DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/18/26 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. 6,388,005 in view of JP 05-339511 (English translation attached).
As was noted in the previous office actions, Morita et al. teach silicone rubber particles formed from polyesters having at least two alkenyl groups, the particle size of which overlaps with that claimed. Column 2, lines 29-36, teaches an organic compound having at least two aliphatic unsaturated bonds reacted with a silicon containing organic compound having at least two SiH atoms. The organic compound can be a polyester (column 5, line 12), the resulting particles can be rubber (column 7, line 38), and preferably has a spherical shape within a diameter range of .1 to 50 micron (column 7, lines 55 to 65). The difference between amended claim 1 and that in Morita et al., as applicants are aware, is the fact that Morita et al. do not specifically each a polycaprolactone polyester.
The JP reference teaches crosslinked siloxanes formed by the reaction between
a polylactone having at least one alkenyl group and a siloxane having at least one SiH group. While the entire teachings in this reference are relevant, the Examiner draws specific attention to teachings such as the polycaprolactone having two terminal aliphat-ic unsaturated bonds (Chemical formula 3 on the bottom of page 4), the siloxane having more than 2 SiH bonds (Chemical formula 5) and the teaching that the resulting product can be a network or three dimensional structure (which will require that at least one of the SiH or the polylactone has 3 reactive groups).
The copolymers in the JP reference impart improvements to organic resins such as polyurethane, coatings and epoxy resins as found in paragraphs 7 and 12, including benefits such as oil resistance, heat and water resistance. Note that particles in Morita et al. are useful as additives in organic resins (column 8, line 62).
As such one having ordinary skill in the art would have been motivated to include a polylactone, specifically a polycaprolactone, as the organic compound in Morita et al. used to form a silicone copolymer particle in an effort to take advantage of the known benefits and properties of such an organic compound in the silicone particle.
Since the benefits of having polycaprolactone crosslinks in a silicone rubber are known, as per the JP reference, this combination renders obvious claim 1.
For claim 6, note that both Morita et al. and the JP reference teach a structure. See for instance Morita, the SiH siloxane in column 13, Example 4, and JP Chemical formula 5.
Applicants’ remarks have been considered. The new rejection includes the JP reference which does specifically render obvious the polycaprolactone reactant. The instant claims do not exclude the presence of an oil such that this argument carries no weight. Finally the particles in Morita et al. can, in fact, be isolated as individual particles as evidenced by the fact that the individual particle size can be determined. See for instance column 10, lines 55 to 60.
The remaining reference cited in the attached PTO-892 is cited as being of general interest. This reference does not qualify as prior art but contains relevant teachings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
3/25/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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