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 .
The amendment dated 02/06/2026 has been considered and entered. The amendment incorporates the previously indicated allowable subject matter of claim 5 into claims 1 – 11, which overcomes the previous rejections. The products of claims 12 – 15, and the newly added claims 16 and 17 are rejected as reciting the claimed products and as necessitated by the amendment.
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 12 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (EP 2 343 341 A1)
In regards to claims 16, 17, Nakamura teaches polyorganosiloxane composition which can be cured and containing a polyorganosiloxane having at least one end modified by a silanol group, titanium alkoxide and a-hydroxycarbonyl compound and a cured product of the polyorganosiloxane composition (abstract). The titanium alkoxide is titanium tetraethoxide, tetraisopropoxide, tetrabutoxide [0013]. The composition which comprises the polyorganosiloxane, titanium alkoxide and a-hydroxycarbonyl compound has a molecular weight of 8000 or more [0014]. The silanol-terminated polyorganosiloxane has a chemical formula 1 and a viscosity at 23℃ of from 10 to 100,000 mPas [0026, 0027]. Thus, the viscosity at 25℃ would be expected to be similar and overlap the claimed range. Nakamura teaches method of preparing a product of the mixture of the three ingredients with stirring and heating and the product is poured into a petri dish (i.e., collection of the product) for curing, and the step of curing the product [0046 – 0048]. Nakamura teaches reaction product of the ingredients and thus appears to provide reaction of the first and second ingredients together.
Nakamura does not particularly recite the step of stirring under vacuum as claimed. However, Nakamura teaches the reaction can be an open or closed atmosphere but when open it is preferably performed by the presence of inert gases such as nitrogen or argon. Reactions in a protective atmosphere such as by pulling vacuum or using inert gases are known in view of RU 21195343 C1 by Dzhejms et al. Thus, at least in view of Dzhejms, the use of vacuum in the place of inert gas in the reaction process of Nakamura would be obvious in order to provide a protective atmosphere to prevent contamination of the reaction.
The claims are to products prepared by a process. Nakamura teaches the curable silicone elastomer product as claimed, and thus the process limitation does not carry patentable weight, or is at least provided as Nakamura teaches the claimed product.
Allowable Subject Matter
Claims 1 – 11 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Nakamura et al. (EP 2 343 341 A1) does not particularly recite the step of using a vacuum to remove at least 50% of alcohol by-products according to claim 5. Since the reaction of Nakamura requires an additional ingredient that is not present in the claims, it is unclear that the product in claim 10 would be present. Nakamura teaches cured compositions. However, prior to curing there is no evidence that the composition is a condensation curable elastomer composition as claimed.
Response to Arguments
Applicant's arguments have been fully considered but they are moot over the rejections of the newly added claims 16, 17.
Conclusion
THIS ACTION IS MADE FINAL. 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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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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