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 16-29 of E. Fritz-Langhals, US 18/032,823 (Oct. 20, 2020) are pending. Claims 22-29 drawn to the non-elected invention of Groups (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 16-21 are under examination on the merits and are rejected.
Election/Restrictions
Applicant elected Group (I), 16-21, without traverse in the Reply to Restriction Requirement filed on December 1, 2025. Claims 22-29, to non-elected invention of Group (II), are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction/election requirement is made FINAL.
Rejections 35 U.S.C. 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). A claim is indefinite when it contains words or phrases whose meaning is unclear. MPEP § 2173.05(e) (citing In re Packard, 751 F.3d 1307, 1314, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014)).
Improper Preferences
Independent claim 16-21 are rejected under 35 U.S.C. 112(b) as being indefinite for recitation of exemplary claim language “preferably” in claim 1. MPEP § 2173.05(d).
Claim 16 . . . wherein Ra independently at each occurrence represents a divalent hydrocarbon radical having 3 to 200 carbon atoms, preferably having 3 to 50 carbon atoms,
wherein the carbon atoms may be replaced by oxygen atoms or by siloxanyl radicals of formula -(RY2SiO)o-
wherein RY independently at each occurrence represents a C1- to C20-hydrocarbon radical, preferably a C1- to C6-hydrocarbon radical;
wherein o is an integer from 0 to 100, preferably an integer from 0 to 20;
This claim 16 recitations of “preferably”, in this context, improperly provide for preferences within the subject claim and thereby renders confusion over the intended claim scope. See, MPEP § 2173.05(d). Dependent claims 17-21 do not cure the issue of base claim 16.
The same issue is present in dependent claim 18.
Applicant should amend to remove all occurrences of improper preferences throughout the claims, including withdrawn claims. If such preferences are deemed necessary by Applicant, they should be set forth in new dependent claims.
Unclear Antecedent Basis “the carbon atoms”
Independent claim 16 (and its dependent claims 17-21) are rejected under 35 U.S.C. 112(b) as indefinite because independent claim 16 recites “the carbon atoms” and “individual carbon atoms” in the following context:
Claim 16 . . . wherein Ra independently at each occurrence represents a divalent hydrocarbon radical having 3 to 200 carbon atoms, preferably having 3 to 50 carbon atoms, wherein the carbon atoms may be replaced by oxygen atoms or by siloxanyl radicals of formula -(RY2SiO)o-
wherein X represents a halogen atom, an oxygen-bonded unsubstituted or substituted C1- to C40-hydrocarbon radical, wherein individual carbon atoms may be replaced by oxygen atoms, a radical of formula -O-Si(ORb)3 or a radical of formula -OSiRx3 . . .
and it is not clear which “carbon atoms” are referenced. The earlier recited “polymeric alkyl silicate” can have numerous occurrences of carbon atoms at different variables Here, it is not clear whether the above cited recitations refer back only to a specific carbon-containing variables or all carbon occurrences.
As discussed in the MPEP a lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. MPEP § 2173.05(e). Similarly, if two different levers are recited earlier in the claim, the recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. MPEP § 2173.05(e). A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. MPEP § 2173.05(e).
Dependent claims 17-21 do not cure the issue.
Unclear Transitional Phrase
Independent claim 16 (and its dependent claims 17-21) are rejected under 35 U.S.C. 112(b) as indefinite because the structure encompassed is unclear in view of the bolded terms below:
Claim 16 . . . A polymeric alkyl silicate, comprising: wherein the polymeric alkyl silicate is of formula (I) . . .
The transitional phrase “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. MPEP § 2111.03(I). Here, claim 16’s use of “comprising” indicates that formula (I) may include additional unrecited chemically bonded structure. However, in conflict with the meaning of “comprising” claim 1 further recites “wherein the polymeric alkyl silicate is of formula (I)”, which indicates that Applicant intends that formula (I) does not include unrecited chemically bonded structure; that is the structure of formula (I) is not necessarily complete. In view of the cited terms, it is unclear to one of skill whether claim 16 requires that only polymeric alkyl silicates that are of formula (I) infringe claim 16 or, alternatively, polymeric alkyl silicates need only comprise formula (I), as part of larger structure, to infringe claim 1.
