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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/4/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 T9 component contained in the overall mixture, the preparation method utilized by Kuwana is broadly similar to that used in the instant application with Kuwana teaching the use of solvents such as tetrahydrofuran, methyl isobutyl ketone (MIBK) and isopropyl alcohol (IPA) (Paragraph 97), potassium carbonate catalyst (Paragraph 99, Examples 1-6, Table 1), and a most preferable reaction temperature of 45 to 80 °C for 1.5 to 8 hours (Paragraph 103). 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 and amount of the T9 structure, 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 and amount of T9 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 5/4/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 8 and 9, the applicant argues that Kuwana exemplifies solvents (acetone and dioxane) as well as reaction temperature (50 °C) and times (4 hours) that differ from those preferred by the applicant (MIBK, THF, 60 °C, and 5 hours respectively) and that these differences result in an unexpected increase in the amount of the T9 structure. While the examiner does not disagree that differing reaction conditions can result in different outcomes, the examiner disagrees that the increase in the amount of the T9 structure is unexpected. While Kuwana does not exemplify the use of the applicant’s preferred solvents, Kuwana explicitly lists both tetrahydrofuran and methyl isobutyl ketone as solvents for the hydrolysis/condensation and notably also states that the solvent used is preferably an ether or ketone (Paragraph 97), further directing the ordinarily skilled artisan towards these types of solvents. Further, Kuwana teaches preferred reaction temperatures between 45 and 80 °C, as noted in the rejection, and similarly prefers reaction times of 1.5 to 8 hours. While Kuwana does not exemplify these options, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures "including unpreferred embodiments" must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Additionally, based upon the examples provided by the applicant, the increase in the amount of the T9 structure appears to be more correlated with the use of methyl isobutyl ketone as the solvent and not to a specific reaction temperature (Examples 1-3 and 11 from applicant’s Table 1). The examiner also notes that in spite of the fact that solvent appears to be correlated with the applicant’s unexpected result, it does not appear to be a limitation of the claims and additionally that a correlation between the amount of T9 generated and the solvent used would lead an ordinarily skilled artisan to conclude that the outcome necessarily follows the solvent choice and would therefore be the expected result on this basis.
On pages 10 and 11, the applicant argues that the increase in the levels of T9 results in a nonobvious improvement in hardness and flexibility of the cured composition. The examiner disagrees. First, neither the hardness nor the flexibility appear as limitations in the claims and would thus not be required to be present in the prior art. However, Kuwana demonstrates a composition where the silsesquioxane component is generated in acetone (Example 1, Table 1) which is used in several compositions (Examples 9 and 16, Table 2) in which the pencil hardness and scratch resistance (9H and very good respectively) match the results the applicant points to (Examples 1-3 of Table 1). Further, the applicant’s own examples 10 and 12 (also using acetone as solvent) of Table 1 show a similar 9H pencil hardness result. While Kuwana’s T9 content is not disclosed, the applicant’s data indicates that neither example reaches the 15.6% requirement and yet show an identical hardness to examples 1-3. These results would appear to indicate that no significant improvement to at least the pencil hardness has occurred. Additionally, Kuwana teaches that the ratio of the monomer units that comprise the T9 compound do have an effect on surface hardness and notes a preferred ratio of these components in order to achieve improved hardness (Paragraph 52), thus giving one of ordinary skill in the art knowledge related to the correlation between surface hardness and the monomer content of the silsesquioxane components.
In summation, the applicant has not sufficiently demonstrated that the increase in T9 content is not a function of the solvent choice nor that this increase is tied to any particular property of the cured composition that has been listed as a limitation of the claims. As a result, the rejection is maintained.
Conclusion
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
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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