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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 1: room temperature will be interpreted as (23 oC±15 oC) [see instant specification [0001].
Claim 6: strong base will be interpreted as triethylamine, hexylamine, tetramethylguanidine, γ-tetramethylguanidylpropyltrimethoxysilane and salts thereof [see instant specification [0051].
Claim Objections
Claim 1 is objected to because of the following informalities: the extra text [Chem. 1]. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: the extra text [Chem. 2]. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: the extra text [Chem. 3]. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: the extra text [Chem. 4]. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 24-25 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8: It is unclear if the text within the parentheses (with exclusion of guanidyl group) is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parenthesis further limits the claim.
Claims 24-25 recites the limitation "the catalytic substance" in line 2. There is insufficient antecedent basis for this limitation in the claim. The catalytic substance will be interpreted as the catalyst.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kimura et al. (US 5,939,487) when taken with Silanol Terminated Polydimethylsiloxane 5,000 cSt Data Sheet.
Regarding claims 1 and 4-10: Kimura et al. (US ‘487) discloses room temperature curable organopolysiloxane compositions [abstract] containing vinyltri(cyclopentenoxy)silane and vinyltri(isopropenoxy)silane as component (B) [2:45-4:15]. Kimura et al. (US ‘487) discloses Example 5 [Ex. 5; 8:10-25] contains 100 parts dimethylpolysiloxane terminated with hydroxyl groups [2:10-43] having a viscosity of 5,000 cSt (4,900 mPa·s; via density of 0.980 g/ml {ν=μ/ρ}; and a molecular weight of 49,000 g/mol (corresponding to a ~ 661)), 25 parts calcium carbonate, 25 parts talc (3 µm average diameter), 8.0 parts vinyltri(cyclopentenoxy)silane {vinyl(cyclopentenoxy)silane exchanged for vinyltri(isopropenoxy)silane as component (B) [see MPEP 2131.02]}, 1.0 part tetramethylguanidinopropyltrimethoxysilane, and 1.0 part γ-aminopropyltriethoxysilane [Ex. 5; 8:10-25].
Note vinyltri(cyclopentenoxy)silane:
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[3:18-38; 3:56-58].
Silanol Terminated Polydimethylsiloxane 5,000 cSt Data Sheet provides evidence for 5,000 cSt silanol terminated polydimethylsiloxane having a density of 0.980 g/cm3 and a molecular weight of 49,000 g/mol [§Physical Properties].
Regarding claims 2-3: Kimura et al. (US ‘487) discloses vinyltri(cyclopentenoxy)silane [3:56-58].
The claimed effects and physical properties, i.e. desorbs cyclopentanone by hydrolysis [instant claim 2-3], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claims 11-12: Kimura et al. (US ‘487) discloses curing the composition [Ex. 5; 8:10-25], wherein the cured product can be an engine oil seal [5:38-47].
Regarding claims 13-15: Kimura et al. (US ‘487) discloses curing the composition [Ex. 5; 8:10-25], wherein the cured product produces a rubber like elastic material [5:35-37].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claims 16 and 18-19: Kimura et al. (US ‘487) discloses the composition is useful as a FIPG (formed in place gasket) material [5:25-47].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claim 17: Kimura et al. (US ‘487) discloses the composition is useful as a FIPG (formed in place gasket) material in assembly of engines and as an oil-sealing material [5:25-47].
Claim(s) 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kimura et al. (US 5,939,487).
Regarding claim 20: Kimura et al. (US ‘487) discloses vinyltri(cyclopentenoxy)silane [3:18-38; 3:56-58].
Note vinyltri(cyclopentenoxy)silane:
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[3:18-38; 3:56-58].
Regarding claim 21: Kimura et al. (US ‘487) discloses vinyltri(cyclopentenoxy)silane [3:56-58].
The claimed effects and physical properties, i.e. desorbs cyclopentanone by hydrolysis [instant claim 21], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 20-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inoue et al. (US 4,695,617).
Regarding claim 20: Inoue et al. (US ‘617) discloses vinyltri(cyclopentenyloxy)silane [4:67-68].
Note vinyltri(cyclopentenyloxy)silane:
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[4:67-68].
Regarding claim 21: Inoue et al. (US ‘617) discloses vinyltri(cyclopentenyloxy)silane [4:67-68].
The claimed effects and physical properties, i.e. desorbs cyclopentanone by hydrolysis [instant claim 21], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claims 22-27: Inoue et al. (US ‘617) discloses the alkenyloxy silane compounds of general formula (I) [2:5-16] (ex. vinyltri(cyclopentenyloxy)silane [4:67-68]) are prepared by a dehydrohalogenation reaction of a ketone and a halosilane in the presence of an amine (ex. triethyl amine) [4:1-6; 6:19-49]. Inoue et al. (US ‘617) discloses reacting 6.47 mol ketone (376.0 g; via acetone = 58.08 g/mol) and 1.00 mol halosilane (211.6 g; via phenyl trichlorosilane = 211.55 g/mol) in the presence of 4 mol triethyl amine (404.0 g; 101.19 g/mol) and 13.13 mmol copper(I) chloride (1.3 g; 99.00 g/mol) to afford the alkenyloxy silane product (ex. vinyltri(cyclopentenyloxy)silane; with ketone = cyclopentanone and halosilane = vinyl trichlorosilane) {corresponding 2.16 mol cyclopentanone per mol Cl atoms in trichlorosilane; 0.13 mol Cu(I)Cl per mol trichlorosilane; 1.33 mol triethyl amine per mol Cl atoms in trichlorosilane} [6:19-49].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5 and 9-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/274175 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the room temperature curable organopolysiloxane composition containing an organopolysiloxane of general formula (1) and hydrolysable silane of general formula (4) substantially overlap in scope with the instant claimed room temperature curable organopolysiloxane composition. While Application No. 18/274175 does not specifically claim general formula (1) having n as 50 or more, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Applicant's attention is drawn to MPEP § 804 where it is disclosed that "the specification can always be used as a dictionary to learn the meaning of a term in a patent claim." In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). 25. Application No. 18/274175 claims an organopolysiloxane of general formula (1). The organopolysiloxane of general formula (1) is defined in the specification as having a viscosity of 20 to 1,000,000 mPa·s at 23 oC [0015-0016].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767