon carbonate as the filler for composition of Ito.
Applicant’s argument: Ito discloses that the average particle size of the inorganic fine particles is "more preferably 0.5 to 3 μm," which is well outside the presently claimed range of 0.01 to 0.1μm.
Examiner’s answer: Ito discloses the inorganic fine particles having an average diameter of 5 nm to 10 μm, encompassing the claimed range of 0.01 to 0.1μm. Therefore, a prima facie case of obviousness exists (See MPEP 2144.05 I). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123 (II).
Applicant’s argument: Ito addressed the composition for a different purpose from that of present application.
Examiner’s answer: As discussed in claim 12, Ito discloses a substantially identical composition to that of present application, thereby the properties of fluidity are expected. Additionally, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." (MPEP 2112.I.).
Applicant’s argument: Takahashi does not disclose the purpose of using calcium carbonate in the composition and compositions having calcium carbonate resulted inferior mechanical properties than the compositions having silica. Therefore, one ordinary skilled artisan would not look to the composition having calcium carbonate when seeking an improvement.
Examiner’s answer: The arguments are not persuasive because:
The current claims do not claim the purpose of using calcium carbonate. Examination is based on claims.
Even if the current claims claim the purpose of using calcium carbonate, Takahashi discloses the compositions contain calcium carbonate, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." (MPEP 2112.I.).
Takahashi discloses the compositions contain calcium carbonate. Prior art discloses an alternative or preferred embodiment does not constitute a teaching away from a broader disclosure of nonpreferred embodiments. "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." (see MPEP 2123 II).
Applicant’s argument: the present invention demonstrates unexpected results.
Examiner’s answer: the data have been fully considered; however, they are insufficient to establish unexpected results given that the data is not reasonably commensurate in scope with the scope of claims. The inventive data contains carbon black or calcium carbonate having a primary particle diameter of only 0.005 μm while claimed 0.01 to 0.1 μm. The showing of unexpected results must be commensurate in scope with the claims. See MPEP 716.02(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763