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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/23/26 has been entered.
This Office Action is in response to Applicant’s amendments and remarks filed April 23, 2026.
Claims 14-19 are withdrawn due to a previous restriction requirement.
Claims 11-13 are pending.
Claim Analysis
Summary of Claim 1:
A colorant-containing composition comprising
(D) at least one colorant,
(E) at least one siloxane-polyoxamide copolymer comprising units of the general formula (IV)
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where R1 is methyl, Y is -(CH2)3-, R3 is a radical selected from -(CH2 )2- or - -(CH2 )64 is hydrogen atom, n is a number from 30 to 250, and p is 1 or 2, and
also optionally (F) additives,
produced by a process wherein in a 1st step at least one siloxane (A) of the general formula (I)
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where R1 has the same meaning as above, 2 may be identical or different and is selected from H3C- or H3C-CH2-, Y has the same meaning as above, R has the same meaning as above, n has the same meaning as above, and p has the same meaning as above, at least one compound (B) of the general formula R4NH-R3-NR4H (II), where R3 has the same meaning as above4 has the same meaning as above
optionally compound (C) of the general formula RRNH-Y'-SiR2-[O-SiR62]m-O-SiR62-Y-NHRs (III), where R6 may be identical or different and is a monovalent, SiC-bonded, optionally substituted hydrocarbon radical, which may be interrupted by heteroatoms, Rs may be identical or different and is hydrogen atom or a monovalent, optionally substituted hydrocarbon radical, which may be interrupted by heteroatoms, Y' may be identical or different and denotes divalent, optionally substituted hydrocarbon radicals having 1 to 40 carbon atoms, where individual carbon atoms may be replaced by oxygen atoms or-NR"-,R" is hydrogen atom or a monovalent, optionally substituted hydrocarbon radical, and m is 0 or a number from 1 to 1000,
and optionally additives (F)
are mixed with one another and allowed to react, and
also, optionally, in a 2nd step, the composition obtained in the 1st step is melted and subsequently pelletized,
where colorants (D) are used in amounts of 2 to 400 parts by weight, based on 100 parts by weight of components (A), and the at least one siloxane-polyoxamide copolymer € has one or more end groups that are oxamido ester groups.
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.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sherman et al. (WO 2009002668 as listed on IDS dated May 20,2025).
Regarding claim 11, Sherman et al. disclose a composition comprising a copolymer comprising at least two repeat units of Formula I-a shown below:
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Wherein each R1 is independently an alkyl, haloalkyl, aralkyl, alkenyl, aryl, or aryl substituted with an alkyl, alkoxy, or halo; each Y is independently an alkylene, aralkylene, or a combination thereof;
G is a divalent residue equal to a diamine of formula R3HN-G-NHR3 minus the two -NHR groups;
R3 is hydrogen or alkyl or R3 taken together with G and to the nitrogen to which they are both attached form a heterocyclic group; each group B is independently a covalent bond, an alkylene of 4-20 carbons, an aralkylene, an arylene, or a combination thereof; n is independently an integer of 0 to 1500; and p is an integer of 1 to 10 (claim 1), thereby overlapping with the claimed ranges of n and p. Furthermore, Sherman et al. further teach G is an alkylene among others wherein alkylene refers to a divalent radical of an alkane and has 1-20 carbon atoms, thereby overlapping with R3 of the instant claim (claim 8, page 6). The copolymer of Sherman et al. when B is a covalent bond, Y is an alkylene, and R3 is an alkyl, and G is a divalent residue thereby overlaps with the claimed siloxane-polyoxamide copolymer wherein the methyl of R1, the -(CH2)3 of Y, n and p as recited in the instant claim.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Sherman et al.
Sherman et al. do not teach the colorant or the amount present in the composition.
However, Sherman et al. teach pigments may be added in amount of up to 100 parts per parts of the sum of the organic polymer and the polydiorganosiloxane polyamide segmented polymeric component (page 18), thereby overlapping with the claimed range of 2 to 400 parts by weight based of components (A). Therefore, Sherman et al. teach the amount of colorant with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” to add the amount of pigments as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Sherman et al. is also silent colorant is mixed with the claimed compound (A) and (B).
The present claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) If the prior art teaches the same product as the product formed by the process recited in the claims at issue, the claims are unpatentable. However, if the process of the claims at issue results in a product that is different from the product taught by the prior art, then the prior art does not teach the invention recited in the claims at issue.
Sherman et al. is silent on of the copolymer has one or more end groups that are oxamido ester groups as recited in the instant claim.
However, Sherman et al. teach a Reaction Scheme A shown below:
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wherein the precursor of Formula II comprises terminal oxalylamido ester groups. Sherman et al. teach varying the molar ratio between the precursor of Formula II and the diamine can be used to provide oxalylamino-containing end groups or amino end groups, depending upon which reactant is present in molar excess (page 21, page 24). Therefore, it would have been obvious to one of ordinary skill in the art to adjust the molar ratio between the precursor of Formula II and the diamine to form a copolymer having an oxalylamido ester end group as recited in the instant claim.
Regarding claim 12, Sherman et al. teach the composition as rejected in the rejection for claim 11.
Regarding claim 13, Sherman et al. is silent on the number average molecular weight of the copolymers (E) as recited in the instant claim.
However, Sherman et al. teach the overall molecular weight may be altered to affect the rheology of the resulting copolymers (page 24). Sherman et al. offer the motivation that the material can flow easier or alter the softness of the elastomeric material, or lower the modulus of the elastomeric material (page 24). Thus, the number average molecular weight of the at least one siloxane-polyoxamide copolymer would be considered a result effective variable by one of ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the number average molecular weight of the at least one siloxane-polyoxamide copolymer cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the number average molecular weight of the at least one siloxane-polyoxamide copolymer of Sherman et al. to reach the desired rheological properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Response to Arguments
Applicant's arguments filed April 23, 2026 have been fully considered but they are not persuasive.
Applicant states “Sherman teaches that in his copolymer, the G group is a divalent residue equal to a diamine of the formula R3HN-G-NHR3 minus the two -NHR3 groups, which is not an oxamido ester group. Office Action, page 6. Thus, Sherman fails to teach this additional limitation.”
The examiner disagrees that Sherman fails to teach the oxamido ester limitation and directs attention to the new grounds of rejection for claim 11. Sherman et al. teach a Reaction Scheme A shown below:
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wherein the precursor of Formula II comprises terminal oxalylamido ester groups. Sherman et al. teach varying the molar ratio between the precursor of Formula II and the diamine can be used to provide oxalylamino-containing end groups or amino end groups, depending upon which reactant is present in molar excess (page 21, page 24). Therefore, it would have been obvious to one of ordinary skill in the art to adjust the molar ratio between the precursor of Formula II and the diamine to form a copolymer having at least one oxalylamido ester end group as recited in the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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