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 .
Status of Claims
The examiner acknowledges the amendments to claims 1 and 2. Claims 1-6 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Togashi (US 5,017,654) as applied to claims 1 and 5-6 above and in further view of Fukui (US 20180065347, US Patent Application #1 from IDS dated 12/15/2023).
Regarding Claims 1 and 2,
Togashi teaches organosiloxane compositions that are curable using encapsulated hydrosilylation catalyst (Abstract) in which the composition contains an alkenyl-substituted organosiloxane that contains at least 2 silicon-bonded alkenyl groups (Column 3, Lines 21-26) and where an exemplified alkyl substituent of the organosiloxane is 3,3,3-trifluoropropyl (Column 3, Lines 26-33), which meets the requirement of a fluorinated substituent with 3 to 12 carbons of the instant claim. Togashi also teaches that this siloxane can be straight chained or branched (Column 3, Lines 36-38). The composition further includes an organosiloxane with at least two silicon-bonded hydrogen atoms (Column 3, Lines 48-51) and where the alkyl substituents are the same as those exemplified for the alkenyl-substituted organosiloxane (Column 3, Lines 51-53) and is used in a molar ratio of Si-H to Si-alkenyl bonds of 0.5 to 10 (Column 3 Line 66 to Column 4 Line 1), a hydrosilylation catalyst, which is preferred to be a platinum complex (Column 4, Lines 7-24) that is encapsulated with a thermoplastic resin such as poly(methyl methacrylate) (Column 4, Lines 31-34), and a hydrosilylation reaction inhibitor (Column 5, Lines 27-31). Togashi further teaches that the amount of catalyst is preferably 0.00005 to 0.01 parts by weight relative to the alkenyl-containing organosiloxane (Column 5, Lines 5-17; col. 8, lines 30-41, Example 3 – microencapsulated platinum catalyst with PMMA taught), but is typically 0.005 parts by weight (Column 5, Lines 17-19), meeting the requirement of the instant claim. Finally, Togashi teaches that the ratio of the inhibitor to the catalyst metal is from approximately 12 to 59 by mole (calculated based upon the amount of catalyst in Column 5, Lines 10-17 and the amount of inhibitor in Column 6 Line 67 to Column 7 Line 2), falling within the range of the instant claim.
While Togashi teaches the use of an alkenyl-substituted organosiloxane, Togashi is silent on the location of the alkenyl groups. Fukui teaches a fluoroalkyl-containing curable siloxane composition in which the alkenyl groups of the alkenyl-functionalized organosiloxane are preferably located at the terminals of the molecular chain (Paragraph 61) and enumerates several examples of these compounds (Paragraph 66). One of ordinary skill in the art would recognize that the compositions of Fukui and Togashi are both comprised of fluoroalkyl containing organosiloxanes that are cured using platinum-based catalysts and would be motivated to place the reactive alkenyl group at the terminus of the polymer chain to improve reactivity by reducing steric hindrance of this group. As such, it would have been obvious prior to the effective filing date of the instant application to have used the teachings of Fukui to place the alkenyl group at the terminus of the organosiloxane in the composition of Togashi to obtain the predictable outcome of a curable fluorinated organosiloxane composition with a reasonable expectation of success.
With regard to the endcapping groups other than those containing vinyl groups being trimethylsilyl groups, Fukui teaches the use of trimethylsilyl endcapped siloxanes along with the use of vinyl-terminated siloxanes (Paragraph 66). Because Fukui teaches that mixtures of this component can be used (Paragraph 55) as well as teaching the use of branched siloxanes (Paragraph 50), it would have been obvious prior to the effective filing date of the instant application to have combined these elements together. See MPEP 2144.04.V.B.
