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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is 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.
There is no antecedent basis support in claim 1 for the recitation of “the hydrosilylation reaction inhibitors (E)” in claim 4. This is easily remedied by replacing the article “the” in that phrase with “an”.
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 1-7 and 9-13are rejected under 35 U.S.C. 103 as being unpatentable over Boardman et al., U.S. Patent Application Publication No. 2007/0092736 in view of Lee et al., U.S. Patent # 4,874,667 and Fujiki et al., U.S. Patent # 6,040,361.
Boardman teaches hydrosilylation-curable organopolysiloxane-based encapsulating compositions according to the abstract, [0009], and Example 1, and, relevant to claims 10 and 11, LEDs encapsulated therein. Whereas the abstract discloses organosiloxane polymers bearing both silicon-bound hydrogen atoms and alkenyl substituents, [0009] and Example 1 teach as an alternative a blend of a polyorganosiloxane bearing alkenyl groups combined with an organohydrogensiloxane crosslinking agent. The Exemplifications of the aforementioned vinyl-substituted base polymer and crosslinker in Example 1 satisfy the structural attributes of these components set forth in claims 2 and 3. As for the limitation in claim 4 defining the mol quantity of SiH groups contributed by the crosslinking agent to Si-Vi groups in the base polymer (A), paragraph [0035] contemplates a nearly fully coincident range.
Example 1 does not mention the incorporation of an inhibitor (though they are disclosed in [0048]) and therefore is technically anticipatory of the second limitation recited in claim 4. The fact no inhibitor was added suggests to one of ordinary skill that the composition summarized therein is used soon after its formulation. Indeed, one of ordinary skill is familiar with the concept that hydrosilylation-curable organopolysiloxane compositions, but particularly those conventionally cured with heating, that are assembled as a single mixture (commonly labeled as one-part compositions) are susceptible to premature curing that renders it inoperable for its intended use. Indeed, Lee states in column 1, lines 41-43 that, even in those instances where an inhibitor is included in a hydrosilylation-curable composition, its stability may only span a few hours. Furthermore, Fujiki says that, even in those instances where the inhibiting capabilities of the inhibitor are more robust, and thus enabling the skilled artisan to package the one part composition for extended storage/commercial sale, there is a compromise that must be struck between adequate pot/storage life and rate of cure when it becomes desirable to crosslink the composition. As a solution, Fujiki advocates instead encapsulating the (heat-activated) platinum hydrosilylation catalyst, in a thermoplastic material with a softening point in approximately the same range set forth in claim 1. See the abstract and the paragraph bridging columns 5 and 6.
In light of these teachings from Lee and Fujiki, it is the position of the Office that one of ordinary skill in the art is motivated to use some means of inhibiting cure when hydrosilylation-curable catalysts are used. Fujiki motivates the skilled artisan to choose encapsulated platinum catalysts in lieu of using catalyst/inhibitor combinations because they afford the practitioner excellent storage/pot stability while not impeding cure when in use.
As for claims 7 and 9, [0008] of Boardman contemplates both carrying out the curing operations separately promoted by the UV- and heat-activated catalysts sequentially and concurrently in the alternative.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Neither Boardman nor the several other references cited in Applicants’ Specification and/or in an IDS that were directed to hydrosilylation-curable silicone compositions containing both heat- and light-activated platinum catalysts contemplated a step wherein a photomask overlay was used to promote selective curing of the composition only in those areas on which the radiation was incident.
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February 27, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765