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 .
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 1-13 and 16-25 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 1 recites the limitation "the carbonate compound" in lines 2-3 of the 2nd to last paragraph. There is insufficient antecedent basis for this limitation in the claim. Accordingly, dependent claims 2-13 and 16-25 are indefinite.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 23-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiiro et al. (US 6,407,193)
Regarding claims 23-24: Hiiro et al. (US ‘193) discloses siloxane copolymers [abstract], wherein Example 7 [Ex. 7; 14:29-47; Table 1, Ex. 7] prepares a polymer as in Example 1 [Ex. 1; 12:50-13:25] by reacting bisphenol A, diphenyl carbonate and dimethoxydimethylsilane in the presence of dibutyltin diacetate to afford a polymer having a Si content of 2.0 wt% and a Mw of 58,000 (corresponding to instant formula (1-1); J1 = K1 = 0; R1 = R2 = CH3; R3-R10 = H; X = -C(CH3)2-; [Ex. 7; 14:29-47; Table 1, Ex. 7]. Hiiro et al. (US ‘193) discloses molding the copolymer into a desired shape [10:43-46], wherein the resulting article has desired properties, such as transparency [10:60-65].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
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.
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.
Claim(s) 21-22 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiiro et al. (US 6,407,193)
Regarding claims 21-22: Hiiro et al. (US ‘193) discloses siloxane copolymers [abstract], wherein Example 7 [Ex. 7; 14:29-47; Table 1, Ex. 7] prepares a polymer as in Example 1 [Ex. 1; 12:50-13:25] by reacting bisphenol A, diphenyl carbonate and dimethoxydimethylsilane in the presence of dibutyltin diacetate to afford a polymer having a Si content of 2.0 wt% and a Mw of 58,000 (corresponding to instant formula (1-1); J1 = K1 = 0; R1 = R2 = CH3; R3-R10 = H; X = -C(CH3)2-; [Ex. 7; 14:29-47; Table 1, Ex. 7]. Hiiro et al. (US ‘193) discloses the siloxane copolymer can be blended with other resins, such as polycarbonates [10:47-65].
Hiiro et al. (US ‘193) does not specifically disclose the siloxane copolymer of Ex. 7 blended with a polycarbonate. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared a blend containing polycarbonate based on the invention of Hiiro et al. (US ‘193), and would have been motivated to do so since Hiiro et al. (US ‘193) discloses the siloxane copolymer can be blended with other resins, such as polycarbonates [10:47-65]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claim 25: Hiiro et al. (US ‘193) discloses molding the copolymer into a desired shape [10:43-46], wherein the resulting article has desired properties, such as transparency [10:60-65].
While Hiiro et al. (US ‘193) does not specifically disclose an optical lens, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02; 2144.07].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12 of U.S. Patent No. 12,240,978. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprising a polysiloxane having structural units of formulas (1-1)’ – (1-4)’, a polycarbonate and having a total amount of 0.1-20 mass% Si of U.S. Patent No. 12,240,978 substantially overlaps in scope with the instant claimed composition comprising a polysiloxane having structural units of instant formulas (1-1) – (1-4), a polycarbonate and having a total amount of 0.1-20 mass% Si. While U.S. Patent No. 12,240,978 claims the polysiloxane has a Mw of 5,000 to 300,000, in the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Claims 1-10, 15-16 and 21-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,240,978 in view of Ito (US 6,476,249). The method of producing a polysiloxane compound having structural units of formulas (1-1)’ – (1-4)’, and removing an alcohol by-product of U.S. Patent No. 12,240,978 substantially overlaps in scope with the instant claimed method of producing a polysiloxane having structural units of instant formulas (1-1) – (1-4). U.S. Patent No. 12,240,978 does not employ a transesterification catalysts including a phosphorous compound. However, Ito (US ‘249) discloses polymers prepared from an aromatic dihydroxy compound and an organosiloxane (ex. dimethoxydimethylsilane [7:27-28; 24:49-64; Ex. 3]) in the presence of a quaternary phosphonium salt catalyst [abstract], wherein the catalyst is of general formula (I) [8:21-53] including tetraphenylphosphonium tetraphenylborate [8:53-9:4]. Ito (US ‘249) discloses employing 10-8 to 10-2 mols of catalysts, per mol of aromatic dihydroxy compound [13:15-31]. U.S. Patent No. 12,240,978 and Ito (US ‘249) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of siloxane polymers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a quaternary phosphonium salt catalyst of general formula (I) (ex. tetraphenylphosphonium tetraphenylborate) in an amount of 10-8 to 10-2 mols of catalyst, per mol of aromatic dihydroxy compound, as taught by Ito (US ‘249) in the invention of U.S. Patent No. 12,240,978, and would have been motivated to do so since Ito (US ‘249) suggests quaternary phosphonium salt catalyst affords a polymer having reduced cyclic oligomer content, reduced monomer content and reduced terminal hydroxyl content [abstract].
While U.S. Patent No. 12,240,978 claims the polysiloxane has a Mw of 10,000 to 300,000, in the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Claims 21-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4 of copending Application No. 18/979894 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the composition comprising a polysiloxane having structural units of formulas (1-2) – (1-4), a polycarbonate and having a total amount of 0.1-20 mass% Si of Application No. 18/979894 substantially overlaps in scope with the instant claimed composition comprising a polysiloxane having structural units of instant formulas (1-2) – (1-4), a polycarbonate and having a total amount of 0.1-20 mass% Si. While Application No. 18/979894 claims the polysiloxane has a Mw of 5,000 to 300,000, in the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 3/2/26 have been fully considered but they are not persuasive. The rejection of claims based upon Hiiro et al. (US 6,407,193) is maintained.
Hiiro et al. (US 6,407,193) was relied on for disclosing siloxane copolymers [abstract], wherein Example 7 [Ex. 7; 14:29-47; Table 1, Ex. 7] prepares a polymer as in Example 1 [Ex. 1; 12:50-13:25] by reacting bisphenol A, diphenyl carbonate and dimethoxydimethylsilane in the presence of dibutyltin diacetate to afford a polymer having a Si content of 2.0 wt% and a Mw of 58,000 (corresponding to instant formula (1-1); J1 = K1 = 0; R1 = R2 = CH3; R3-R10 = H; X = -C(CH3)2-; [Ex. 7; 14:29-47; Table 1, Ex. 7]. Hiiro et al. (US ‘193) discloses molding the copolymer into a desired shape [10:43-46], wherein the resulting article has desired properties, such as transparency [10:60-65]. Hiiro et al. (US ‘193) discloses the siloxane copolymer can be blended with other resins, such as polycarbonates [10:47-65].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding “interbonded by interfusion” to limit structure of the claimed composite and noting that terms such as “welded,” “intermixed,” “ground in place,” “press fitted,” and “etched” are capable of construction as structural limitations.) [see MPEP 2113].
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be “essentially free of alkali metal.” The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not “essentially free of alkali metal” and therefore a different and unobvious product.) [see MPEP 2113].
The nonstatutory double patenting rejections based upon U.S. Patent No. 12,240,978, U.S. Patent No. 12,240,978 in view of Ito (US 6,476,249), and Application No. 18/979894 are maintained {see above}. U.S. Patent No. 12,240,978 claims removing an alcohol by-product (see 35 U.S.C. 112(b) above), and the polysiloxane has a Mw of 10,000 to 300,000. Application No. 18/979894 claims the polysiloxane has a Mw of 5,000 to 300,000.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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