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 .
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.
Priority
This application is a 371 of PCT/US2021/038559 06/23/2021 PCT/US2021/ 038559 has PRO 63/043,209 06/24/2020.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 05/24/23 and 08/29/25 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on 09/15/25 and species
PNG
media_image1.png
200
336
media_image1.png
Greyscale
filed on 12/23/25 is acknowledged. The traversal is on the ground(s) that although the claimed subject matter may be classified in different classes, the inventions are not independent. Each of the above groups requires the presence of a siloxane monomer having the generic Formula 1. This in not persuasive because the restriction is under 35 U.S.C. 121 and 372 for unity of invention. The common technical feature is claim 1 and/or the formula 1 and this is known in the prior arts. Species are independent or distinct because each combination results in a structurally distinct compound that will have distinct properties. In addition, these species are not obvious variants of each other based on the current record. In accordance with species election practices, upon finding one species allowable, search will continue onto a subsequently elected species. The requirement is still deemed proper and is therefore made FINAL.
Claims 9-15 are directed to the non-elected invention. Accordingly, claims 9-15 are withdrawn from further consideration by the examiner, 37 C.F.R. §1.142(b), as being drawn to a non-elected invention. Claims 1-8 are examined in this Office action.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Demirors (US 2012/0172545).
PNG
media_image2.png
150
400
media_image2.png
Greyscale
Regarding claims 1-5, Demirors discloses an interpolymer, which comprises at least one siloxane group (para [0018]), wherein the interpolymer is prepared by polymerizing a mixture comprising ethylene and/or alpha-olefin [para [0018], [0035]-[0036], [0045]) and siloxane monomer of formula
wherein each R1-R8 is methyl, vinyl, hydrogen or hydroxyl, and n is zero (para [0030]-[0031]; read on the siloxane monomer), wherein the polymerization is performed in the presence of catalyst system comprising Group 3-10 metal complex (para [0043], [0060]), meeting the requirements of claims 1-5.
Regarding claim 6, Demirors discloses the inventive polysiloxane is crosslinked and/or chemically modified by grafting, for example by use of silane (para [0071]; read on coupling of one or more chains of the interpolymer).
Regarding claim 7, Demirors discloses at least one additive (para [0064]).
Regarding claim 8, Demirors discloses an article formed from the composition (para [0066]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Demirors as applied to claims 1, 4 above, and further in view of Zhou (US 2023/0099625).
Demirors includes the features of claims 1, 4 above.
Regarding claim 4, Demirors does not disclose the elected species 1-(hex-5-en-1-yl)-1,1,3,3- tetramethyldisiloxane.
However, Zhou discloses polysiloxane monomer 1-(hex-5-en-1-yl)-1,1,3,3- tetramethyldisiloxane and functionally equivalent vinylpentamethyldisiloxane useful for self-polymerization (para [0002], table 1, 3).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the 1-(hex-5-en-1-yl)-1,1,3,3- tetramethyldisiloxane of the claims in the composition of Demirors because Zhou teaches that the claimed 1-(hex-5-en-1-yl)-1,1,3,3- tetramethyldisiloxane and the vinylpentamethyldisiloxane of Demirors are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Conclusion
References OISHI MOTOI ET AL: "Synthesis and Characterization of Optically Active Hyperbranched poly(carbosiloxane),” MACROMOLECULES, vol. 35, no. 13, 1 June 2002 (2002-06-01), pages 4938-4945, JIN ZHEN ET AL: "Synthesis of a novel type of octyltetramethyldisiloxane-containing olefinic macromonomer and its copolymerization with ethylene," POLYMER, ELSEVIER SCIENCE PUBLISHERS B.V, GB, vol. 83, 8 December 2015 (2015-12-08), pages 20-26, TIAN BAOZHENG ET AL: "Synthesis of polyethylene-g-polydimethylsiloxane graft copolymers by copolymerization of ethylene with polydimethylsiloxane macromonomer," EUROPEAN POLYMER JOURNAL, PERGAMON PRESS LTD OXFORD, GB, vol. 118, 14 June 2019 (2019-06-14), pages 578-585, DATABASE WPI Week 201642 Thomson Scientific, London, GB;
AN 2016-00336L XP002804289, -& CN 105 175 595 A (UNIV ZHEJIANG) 23 December 2015 (2015-12-23), and Japan Scientific Rubber Co (JP 2503527) were cumulative in nature to the above rejection and thus not set forth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766