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 .
Response to Amendment
Applicant’s claim amendments and remarks filed January 28, 2026 are entered and have
been fully considered. Applicant has amended claims 3 and 5 to overcome the 112b issues, therefore they are withdrawn.
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.
Claims 17-29 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.
Claim 17 is unclear because it defines an oxysilane compound as being a diaryloxysilane that is any of a dialkyldiaryloxysilane, a diaryldiaryloxysilane, and a monoalkylmonoaryldiaryloxysilane in the first few lines which is at odds with the specification, in ¶[0064] it clearly defines oxysilane as including both diaryloxysilane and dialkoxysilane. The claim has been amended to separately add the dialkoxysilane in the polymerization, which is separated from the diaryloxysilanes by a semicolon; but further down in the claim, where Xa and Xb are defined, it states they can only be alkyl groups. Therefore the Xa and Xb definition does not include the aryl groups on the silane defined as the “oxysilane” compound in the first few lines of the claim, which is what is stated to have reacted with the diol to form unit A, not the dialkoxysilane compound. This is a broad limitation followed by a narrower limitation in the same claim, because only the dialkyldiaryloxysilane would be the “oxysilane” to satisfy Xa and Xb groups. Therefore the metes and bounds of the claim are indefinite.
Claims 18-29 are rejected due to their dependency on claim 17 and fail to correct the issue.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6-8, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Webb et al, US5041514.
Regarding claims 1 and 7, Webb teaches polymeric reaction products of formula (4), Col. 5 line 65, which are formed from a biphenol of formula (5) and a difunctional organosilicon compound, Col. 6 lines 1-12. In formula (5), the phenyl portion can be selected as a compound with a single aromatic ring, Col. 6 line 35, such as hydroquinone, which is used in example 22, Col. 10 lines 35-37. Webb teaches that the tetramethylbiphenol of example 4 is replaced with hydroquinone for example 22, which reads on the structure of claims 1 and 7 where Ra-Rd are hydrogen and Xa and Xb are methyl because in example 4 the silazane has methyl groups.
Webb does not explicitly state the number n of Si-O groups formed in example 4, but states that n for formula (5) is an integer of 1 to 4, Col. 7 line 32, where n=1, the polymer reads on claim 1.
Regarding claim 6, Webb tests the polymers by themselves, without blending them, see table 5 Col. 10 lines 61-68 where example 22 is tested.
Regarding claim 8, Webb teaches the molecular weight is in the range of 5,000-1,000,000 g/mol, Col. 3 lines 65-68, which encompasses the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be prima facie obvious. Where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 14, Webb teaches the resin is useful for injection moldable thermoplastic, see abstract. The resins are for flame retardant self-extinguishing films, Col. 1 lines 11-15.
Claims 1, 7-9, 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer et al US20180009986A1.
Regarding claims 1 and 7, Meyer teaches a molding composition comprising a polysiloxane -polycarbonate block copolymer of the formula (1) below ¶[0021].
Where R1 is preferably hydrogen, R2 and R3 are preferably methyl ¶¶[0023-0024], this reads on the methyl groups Xa and Xb of claims 1 and 7. Where n=1 and m=1 ¶¶[0026-0027], and p=0, ¶[0028] the polysiloxane portion reads on the structure of claim 1 where applicant’s m=1. Furthermore, Meyer lists hydroquinone as a suitable diphenol of formula (2) which is used for forming the polysiloxane-polycarbonate structure, ¶¶[0053, 0058].
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The fact that Meyer discloses numerous types of diols which can be suitably selected to form a polysiloxane-polycarbonate does not render any particular combination of aromatic diol and siloxane less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
That being said, while Meyer states the number of repeat siloxane units can be 1 at a minimum, it is clear from the examples that the number of siloxane repeat units is preferably higher. But because of the way claim 1 is written, where the resin merely comprises the unit (A), the unit (A) is still found within the polysiloxane-polycarbonate of Meyer. There is no limit in the claim as to what appears on either side of the unit, which means there can be multiple siloxane units, and still read on the claim as written. If the claim language was amended to, for instance, beamended to have the process language of claim 17 inserted into claim 1 so that it assumes the form of a product-by-process, then it would overcome Meyer.
Regarding claim 8, Meyer teaches that the weight average molecular weight of the polysiloxane-polycarbonate resin of formula (1) is 26,000 to 40,000 g/mol, which overlaps with the claimed range ¶[0083]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be prima facie obvious. Where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 9, Meyer teaches adding other components to the resin such as UV stabilizers ¶[0100]. The UV stabilizer is added in a preferable amount of 0.1-0.5 wt.% ¶[0034], and a preferred UV stabilizer is Tinuvin 329 which has a molecular weight of 323.43 g/mol, which satisfies the limitations. Applicant does not define what is meant by a low molecular weight compound, therefore the broadest reasonable interpretation is any low molecular weight compound added to the resin.
Regarding claim 13, Meyer teaches that the molding composition further comprises 0-40 wt.% of a co-polycarbonate that does not contain polysiloxane units, and is preferably a homo- polycarbonate based on bisphenol A, ¶¶[0038, 0137-0140].
Regarding claim 14, Meyer teaches making molded bodies with the resin composition by at least extrusion or injection molding that include sheets, films, and windows, ¶¶[0154-0156, 0162-0163, 0165].
Regarding claims 15 and 16, Meyer teaches the polysiloxane-polycarbonate resin composition is suitable for spectacles ¶[0165], which are an example of optical lenses. Meyer also explains the importance of injection-compression-molding processes for optical plastic products, ¶[0164].
Allowable Subject Matter
Claims 2-5, 10-12 are 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.
