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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendment to claim 1. Claims 1-16 are pending.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwana (US 20160297933, US Patent Document 1 from IDS dated 5/31/2023).
Regarding Claims 1, 2, and 4,
Kuwana teaches polyorganosilsesquioxane containing composition (Abstract) in which the silsesquioxane is comprised of units of R1SiO3/2 and R1SiO(ORc) in amounts up to 100% by mole (Paragraph 12) in which R1 is an epoxy-containing group of one of the following structures:
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where the R1 groups are linear or branched alkyl chains (Paragraph 12) and Rc is a hydrogen atom or a 1 to 4 carbon chain (Paragraph 12). Kuwana also teaches that the ratio of the two units is 5 or greater (Paragraph 52), which is contained within the range of claim 4. Kuwana states that ratios greater than 5 indicate the structure of the silsesquioxane is an incomplete cage structure (Paragraph 64), which is noted by the applicant in the specification to be the structure of the desired silsesquioxane. While Kuwana is silent on the amount of this component contained in the overall mixture, the preparation method utilized by Kuwana (Examples 1-4, Paragraph 192) is broadly similar to that used in the instant application, differing primarily in the solvent chosen (acetone vs methyl isobutyl ketone, both listed in applicant’s specification). As such, given the similar reaction conditions, it would necessarily follow that the reactions would afford the same mixture of products and would thus meet the requirements of the instant claim. Kuwana states that silsesquioxanes meeting the requirements listed improve the heat and scratch resistance as well as the adhesiveness of the composition (Paragraph 74), affording the ordinarily skilled artisan prior to the effective filing date of the instant application motivation to pursue these compounds for use in siloxane compositions for hard coatings and adhesives.
With regard to the ratio between the T9 and T10 type structures, Kuwana is silent. However, in examples 1-4 (Table 1), Kuwana teaches silsesquioxane compound mixtures that meet the applicant’s requirements for T3/T2 ratio and 5% weight loss temperature and additionally are synthesized under broadly similar conditions using identical components in similar amounts to those of the instant application. It would logically follow that on this basis the compound mixture that is obtained would be similar to the mixture obtained using the procedure of the instant application. As a result, Kuwana would have obtained a T9/T10 ratio that would meet the requirement of the instant claim.
Regarding Claim 3,
Kuwana teaches that the proportion of the two subunits R1SiO3/2 and R1SiO(ORc) constitute 55 to 100% by mole of the silsesquioxane (Paragraph 36), meeting the requirements of the instant claim.
Regarding Claims 5 and 6,
Kuwana teaches that the number average molecular weight of the silsesquioxane is from 1000 to 3000 and the polydispersity index (PDI) is between 1 and 3 (Paragraph 13). These ranges are contained within the ranges of the instant claims.
Regarding Claim 7,
Kuwana teaches that the silsesquioxane has a 5% weight loss temperature that is 330 °C or higher (Paragraph 84), meeting the requirement of the instant claim.
Regarding Claim 8,
Kuwana teaches that the silsesquioxane is used as part of a curable composition (Paragraph 107).
Regarding Claims 9 and 10,
Kuwana teaches that the composition may include a curing catalyst (Paragraph 18) and that the catalyst may be a cationic photoinitiator (Paragraph 19) or a cationic thermal initiator (Paragraph 20).
Regarding Claim 11,
Kuwana teaches that the composition may be used as a hard coat layer (Paragraph 26, 154).
Regarding Claim 12,
Kuwana teaches that the composition may be used as an adhesive (Paragraph 24).
Regarding Claim 13,
Kuwana teaches that the composition may be used to make a cured product (Paragraph 25, 107).
Regarding Claim 14,
Kuwana teaches that the composition may be used as a hard coat layer that is disposed on at least one side of a substrate (Paragraph 154) and may partially or entirely cover that side (Paragraph 156) and that the composition is cured (Paragraph 154). This reads upon a laminated material.
Regarding Claims 15 and 16,
Kuwana teaches that the composition may be used to give an adhesive sheet (Paragraph 180) which can be applied to a substrate (Paragraph 181) and may be used to generate a laminate which includes three or more layers (Paragraph 185).
Response to Arguments
Applicant's arguments filed 11/7/2025 have been fully considered but they are not persuasive for the following reasons.
On page 8, the applicant states that Kuwana is using a different method to that of the instant application. However, the method as outlined in the applicant’s specification does not appear to have any significant differences from the one taught by Kuwana. The reaction temperature as taught by Kuwana (preferred to be 45-80 °C, Paragraph 103) is nearly identical to that of the instant application (40-70 °C), with a high degree of overlap in solvent selection, particularly noting tetrahydrofuran, acetone, and methyl isobutyl ketone (Paragraph 97) in an amount of 400% relative to the silanes (Table 1, examples 1-3, 5), but particularly the use of 5% aqueous solution of potassium carbonate and water in amounts of 2 to 4 moles per mole of silane (Table 1, examples 1-5). Additionally, Kuwana utilizes identical silanes to those of the instant application in broadly similar amounts and utilizes reaction times that fall within the range stated in the instant application. Finally, while the applicant notes that Kuwana uses acetone, the examiner notes that acetone is indeed included in the list of preferred solvents in the applicant’s specification (Page 22, Paragraph 82, lines 30-34).
Also on page 8, the applicant states that Kuwana uses acetone in the working examples which would result in low amounts of T9. The examiner points out that example 2 of Kuwana uses dioxane, but further that applicant’s own examples 10 and 12 use acetone as solvent and achieve the required attributes. While the applicant states that it would be difficult to achieve the ratio claimed based upon the teachings of Kuwana, this does not appear to be the case. Indeed, the conditions used in example 10 presented by the applicant are nearly identical to those of example 3 from Kuwana, including the reaction temperature, solvent amount, and particularly the amount of water used. The examiner also notes that based upon the applicant’s supplied examples, the amount of water used in the reaction appears to have a correlation to the whether the material will meet the T9/T10 requirement and that examples 1 and 3-6 in Table 1 of Kuwana all utilize a 73.7% by weight amount of water, which is nearly identical to that of nearly all of the examples provided by the applicant which meet the requirements of the instant claims (73.2). As such, while Kuwana may not have noted the T9/T10 ratio explicitly, the reaction conditions used by Kuwana are broadly similar to those of the instant application and would therefore likely afford a similar mixture of products. And on the basis of the listed examples of Kuwana nearly all using an amount of water that would achieve a T9/T10 ratio above based upon the correlation of water content to the T9/T10 ratio, the ordinarily skilled artisan would likely have obtained the applicant’s result simply by repeating the conditions of one of the above listed examples from Kuwana.
In summary, while the applicant argues that Kuwana does not disclose the T9/T10 ratio and that the method of synthesis is different, the method used by Kuwana does in fact appear to be nearly identical to that of the instant application and further, Kuwana discloses an example in which the conditions are nearly identical to one of the exemplary examples of the instant application that meets the requirements as laid out by the applicant. As a result, the rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765