Regarding Claims 3-4,
Togashi teaches the use of hydrogen-functionalized organosiloxanes, including mixtures as well as linear and branched types (Column 3, Lines 56-60), but is silent on the location of the Si-H bonds. Fukui teaches the use of double-terminated dimethyl hydrogensilyl organosiloxanes which include trifluoro propyl groups (Paragraph 80), which are siloxanes with Si-H bonds at the termini of the polymer, meeting the requirements of claim 3. Further, Fukui teaches that mixtures of Si-H bond containing polymers may be used (Paragraph 80) and additionally that the polymers may contain T and Q units (Paragraph 79), which would lead to branched polymers. Fukui also teaches the use of linear polymers of this type (Paragraph 79). Because Togashi teaches that this compound type is used as a crosslinker (Column 3, Lines 45-48), one of ordinary skill in the art would recognize that branching would allow for additional Si-H bonds that would lead to increased crosslinking density. This increase in crosslinking density would alter the properties of the cured composition, and the ordinarily skilled artisan would naturally adjust the amount in order to achieve the desired material properties. Placement of these Si-H bonds at the termini of the polymer would be recognized as useful to the ordinarily skilled artisan as the decreased steric bulk at the terminal position would result in increased availability for the hydrosilylation reaction. As such, it would have been obvious prior to the effective filing date of the instant application to have combined the teachings of Fukui to place the Si-H bonds at the terminal portion of the polymer with the organosiloxane composition of Togashi to obtain the predictable result of a curable fluorine-containing siloxane composition with a reasonable expectation of success.
Regarding Claims 5 and 6,
Togashi teaches the use of silylated acetylene compounds as inhibitors which includes the following structure (See Col. 12, lines 15-30):
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which meets the requirements of the first structure of claim 6 where R1 is equal to hydrogen and methyl, b=0, and R3 is equal to methyl and further is identical to the compound used in Example 1 of the applicant’s specification.
Response to Arguments
Applicant's arguments filed 2/4/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 4 and 5, the applicant states that claim 1 is no longer a 102(a)(1) rejection due to the inclusion of limitations from claim 2. This is addressed in the new grounds of rejection above. Also on page 5, the applicant states that there would be no motivation to combine Togashi and Fukui and points to Fukui’s silence on storage stability and the use of encapsulated catalysts and hydrosilylation inhibitors. The examiner disagrees. On the point of hydrosilylation inhibitors, Fukui does indeed point to their use (Paragraphs 93-95) and expressly points to acetylene containing compounds. Further, while Fukui does not speak to the use of encapsulated catalysts, Fukui does state that the reaction catalyst is not limited so long as it can promote a hydrosilylation reaction (Paragraph 86). As the use of such encapsulated catalysts is found in the art, it would logically follow that Fukui does not teach away from their use and thus such a catalyst could be incorporated. The ordinarily skilled artisan would also recognize that both Togashi and Fukui are directed towards compositions that contain fluoroalkyl-containing silanes and additionally that both Togashi (Abstract) and Fukui (Paragraph 10) aim to create such compositions that exhibit high curing rates and that both are directed at use cases in electronic devices (Togashi Column 1, Lines 16-22 and Fukui Paragraph 1). As such, one of ordinary skill in the art would see these references as being for similar use cases and using similar components and would be motivated to take advantageous aspects of each to improve upon their compositions.
On pages 6-7, the applicant argues about the teaching of branched siloxanes. The examiner points to both Togashi (Column 3, Lines 36-38) and Fukui (Paragraph 50) as teaching the use of branched siloxanes. While the applicant argues that Fukui prefers to use straight chain siloxanes, the totality of the teachings of both references mention the use of branched siloxanes, and as such, it would have been obvious to use them regardless of the preferences stated.
Finally, on page 7 the applicant argues that Togashi uses the silylated inhibitor is optional and that there is no teaching or suggestion of the synergistic effect of using it in combination with the encapsulated catalyst. The examiner notes that Togashi states that hydrosilylation inhibitors are “the essential component for accelerating or promoting the curing rate” (Column 5, Lines 28-32) and specifically points to silylated version. The fact that Fukui only speaks to such components as optional is not relevant since the rejection is based upon the teachings of the combination of the references, and since Fukui discloses them as optional, this makes their use when combining Togashi, who explicitly employs them, and Fukui obvious, as Togashi clearly states their purpose in the composition. Further, the examiner notes that the nonobviousness cannot be shown by attacking references individually. See MPEP 2145.IV. With respect to the unexpected increase in pot life, because Togashi teaches the use of both the encapsulated catalyst and the silylated inhibitor together, this argument is not persuasive as the combination of these two components is taught by Togashi and simply observing that this combination extends pot life is not sufficient to render the composition patentably new. See MPEP 2112.I.
In summation, the applicant’s arguments are not found to be persuasive and the rejection stands.
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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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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