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
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 1/20/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 1/20/2026. In particular, claim 1 has been amended to limit the molar ratio of aliphatic unsaturated bonds in the silylated acetylene inhibitor to the platinum group metals in the catalyst to 500 to 2,000. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 4,032,502).
With respect to claims 1, 5, and 6, Lee discloses organopolysiloxane composition comprising a vinyl-endblocked polydiorganosiloxane copolymer containing dimethylsiloxane units and methyl-3,3,3-trifluoropropysiloxane units (claimed (A)), a curing agent comprising dimethylhydrogensilooxane (claimed (B)), a platinum-containing catalyst (claimed (C)), and an inhibitor for the platinum-containing catalyst including acetylenic siloxanes (claimed (D)) (abstract). Lee teaches that 0.75-3.0 silicon-bonded hydrogen atoms for every silicon-bonded vinyl group in the composition (col. 5, lines 60-63), which overlaps claimed molar amount of 0.1-10 moles of silicon atom-bonded hydrogen atoms relative to 1 mole of total aliphatic unsaturated bonds. Example 2 includes 100 parts by weight of a copolymer containing vinyldimethylsiloxane endgroups and methyl-3,3,3-trifluoropropylsiloxane, 0.82 parts by weight of {H(CH3)2SiO}4Si, 0.82 parts by weight of H(CH3)2SiO{SiO(CH3)-(CH2CH2CF3)}3Si(CH3)2H, 0.25 parts by weight platinum-containing catalyst (15 ppm platinum in the composition), and 0.04 parts by weight of platinum catalyst inhibitor including
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having inhibitor/platinum molar ratio of 17 (col. 14, lines 24-39; Table II, first inhibitor).
Example 2 provides for a molar ratio of aliphatic unsaturated bonds in the inhibitor to the platinum group metals in the catalyst of 34 (17x2 = 34) which does not overlap with claimed range of 500-2,000.
However, Lee also teaches that the amount of catalyst inhibitor to be used in the composition is simply the amount needed to produce a proper standard pot life but not yet extend the standard cure time and that the amount will vary widely, depending on the particular inhibitor and platinum-containing catalyst as well as the nature of the curing agent (claimed (B)) (col. 9, lines 56-65). Lee discloses an amount of inhibitor ranging from at least 1 to “500 and more” moles inhibitor for every mole of platinum (col. 10, lines 3-15).
Given that Lee teaches that the relative amount of inhibitor (and therefore the amount of aliphatic unsaturated bonds in claimed (D)) is readily determined by one of ordinary skill in the art and which is determined by the selection of curing agent, platinum group metal-based catalyst, and silylated acetylene inhibitor and further given that Lee discloses that the molar ratio can be “500 and more,” it would have been obvious to one of ordinary skill in the art to obtain a curable fluorisilicone composition comprising 500-2,000 moles aliphatic unsaturated bonds per 1 mole platinum in the platinum group-metal based catalyst.
With respect to claim 2, Lee teaches that the vinyl-endblocked polydiorganosiloxane copolymer has structure
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, where R’ is methyl and 3,3,3-trifluoropropyl (col. 3, lines 8-22) which is linear.
With respect to claims 3 and 4, Example 2 includes equal parts by weight of {H(CH3)2SiO}4Si (branched) and H(CH3)2SiO{SiO(CH3)-(CH2CH2CF3)}3Si(CH3)2H, both reading on the claimed mixture comprising hydrogen atoms capped molecular terminals.
Response to Arguments
Applicant's arguments filed 1/20/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Lee does not disclose a molar ratio of aliphatic unsaturated bonds in the inhibitor to the platinum group metals in the catalyst to overlap with claimed 500-2,000.
While Example 2 provides for a molar ratio of aliphatic unsaturated bonds in the inhibitor to the platinum group metals in the catalyst of 34 (17x2 = 34) which does not overlap with claimed range of 100-2,000, However, case law holds that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Specifically, Lee also teaches that the amount of catalyst inhibitor to be used in the composition is simply the amount needed to produce a proper standard pot life but not yet extend the standard cure time and that the amount will vary widely, depending on the particular inhibitor and platinum-containing catalyst as well as the nature of the curing agent (claimed (B)) (col. 9, lines 56-65). Lee discloses an amount of inhibitor ranging from at least 1 to “500 and more” moles inhibitor for every mole of platinum (col. 10, lines 3-15). Given that Lee teaches that the relative amount of inhibitor (and therefore the amount of aliphatic unsaturated bonds in claimed (D)) is readily determined by one of ordinary skill in the art and which is determined by the selection of curing agent, platinum group metal-based catalyst, and silylated acetylene inhibitor and further given that Lee discloses that the molar ratio can be “500 and more,” it would have been obvious to one of ordinary skill in the art to obtain a curable fluorisilicone composition comprising 500-2,000 moles aliphatic unsaturated bonds per 1 mole platinum in the platinum group-metal based catalyst.
Applicant also argues that Lee fails to reasonably expect that higher molar ratios of aliphatic unsaturated bonds in the inhibitor to the platinum group metals in the catalyst provides extended storage stability and effective on-demand curing.
To the contrary, it is the examiner’s position that Lee clearly suggests the higher molar ratio provides for increased pot life given that the purpose of the silylated acetylene inhibitor is to extend the pot life while maintaining standard cure time. Specifically, Lee teaches that the amount of catalyst inhibitor to be used in the composition is simply the amount needed to produce a proper standard pot life but not yet extend the standard cure time and that the amount will vary widely, depending on the particular inhibitor and platinum-containing catalyst as well as the nature of the curing agent (claimed (B)) (col. 9, lines 56-65). Also, Table III in column 15 shows how standard pot life is directly related to the molar ratio. Therefore, one of ordinary skill in the art would have been able to adjust the molar ratio of aliphatic unsaturated bonds in the inhibitor to the platinum group metals in the catalyst at the direction of Lee to obtain the desired pot life (i.e., storage stability) and on-demand curing.
Lastly, Applicant argues that the data of the specification as originally filed establishes that utilizing a molar ratio of aliphatic unsaturated bonds in the inhibitor to the platinum group metals in the catalyst of 500 and greater provides for unexpected results regarding storage stability (ratio of viscosity after 24 hours to initial viscosity).
The data has been fully considered, however, it is insufficient to establish unexpected results for two reasons. First, the data appears to be expected because greater amounts of inhibitor would be expected to give decreases differences in viscosity (i.e., storage stability). Second, criticality has not been shown for the claimed molar ratio range of 500-2,000 because molar ratio of 384 (from Example 3) has the same ratio of viscosity after 24 hours to initial viscosity as ratio 771 (Example 2), i.e., 1.13.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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