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 .
DETAILED ACTION
Claim Objections
Claim 1 is objected to because “selected from … and …” as found in the claim (see for example twice in the preamble) is not a proper Markush group or conventional alternative limitation. See MPEP 2173.05(h). Appropriate correction is required.
Claim 1 is objected to because “R3 and R4 are such that each occurrence of R3 is hydrogen and R4 is methyl” should read “R3 is hydrogen and R4 is methyl”. Appropriate correction is required.
Claims 2 and 9 are objected to because “(by total weight of the silicone formulation)” should read “by total weight of the silicone formulation”. Appropriate correction is required.
Claim 10 is suggested to provide testing condition instead of setting forth “using the method as defined in the detailed description”. 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 1-12 and 15-19 are 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 pre-AIA the applicant regards as the invention.
Claims 1, 3, 5 and 16-17 are rejected as being vague and indefinite when these claims recite “R14 is a bivalent C2-C8 alkyl such that -N=CR14 is a cycloalkyl”, because the recitation cause confusion. The “-N=CR14” is apparently not a cycloalkyl group, and “R14 is a bivalent C2-C8 alkyl” does not render “-N=CR14” being a cycloalkyl group. In this office action, it is taken that R14 is a bivalent C2-C8 alkyl group, thus “-N=CR14” is a group having R14 being a bivalent C2-C8 alkyl group. Claims 2, 4, 6-12, 15 and 18-19 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
Claim 2 is rejected as being vague and indefinite when these claims recite "the catalyst preferably is an organometal catalyst which is present in an amount of 0.01-10 wt.%”, because it is not clear whether the organometal catalyst is intended to further limit catalyst or a nonlimiting option. It is also not clear that the amount as claimed is intended to limit organometal catalyst or to simply limit a catalyst. In this office action, it is taken that the catalyst is an organometal catalyst and the amount range is for further limiting organometal catalyst.
Claims 4, 9-10, 12 and 15 are rejected as being vague and indefinite when these claims recite "preferably…” to further limit a range or a species, which render more than one range in the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 and 15-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 and 16-21 of copending Application No. 18/040827. Although the conflicting claims are not identical, they are not patentably distinct from each other because copending application claims an silicone formulation comprising a hydroxy-terminated polydiorganosiloxane with chemical formula reading upon instantly claimed formula (II) (see Claim 5), crosslinkers being ketoximino-based silanes with chemical formula reading upon formula (I) (see Claim 1), and other components such as catalyst and filler; and the formulation also has identical skinning time, cracking time, and intended use for sealants, grouting compounds or adhesive. Thus the claimed subject matter as in copending application has all the technical features as recited in the instant claims 1-12 and 15-19. Therefore, it would have been obvious that the instantly claimed invention is unpatentable over the co-pending application No. 18/040827.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claims 1, 3-4,11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mathew et al (US 5359108, of record, ‘108 hereafter).
Regarding claims 1, 3-4 and 15, ‘108 discloses a silicone formulation comprising a hydroxy-terminated polydiorganosiloxane (Examples 1-9); a first crosslinker being methyl (tris(methyl amyl ketoximino) silane (Example 9) satisfying presently claimed formula (I), wherein a is 0, b is 1, c is 3, R2 is methyl being a monovalent hydrocarbon having 1 carbon atom, R3 is a hydrogen, R4 is a methyl; and a second silane crosslinker being tetrakis(methyl isobutyl ketoximino) silane (Example 9) satisfying presently claimed formula (II), wherein e is 0 , d is 4, R9 is -N=CR12 R13, and R12 and R13 are C1 and C4 alkyl group.
Regarding claim 11, ‘108 also discloses a cured silicone (Examples 1-9, C6/L5-C8/L2).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5-8, 10, 12 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mathew et al (US 5359108, of record, ‘108 hereafter).
Regarding claims 5-6 and 16-19, ‘108 discloses a silicone formulation comprising a hydroxy-terminated polydiorganosiloxane (Examples 1-9); a first crosslinker being tetrakis(methyl amyl ketoximino) silane (Example 8) satisfying presently claimed formula (I), wherein a is 0, b is 0, c is 4, R3 is a hydrogen, R4 is a methyl; and a second silane crosslinker being methyl (tris(methyl amyl ketoximino) silane (Example 8) satisfying presently claimed formula (II), wherein e is 1, d is 3, R9 is N=CR12R13 with R12 being methyl and R13 being amyl (amyl is a C5 alkyl, pentyl), and R10 is methyl being a monovalent hydrocarbon having 1 carbon atom. ‘108 does not expressly set for the second compound having R13 being a propyl (C3 alkyl) to satisfy the second compound as recited in the present claims 5-6 and 16-19. However, it is well-known in the art that propyl (C3 alkyl) is an homologue of amyl (C5 alkyl), thus render the presently claimed silane is a homologue of the silane of ‘108; case law holds that compounds which are position isomers or homologues (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). (See MPEP 2144.09 (II)).
Regarding claims 7 and 8, ‘108 also discloses that the weight ratio of second crosslinker to the first crosslinked is 3 (Example 8), and the mixture of hydroxyl terminated polysiloxane with the crosslinker would render the polysiloxane being partially end-capped with the crosslinker during mixing step (See Examples 1-9).
Regarding claim 10, ‘108 teaches all the limitations of claim 1, but ‘108 does not expressly set forth the silicone formulation has skinning time or/and early cracking time as presently claimed. However, ‘108 discloses a silicone formulation having hydroxy-terminated polydiorganosiloxane and two crosslinkers being substantially identical to the silicone formulation as presently claimed, it is reasonable to expect that the silicone formulation of ‘108 has the same characteristics as that of the presently claimed silicone formulation, including the skinning time and early cracking time as claimed, in absence of an objective showing to the contrary (See MPEP 2112).
Regarding claim 12, ‘108 also discloses that the silicone formulation can be used as a sealant or an adhesive, wherein the method of using it naturally comprising steps of providing silicon formulation and applying silicon on a substrate ([C6/L65-C8/L2).
Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Mathew et al (US 5359108, of record, ‘108 hereafter) in view of Knepper et al (US 5534588, ’588 hereafter).
Regarding claims 2 and 9, ‘108 teaches all the limitations of claim 1, ‘108 also discloses that the silicone formulation may further include an organometal catalyst and a filler as needed (C7/L7-C8/L2), but ‘108 does not set forth the content of catalyst and filler in the formulation as presently claimed. However, the content of the catalyst and filler in the presently claimed range in a silicone formulation is generally known in the art as evidenced by ‘588 (C5/L50-L60, and C4/L49-C5/L20). In light of these teachings, one of ordinary skill in the art would have been motivated to use the amount of catalyst and filler known in the art, to render a silicone formulation having desired properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782