DETAILED ACTION
Election/Restrictions
Claims 8 to 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected composition, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/11/26.
In view of the fact that these claims are withdrawn from consideration and are not
being examined, the Examiner is not making an obviousness type double patenting rejection for these claims over the claims in copending 18/128,662 at this time. Applicants are cautioned though that such a rejection will be considered if or when any of claims 8 to 27 are under consideration.
Claim Interpretation
As a formality the Examiner notes that the claims, particularly claim 1, are extremely broad. Claim 1 is essentially drawn to any siloxane having less than 6000 repeating units (which is a considerably large number) and having an I unit, the I unit embracing a large array of groups. Of course this does not make the claims indefinite. This is noted because the Examiner has only applied a small fraction of applicable prior art in the rejections below. To cite every reference would be redundant and overwhelm-ing. Applicants are encouraged to keep this in mind when amending the claims.
Claim Rejections - 35 USC § 112
Claims 1 to 7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, it is confusing to define G as > 0 when G is a polymerizable group
(see definition later in the claim) and not a numerical value. Under the assumption that this is intended to mean that there are 0 or more “G” groups, it is unclear who this could be when there is only 1 “G” group shown in the formula.
The phrase “included by not limited to” renders this claim unclear as the exact breadth of this is not known.
The phrase “may include” is indefinite since it is not clear if this allows for other moieties or not.
In claims 2 to 4, it is unclear how or where these groups are bonded to the Si atom, as none show a divalent group for attachment.
In claim 3, the presence of the C group without H bonded thereto in the “y” unit is confusing. Also R36 is note defined.
In claim 4, “R”, “x” and “y” are not defined.
While not indefinite, the Examiner notes that the language “is selected by the…” is awkward and should be changed to “is selected from”.
Claim Rejections - 35 USC § 102 and/or 103
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.
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.
Claims 1, 3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimizu et al. 4,961,877.
For ease and claim rejection purposes the Examiner will only refer to the section
of Shimizu et al. that is more pertinent to this rejection.
See column 4, lines 44 to 68 which teach a copolymer having SiO2 units (Q units that correspond to claimed Q5), trimethyl SiO1/2 units (that correspond to M1) and dimethyl Q SiO1/2 units (in which this Q is defined as a polyoxypropylene or polyoxypro-pylene/polyoxyethylene copolymer and corresponding to the claimed M2 unit). This meets the claimed I group of a polyether and meets the specific units in claim 5. For claim 3, note that this limits the polyetheramine in claim 1 but does not require it such that this claim is anticipated as well.
Claims 1 to 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paul et al. 2019/0119450.
Paul et al. teach a polysiloxane that contains the claimed M2 and D1 units. Of
particular relevance, see the structures in the middle of page 4 which contains the silox-ane units noted previously and both polyether and polyetheramine as hydrophilic I groups. This anticipates claim 1.
For claim 2, see the polyetheramine groups attached to the terminal siloxane units that meet this formula.
For claims 3 and 4, while it is unclear what’s being claimed due to the “y” unit being confusing and R not defined, it appears that the polyetheramines in Paul et al. meet these structures as well.
Claims 1 to 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 2013/0123529, Lu e al.
Lu et al. teach the reaction between a siloxane having terminal epoxy groups and a polyether amine. This results in a siloxane that has the claimed polyether amine units. See paragraphs 30 to 33. This anticipates claim 1.
For claims 2 to 4, as noted supra these claims are indefinite as it is not clear how they are bonded to the siloxane backbone or what the “y” unit and R group embrace. However, the it appears that these repeating unites and terminal groups are consistent with those found in the reactants of this CN reference such that they appear to be anti-cipated by this reference.
In particular, note that the reactant at the bottom of paragraph 34 has the same formula as the first group in claim 4. This reactant also appears to meet the formula of claims 2 and 3, though these are indefinite.
For claim 5, please note that a “c” value of 1 is specifically disclosed in both the range, the more specific range and the even more specific range (indicating a preferred embodiment). As such the skilled artisan would have anticipated a “c” value of 1, such that the resulting B unit in paragraphs 14 and 15 will have the formula M22, a disiloxane meeting claim 5 when b is 2.
Claims 1, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saxena 2013/0172419.
Saxena teaches a silicone ionomer as shown in paragraph 35 and on. This has the same general formula containing a range of possible Si units as claimed. Compare formula (I) in Saxena to the siloxane of the formula shown in instant claim 1.
The siloxane in Saxena contains an ionic group as defined in paragraph 49 and on. This meets the claimed ionic group I.
As this applies to the specific groups in claims 6 and 7 (and thus claim 1) see the various I groups and zwitterion in paragraph 51 to 56 which meet these claims.
In this manner claims 1, 6 and 7 are anticipated.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horstman et al. or Hatakeyama et al.
Horstman et al. teach a silicone ionomer as shown in paragraph 10 and on. This shows a siloxane having various amounts of M, D, T and Q units. Compare formula (I) in Horstman et al. to the siloxane of the formula shown in instant claim 1.
The siloxane has a -COOZ group in which Z is defined in paragraph 14. This meets the claimed I group of claim 1 and the specific carboxylate group in claim 6.
Hatakeyama et al. teach various siloxanes as shown in paragraph 74. Note that these contain D units having, as the claimed I group, a sulphonate group meeting the I in claim 6. This anticipates each of claims 1 and 6.
In addition to the above paragraph 77 teaches polyether groups attached to the Si backbone that also meets claim 1. Note for instance the silicones in paragraphs 148 and 149, among other anticipatory showings.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Saxena or Horstman et al. .
While such a specific combination of M and Q units is not anticipated by Saxena
or Horstman et al., the teachings therein clearly render such a combination of units obvious as they are embraced by the general formula (I) in paragraph 35 (Saxena) and the general formula (I) in paragraph 10 (Horstman). From this one having ordinary skill in the art would have found the formation of an MQ resin having ionomeric groups as found in Saxena or Horstman et al. to have been obvious and well within the skill of the ordinary artisan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
7/23/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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