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 .
DETAILED ACTION
Claims 15-34 of N. Wienkenhöver, et al., US 18/032,211 (04/17/2023) are pending. Claims 18-24 and 26-34 are withdrawn as drawn to non-elected Groups (II)-(VIII). Claims 15-17 and 25 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the Restriction/Election Requirement, Applicant elected Group (I) (claims 15-17 and 25), with traverse, in the Reply filed on 03/04/2026. Claims 18-24 and 26-34 drawn to non-elected Groups (II)-(VIII) are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Applicant’s Traversal
Applicant traverses the Restriction Requirement on the ground that JPH06192426A cannot meet the amended claims 15 and 26. See page 9-11 of the Remarks filed on 03/04/2026.
This argument has been fully considered but not persuasive. As mentioned in the previous Office action that there is no shared technique feature between Group (I)-(IV) and groups (V)-(VIII) because both the alkoxy-rich partial hydrolyzate of silanes- silane mixtures and the aminosilanes in Group (V) are species of the alkoxy-rich partial hydrolyzate of silanes- silane mixtures and the aminosilanes in Group (I) respectively, genus and species do not share the same subject matter. Groups (I)-(IV) require the common technical feature of claim 15, while the amended claim 15 cannot be met by JPH06192426A, however, as detail discussed in 103 rejection below that Edelmann (US20030072873A1) teaches a process meeting each and every limitation of the instant claim 15. Therefore, the Restriction/Election Requirement and is made as Final.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record
of what applicant intends to claim. See, MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning
is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look
to how the claim term is used in the prior art, which includes prior art patents, published
applications, trade publications, and dictionaries. MPEP § 2111.01 (III).
Interpretation of the Claim Term “equilibrating”
The instant claim 15 recites the term of “equilibrating” in the follows context:
15. A process for preparing aminosiloxanes, comprising:
in a first step, . . . .;
in a second step, equilibrating the alkoxy-rich partial hydrolyzate of silanes and silane mixtures with one or more aminosilanes. . . .
The specification does not provide definition for the claimed term “equilibrating”. The specification has the follows discussion about the claimed process:
In the process, the hydrolysis of the silanes (condensation reaction) and the amine incorporation via the aminosilanes are separated from each other. The silanes are first converted to partial hydrolyzates by hydrolysis. . . .
The amino functionalities are incorporated by base-catalyzed equilibration between the partial hydrolyzates and a monomeric
aminoalkoxysilane. . . .
Specification at page 2, line 31 to page 3, line 6-8.
Therefore, consist with the specification, the term of “equilibrating” is broadly and reasonably interpreted as an equilibration reaction of incorporation of an amine group onto the partial hydrolyzates.
Interpretation of the Claim Language of “without substantially changing the average degree of condensation”
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. MPEP § 2111.04 (citing In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005). In the instant case, recitation of the language of
Claim 15 . . . without substantially changing the average degree of condensation. . .
does not change any the claimed active steps in the claimed process. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Herein, the citation of “without substantially changing the average degree of condensation” is not a require step , but rather simply expresses the intended result of a process step positively recited, therefore, is not given weight for patentability.
Claim Rejections - 35 USC § 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Claim 15-17 and 25 are rejected under 35 U.S.C. 112(b) as indefinite because:
claim 15 recites of “the reaction is carried out without the addition of water to avoid the formation of gels or solids”; and
claim 25 recites of “the reaction is carried out for so long that the composition no longer changes under the reaction conditions”.
Given there are two steps reactions in claim 15, there is insufficient antecedent basis for this limitation of “the reaction” in the above mentioned claims.
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.
Claims 15-17 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over R. Edelmann, et al, US20030072873A1 (2003)(“Edelmann”).
R. Edelmann, et al, US20030072873A1 (2003)(“Edelmann”)
Edelmann teaches a mixture of aminoalkyl-, alkoxy-, and, optionally, alkyl-, and, optionally, hydroxy-functional siloxanes. Edelmann at page 1, right col. [0012], line 1-3.
Edelmann teaches that the mixture can be used for formulations, coating and articles. Edelmann at page 1, left col. [0002].