Claims 17-29 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claims 2, 4-5, 10-11, 20-21, 25-26, and 29 are allowable for reasons given in the previous office action. Claim 3 now depends from claim 2, therefore it also contains allowable subject matter. Neither Webb nor Meyer satisfy claim 12; Meyer does not test the resins via TGA or similar test for weight reduction, Meyer only tests for flammability, and with the additional components that Meyer utilizes in the resin, it is not obvious or inherent that the resins would have the claimed weight reduction. Webb tests the resins by burning a sample and records the remaining weight as char yield, which is a percentage of polymer residue, and table 5 shows the char yield for example 22 which has the hydroquinone. The char yield is 38 wt.% and 26 wt.% in air versus 10% nitrogen, both of which means the weight reduction is greater than 50 wt.%, and therefore does not read on the claim.
Regarding claims 17-29, the amended claim requires both a diaryloxysilane and a dialkoxysilane, which the cited prior art does not suggest combining. Dunnavant only uses one silane monomer for each polymer, Webb exemplifies dimethyl dimethoxysilane and dimethyldichlorosilane, Meyer does not specify the use of silanes.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant’s arguments, see pages 2-4, filed January 26, 2026, with respect to the §102 rejections over Dunnavant have been fully considered and are persuasive. The §102 rejection of 9/30/2025 has been withdrawn.
Dunnavant focuses on polyaryloxydiphenylsiloxanes that contain phenyl groups coming off of the silicon atom. Dunnavant does exemplify a diol which would be from hydroquinone in table IV, and is reacted with monomer I, silane type A, the dianilino type with phenyl groups, but does not react the hydroquinone with the monomer type II or V, which are the silanes with methyl groups in place of the phenyl groups, as shown in the table I monomers. The only time the monomers II and V are used is for the polymers of table V, where they are reacted with biphenol, which no longer reads on the claim where m=1. Furthermore, Dunnavant favors the polymers with biphenol and phenyl groups on the silicon atoms, there would be no motivation to combine the hydroquinone with the monomers of type II and V, therefore the rejection over Dunnavant is withdrawn, and the rejections further in view of Vincent and/or Hiiro are withdrawn.
Applicant's arguments filed January 26, 2026 regarding the §103 rejections over Meyer and over Webb have been fully considered but they are not persuasive.
Regarding applicant’s argument of unexpected results, middle of page 19 of remarks, the assertion that it is unexpected for example 1-1, where m=1, to have better fluidity is not persuasive. This result is not unexpected compared to example 2, because it is well known in the art that having multiple phenyl rings connected in a row within a polymer increases rigidity, therefore having a polymer chain where there is a single phenyl group between the O-Si-O linkages would be less rigid and have better fluidity (lower Tg). Applicant compares example 1-1 to the comparative example 2 with BPA, and example 1-1 does produce better heat resistance, but when compared to example 2 with BP where m=2, the example 2 has better heat resistance than example 1-1 and the comparative examples. This is shown in Table 7 where example 2 retained 96% of its weight at 500°C, and example 1-1 retained 87%, comp. 2 retained 80%. Examiner notes that example 2 with biphenol was originally an inventive example, and now applicant uses it as a comparative example in remarks, because it is now excluded by claim 1 where m=1. Applicant references the flame retardancy of example 1-1, but examiner could not find evidence of these results in the instant specification. The only LOI result is in table 2 for example 1-4, and the comparative examples are commercial polycarbonates, therefore an analysis of example 1-1 flame retardancy to the comparative examples 1 and 2 is not possible.
Furthermore, the data is not commensurate in scope with the claims. The data uses specific diols and silanes whereas the claims include a broader range of possible aromatic diols and silanes. If Applicant intends to argue there is criticality which gives an unexpected result in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art; the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant' s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Regarding applicant’s argument that Webb does not disclose or suggest the R1 groups that read on the Xa and Xb groups of claim 1, examiner points to Col. 2 line 46 where Webb specifically mentions methyl and other alkyl groups, which reads on the claimed Xa and Xb of both claims 1 and 7, furthermore Col. 3 line 10 shows dimethyldimethoxysilane as a specific example of an organosilane, which would produce the methyl Xa and Xb groups on the Si atom in the finished product.
In response to applicant’s argument that Webb does not teach the claimed structure where m=1, and that only one structure matches the claimed m=1, examiner reminds applicant that a reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989). Webbs’ primary invention does pertain to the poly(siloxytetraalkylbiphenyleneoxide), but also separately teaches polymeric reaction products that are different from the formula (1), see Col. 5 line 57 where Webb states it is in addition to formula (1). Then Webb specifically teaches using hydroquinone for forming a polymer, shown in example 22, and is also shown in the claims, see claim 5. Applicant even states in the remarks that the claimed unit A could be formed from hydroquinone, which Webb teaches using. It is also evident that Webb considers hydroquinone a biphenol because it is shown in Col. 6 as a possible unit for R2 of formula (5) and Webb clearly calls the formula a biphenol in lines 2 and 13. Therefore the §103 rejection over Webb is maintained.
In response to applicant’s argument that Meyer does not teach the unit A where m=1, examiner points to ¶[0028] of Meyer which states p is 0 or 1, preferably 0, in the formula (1) of Meyer, which means that there would only be one aryl group next to the siloxane group in the resin. Furthermore, Meyer exemplifies hydroquinone as a diphenol to use for forming the polycarbonate block, ¶[0058]. The fact that Meyer discloses numerous types of diols which can be suitably selected to form a polysiloxane-polycarbonate does not render any particular combination of aromatic diol and siloxane less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Therefore the §103 rejection over Meyer 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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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