Dependent claims 17-21 do not cure the issue.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
§ 112(d) Rejection of Claim 18
Claim 18 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends for the following reasons.
Base claim 16 defines Ra as follows:
16 . . . wherein Ra independently at each occurrence represents a divalent hydrocarbon radical having 3 to 200 carbon atoms, preferably having 3 to 50 carbon atoms, wherein the carbon atoms may be replaced by oxygen atoms or by siloxanyl radicals of formula -(RY2SiO)o- . . .
However, claim 18 lists the following alternatives for variable Ra, where the carbon atoms are -Me2Si-.
Claim 18 The polymeric alkyl silicate of claim 16, wherein the radical Ra is selected from radicals of the group consisting of . . .
-(Me2SiO)o-Me2Si-,
-CH2-CH2-CH2-(Me2SiO)o-Me2Si-CH2-CH2-CH2- and
-CH2-(Me2SiO)o-Me2Si-CH2-. . .
The group “-Me2Si-” is not (per claim 16) a “siloxanyl radicals of formula -(RY2SiO)o-” and the above three claim 18 Ra alternatives are not permitted by claim 16. As such, the scope of claim 18 falls outside the scope of claim 16. Claim 18 therefore fails to further limit the subject matter of claim 16 upon which it depends.
Subject Matter Free of the Art of Record
Claims 16-21 are free of the art of record.
The Claimed Invention
Claims 16-21 are directed to polymeric alkyl silicates of the formula (I). The specification teaches that the claimed polymeric alkyl silicates are prepared by reacting chlorosilanes (I) of the formula [(RbO)3SiO]2SiCl2 or (Rc3CO)2SiCl2 with dihydroxy compounds (2) of the formula HO-Ra-OH, or their salts. Specification at page 5, lines 14-27. The specification teaches that the hydrogen chloride formed by the reaction is removed by distillation or including a hydrogen-chloride-accepting base. Specification at page 7, lines 1-11. Specification working Examples 2 and 4 are representative and are summarized by the Examiner as follows:
Specification working Example 1 (page 10)
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Specification Working Example 4 (page 11)
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The closest art of record is Y. Abe et al., 43 Bulletin of the Chemical Society of Japan, 2495-2500 (1970). Abe teaches Abe teaches synthesis of polyalkyl(aryl)silicates by reaction of di-t-butoxydiaminosilane or bis(tri-t-butoxysiloxy)diaminosilane with diols to give silcon-containing polymers. Abe at page 2496, col. 2. Abe’s general reaction using bis(tri-t-butoxysiloxy)diaminosilane (where ammonia is evolved) is summarized by the Examiner below:
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Abe at page 2496, col. 2. The various R’ groups are shown in Abe Table 1. Abe at page 2497.
Abe’s polyalkyl(aryl)silicates differs from claim 16, formula (I) in that they do not meet the claim 16 limitation of:
Claim 16 . . . wherein X represents a halogen atom, an oxygen-bonded unsubstituted or substituted C1- to C40-hydrocarbon radical, wherein individual carbon atoms may be replaced by oxygen atoms, a radical of formula -O-Si(ORb)3 or a radical of formula -OSiRx3;
because in Abe’s polyalkyl(aryl)silicates, the undefined terminal ends are -NH2 groups.
Neither Abe nor Abe in view of secondary art motivates one of ordinary skill to make the specific structural modification of replacing Abe’s terminal NH2 groups with the instantly claimed halogen or oxygen group so as to arrive at a to arrive at an instantly claimed polymeric alkyl silicates. MPEP § 2143(E), Example 4; MPEP § 2143(B), Example 9; Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1292; 102 U.S.P.Q.2D 1729 (Fed. Cir. 2012).
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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