Edelmann teaches a process for preparing of the mixture by subjecting:
(I). at least one tetraalkoxysilane or at least one hydrocarbon-alkoxysilane or a mixture of at least one tetraalkoxysilane and at least one hydrocarbon-alkoxysilane to partial hydrolysis and precondensation by addition of water and acid, thereafter
(II). adding at least one aminoalkyl-functional alkoxysilane to the resulting siloxane reaction mixture, with aminoalkylsilanes being condensed onto the siloxane units present in the reaction mixture and substantially enveloping them so that the aminoalkyl groups are oriented outward, and subsequently
(III) removing the alcohol from the system.
Edelmann at page 1, right col. [0013], emphasis added. Also see claim 18 of Edelmann.
The Edelmann method comprise the follows two steps:
(I). partial hydrolysis of at least one of tetraalkoxysilane or at least one hydrocarbon-alkoxysilane or a mixture of at least one tetraalkoxysilane and at least one hydrocarbon-alkoxysilane; and
(II). Adding aminoalkyl-functional alkoxysilane to the reaction product mixture and condensation of aminoalkyl-functional group onto the siloxane formed in step 1.
Which meets the two steps requirement of claim 15.
]
Edelmann teaches examples of hydrocarbon-alkoxysilane such as phenyltrimethoxysilane; which is emphasize by the Edelmann claim 4. Edelmann at page 2, right col. [0031] and claim 4. It needs to noted that phenyltrimethoxysilane is the silanes used for preparing of partial hydrolysate in the working Example 2.3 in the instant specification. Specification at page 11, Example 2.3.
Edelmann teaches examples of aminoalkyl-functional alkoxysilane such as 3-aminopropyltrimethoxysilane. Edelmann at page 2, right col. [0033] , line 10. 3-aminopropyltrimethoxysilane maps the formula IIIa as: R3a is aminopropyl and R4 is methyl. It needs to noted that 3-aminopropyltrimethoxysilane is the aminosilane used for equilibration of partial hydrolysate in the working Examples 16-17 in the instant specification. Specification at page 14, Table 1, example 16-17 and page 8 for AS2.
Edelmann teaches that:
For the hydrolysis and precondensation it is appropriate to use concentrated or aqueous hydrogen chloride solution, preferably 37% strength hydrochloric acid.
Edelmann at page 3, left col. [0038], line 1-3.
Per Working example, Edelmann teaches that the condensation between aminoalkyl-functional alkoxysilane and the partial hydrolysate is conducted in the presence a base (pH is 11). See Edelmann Example 1 at page 3, [0047].
Difference between Edelmann and the claims 15-17 and 25
Edelmann differs from claim 15 in that
(i).Edelmann does not specify the structure of product of step (I) is has the structure elected from the claimed formula I-II, and
(ii). Edelmann does not specify aminosiloxanes formed in step (II) is a liquid at room temperature .
Obvious Rationales of the Claims
Claim 15 is obvious because one ordinary skill seeking a mixture of aminoalkyl-, alkoxy-, -functional siloxanes for formulations/coating/articles is motivated to prepare the mixture by:
(i).partial hydrolysis of phenyltrimethoxysilane with concentrated hydrogen chloride in water, which is substantially the same process as that of preparation of partial hydrolysate (Resin A2) in the working Example 2.3, the same process would form a product has the same structure1; and
(ii). adding an aminoalkyl-functional alkoxysilane such as 3-aminopropyltrimethoxsilane to the partial hydrolysate and the 3-aminopropyl group is incorporated onto the product of the above step (resin A2) to form aminosiloxanes. Regarding the physical forms of the formed aminosiloxanes, the proposed step 2 utilize the same partial hydrolyzates (resin A2) and the same aminoalkyl-functional alkoxysilane (3-aminopropyltrimethoxsilane, AS2) as those of Example 16-17 in the specification, the same starting materials would form the same aminosiloxanes1.
The second step of the proposed method is conducted without addition of water, thus, the proposed process meets each and every limitation of claim 15, therefore, claim 15 is obvious. One ordinary skill is motivated to do so with a reasonable expectation of success because Edelmann teaches that the mixture can be prepared from phenyltrimethoxysilane and 3-aminopropyltrimethoxsilane through the two-step process.
Claim 16-17 are obvious because phenyltrimethoxysilane is used in the proposed method, therefore the R1 in the hydrolysis product is phenyl and R2 in the hydrolysis product is methyl.
Claim 25 is obvious because one ordinary skill is motivated to conduct reaction of the second step long time enough to make the mixture no longer changes under the reaction condition.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art.