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 .
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) 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 claims 20-21: Inoue et al. (US ‘617) discloses alkenyloxy silane of general formula (I) [2:5-16; 3:46-4:6] with R1 as phenyl or vinyl [2:43-57; 3:46-59]. Inoue et al. (US ‘617) discloses vinyltri(cyclopentenyloxy)silane [3:67-68]. Additionally, Inoue et al. (US ‘617) discloses phenyltri(cyclopentenyloxy)silane. If one of ordinary skill in the art is able to “at once envisage” the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be “at once envisaged.” One may look to the preferred embodiments to determine which compounds can be anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962) [see MPEP 2131.02].
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].
Note phenyltri(cyclopentenyloxy)silane:
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[2:5-16; 3:46-4:6].
Regarding claims 22-27: Inoue et al. (US ‘617) discloses the alkenyloxy silane compounds of general formula (I) [2:5-16] (ex. phenyltri(cyclopentenyloxy)silane) 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. phenyltri(cyclopentenyloxy)silane; with ketone = cyclopentanone and halosilane = phenyl 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, 7 and 11-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-18 of copending Application No. 18/274175 (reference application) (now allowed). 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].
While Application No. 18/274175 does not specifically claim 110-500 parts by weight filler in claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 110-500 parts by weight inorganic fillers selected from calcium carbonate, fumed silica, precipitated silica, and carbon black based on the invention of Application No. 18/274175, and would have been motivated to do so since Application No. 18/274175 claims 0.1-1000 parts by weight of inorganic fillers [claim 5], selected from calcium carbonate, fumed silica, precipitated silica, and carbon black [claim 6]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06]. 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.
Allowable Subject Matter
Claims 4, 6 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Application No. 18/274175 does not claim the composition of claim 4 with sufficient specificity; does not claim the catalyst of claim 6; does not claim the composition of claim 8. Kimura et al. (US 5,939,487) does not disclose 110-500 parts filler selected from calcium carbonate, fumed silica, precipitated silica, and carbon black.
Response to Arguments
Applicant’s arguments with respect to claim(s) 6/12/26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Inoue et al. (US 4,695,617) was relied on for disclosing alkenyloxy silane of general formula (I) [2:5-16; 3:46-4:6] with R1 as phenyl or vinyl [2:43-57; 3:46-59]. Inoue et al. (US ‘617) discloses vinyltri(cyclopentenyloxy)silane [3:67-68]. Additionally, Inoue et al. (US ‘617) discloses phenyltri(cyclopentenyloxy)silane. If one of ordinary skill in the art is able to “at once envisage” the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be “at once envisaged.” One may look to the preferred embodiments to determine which compounds can be anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962) [see MPEP 2131.02].
The provisional nonstatutory double patenting rejection over Application No. 18/274175 (now allowed) is maintained (see above)
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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