DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 16 to 30 are 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.
In claim 16 it is unclear what is intended with “alternatively with a pure acid”
since it is unclear what is intended by “alternatively”. Does this mean in an alternative to the aqueous solution of acid, or in an alternative reaction step, or something different?
In claim 20, it is unclear what is intended by the language “at least 40 units… based in each case on the total number of units of the general formula (I). Since claim 16 refers to the unit amount in percentages, the Examiner questions if this was intended to be a percentage limitation. On the other hand, the language 40 units… based on the total number of units does not appear to make sense. Also it is unclear if this has some sort of additional limitation requirement on the total number of units in the entire silicone resin, such as requiring at least 40 units of formula (I) in the entire resin.
Additionally it is unclear from this language if this allows for units having an a value other than 1, as long as there are at least 40 units in which a is 0.
In claim 21, it is unclear if this is actually a required step. Note that this claim refers to an amount “that would be needed… at the moment of addition”. This makes it unclear what weight the claim carries if there is no need for the base (B). For instance, one can make the argument that the residual acid can already have been removed or the siloxane resin already neutralized in some way such that “at the moment of addition” there is no acid content and thus no need for any base (B) to be added. This applies to claims 24 and 26 as well.
Similarly in claim 28, it is unclear what weight to give this claim if there is no R2OH present in the reaction mixture after step (R3). Note, for instance, that other steps can occur in this process that are not specified in the claim.
In claim 29, reference to “chlorosilane compound (A2)” lacks antecedent basis.
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 16 to 30 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann et al. 6,069,220.
Hoffmann et al. teach a method of making silicone resins in which a silane that
corresponds to claimed general formula (II) is mixed with an aqueous solution of an acid (for instance HCl having a pKa of around -6.3) or with a halosilane that meets the silane of general formula (III). A subsequent step occurs in which water is further added.
To this point please see the alkoxysilane monomer in column 1, line 55, the chlorosilane monomer in column 3, line 25, the use of HCl in water in an amount of greater than 5 wt% in column 2, line 42 through column 3, line 16, and the secondary step including water in column 4, lines 31 to 48.
In general note the teachings regarding the first and second step (column 2, line 36 to column 3, line 23.
With this in mind, attention is directed to the working examples, specifically Example No. 12, which includes the superscript 8). This prepares a silicone resin from MTES, meeting the claimed reactant of general formula (II), and resulting in the claimed R1Si units, and octyltrichlorosilane, meeting the claimed reactant of general formula (III), and resulting the claimed R3Si units. This shows process having at least two steps and resulting in an alkoxy (ethoxy) content of 12.8.
The totality of that noted above differs from that claimed process only in that the resin does not having at least 40 % of the units having a c value of 1. Rather this shows a smaller amount.
Please see the teachings in column 3, lines 25 to 35 which teaches the addition of the chlorosilane that results in this unit. While this teaches .5 to 20 wt% of the chloro-silane added to the reaction, note that this is referred to as a preferred amount. This is not a specifically limiting amount. See also the teachings in column 3, lines 46 to 49, which refers to adding the chlorosilane in an effort to add different functionalities depending on the desired end product and/or its later use.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.
As such one having ordinary skill in the art would have found it obvious to use a greater amount of the chlorosilane having an R3 group as claimed, such as the octyl trichlorosilane found in Example 12, in an effort to product a useful silicone resin that requires such groups in a known and improved process as pe the teachings of Hoffmann et al.
Applicants appear to be using a known method to make a known or obvious silicon resin in a known and predictable manner. This renders claim 15 obvious.
For claims 17 to 19, note that these limitations are addressed in the rejection rationale supra.
For claim 20, as noted supra it is unclear what is intended by this claim (see the 112 rejection supra) but please note that formula (I) allows for alkoxysilanes that having an a value of 0 and, as noted supra, the chlorosilanes such as the octyltrichlorosilane has a c value of 1.
For claim 21, as noted supra, it is unclear what is intended by this claim but note that final silicone resin can be washed with water (column 4, line 51) such that this will remove residual acid an no base needs to be added “at the moment”.
For claims 22 and 24 to 29, since the step in claim 21 appears to be optional, these claims that further limit claim 21 do not appear to carry any applicable patentable weight.
For claim 23, please note that alcohol will be removed during the process steps referred to in column 4, as these temperatures will necessarily remove the alcohol in the process.
For claim 30, again see Example 12 which meets this requirement.
Conclusion
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
12/13/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765