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 .
Response to Amendment
In response to the Amendment received on 5/26/2026, the examiner has carefully considered the amendments.
Response to Arguments
Applicant’s arguments, see Amendment/Remarks, filed 01/26/2026, with respect to the rejection(s) of claim(s) 17 under 35 U.S.C. 112(d) has been fully considered and is not persuasive.
Applicant argues the definition of X3 and X4, in claim 17, includes independently being chosen from a substituted C6 – C30 aryl groups, and thus the definition of only one of X3 and X4, in claim 17, is a phenyl group, is proper. As currently written claim 17 sets forth each X1, X2, X3, X4, X5 and X6 can independently be chosen from a hydrogen, a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C1 to C30 alkyl ether group, *-N(E')(E"), in which * is a linkage site and E' and E" are each independently a hydrogen or a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C1 to C30 alkyl sulfide group, a substituted or unsubstituted C6 to C30 aryl group, or a substituted or unsubstituted C7 to C30 arylalkyl group. As written and based upon the comma usage found in instant claim 17 it is being interpreted as: X1, X2, X3, X4, X5 and X6 can independently be chosen from a hydrogen, a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C1 to C30 alkyl ether group, [and] *-N(E')(E"), in which * is a linkage site and E' and E’’ [,wherein] each E’ and E’’ are each independently a hydrogen or a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C1 to C30 alkyl sulfide group, a substituted or unsubstituted C6 to C30 aryl group, or a substituted or unsubstituted C7 to C30 arylalkyl group.
As instantly written, as well as, based on the comma usage, it is not clear if applicant intends for :1) X1-X6 to be each independently chosen from: a hydrogen, a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C1 to C30 alkyl ether group, and *-N(E')(E"), in which * is a linkage site and E' and E’’, wherein E’ and E’’ are each independently hydrogen or a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C1 to C30 alkyl sulfide group, a substituted or unsubstituted C6 to C30 aryl group, or a substituted or unsubstituted C7 to C30 arylalkyl group . Or, if applicant intends for :2) X1-X6 to be each independently chosen from: a hydrogen, a substituted or unsubstituted C1 to C30 alkyl group, a substituted or unsubstituted C1 to C30 alkyl ether group, -N(E')(E"), a substituted or unsubstituted C1 to C30 alkyl sulfide group, a substituted or unsubstituted C6 to C30 aryl group, or a substituted or unsubstituted C7 to C30 arylalkyl group, wherein * is a linkage and E’ and E’’ are each independently a hydrogen or a substituted or unsubstituted C1 and C30 alkyl group . Thus, if applicant intends for scenario 1), X3 and X4, in claim 17 cannot be a phenyl group. In scenario 1) X3 and X4 are each independently limited to H, a substituted or unsubstituted C1-C30 alkyl; a substituted or unsubstituted C1 to C30 alkyl ether group and *-N(E’)(E’’). In this scenario (1) X3 or X4 can only comprise an phenyl group which is attached to a nitrogen which is attached to a linkage attached to a Si group. If scenario 2) is intended, the examiner suggest amending the claim by using semi-colons to separately the groups accordingly or amend as written above to clarify the intention that E’ and E’’ are independently chosen from a hydrogen or a substituted or unsubstituted C1 to C30 alkyl group. Clarification is requested.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS. —Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 requires one or more of substituents X3 and X4 to be phenyl groups; however, by definition one or more of X3 and X4 are defined as being at least one of hydrogen; a substituted or unsubstituted C1 to C30 alkyl groups, a substituted or unsubstituted C1 to C30 alkyl ether group; [or] *-N(E’) (E”), wherein * is a linkage site and E’ and E’’ are defined as . Aromatic groups are not found in the definitions for X3 or X4. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1, 4, 7-9, 12, 15-16 and 18 are allowed.
The following is an examiner’s statement of reasons for allowance: The instant claims are distinguished over the closest prior art to Nam et al (10,319,946) for the reasons set forth in the advisory action. The silicone diacrylates of Nam require at least one aromatic substituent.
Furthermore, as of the date of this Office action, the Examiner has not located or identified any reference that can be used singularly or in combination with another reference including Nam et al, to render the present claims anticipated or obvious to one of ordinary skill in the art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere-Kelley can be reached on 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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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
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