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.
Specification
The disclosure is objected to because of the following informalities: in paragraph 15, the applicant states "terminating reagent needs to be further removed to which..." that is not grammatically correct. Also, in paragraph 24 (page 10), the applicant states “any heat exchanger that is general in the skilled in the art…” that is not grammatically correct.
Appropriate correction is required.
Claim Interpretation
Claim 1 is constructed as a product-by-process claim. As such, only the structure of the polymer will determine the patentability and therefore any method that would result in the applicant’s polymer would read upon the claims.
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 10 and 14 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.
Regarding Claim 10,
The applicant states that the amount of catalyst used (by volume) should be 0.01 to 2 relative to 100 parts by weight of silicone/siloxane components. However, as the acids listed can all be purchased in a variety of concentrations (formic and acetic acid can be purchased in pure or diluted form while hydrochloric acid is a solution of various molarities and is a gas in pure form), the amount of actual catalyst would be different depending upon which concentration was used. As such, it is not possible to determine the actual amount of catalyst used, as in the case of hydrochloric acid, the use of a 1 molar solution would be an order of magnitude less catalyst than a 10 molar solution.
Regarding Claim 14,
Claim 14 recites “The polymer as claimed in claim 1, wherein the dielectric fluid…” however there is no dielectric fluid mentioned in claim 1. As a result, there is insufficient antecedent basis for this limitation in the claim. The applicant is required to revise the claim in order to place the claim in proper dependent form. For the purposes of examination, the dielectric fluid is being interpreted to mean the polymer of claim 1.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jia (CN101016384, Foreign Patent Document #1 from IDS dated 3/15/2023, using Espacenet translation).
Jia teaches a star shaped multi-arm silicone oil (Paragraph 2) in which a polyhedral oligomeric silsesquioxane (POSS) core molecule is reacted with a cyclic siloxane (Paragraph 11) which are noted to be methyl substituted (Examples 3 and 4). The POSS core has hydroxyl groups which have been deprotonated and have formed amine salts (Paragraph 15), which although they differ from the requirement of alkoxysilyl or hydroxysilyl groups of the instant claim, the reactivity of these groups would be similar to that of the hydroxysilyl group and would afford identical products when reacted with a siloxane. Similarly, while the instant claim requires a hydroxy terminated silicone oil and Jia teaches a cyclic siloxane, both compounds when reacted as prescribed with the core molecule would result in products that contain siloxane chains with terminal OH groups, thus meeting the requirement of the instant claim.
Claim Rejections - 35 USC § 103
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 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 4-7, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Jia (CN101016384) as applied to Claim 1 above.
Regarding Claims 4, and 6-7
Jia is silent on the viscosity of the silicone oil. However Jia teaches that the molecular weight is directly correlated with the viscosity (Paragraph 6) and it would logically follow that shorter chains would have lower viscosities. As Jia teaches the generation of an oil, it would necessarily follow that the molecular weight of the constituent siloxanes would need to be chosen in order to obtain a product in the liquid state. As such, it would have been obvious prior to the effective filing date of the instant application to have selected any viscosity for the siloxane that afforded a liquid product with the desired characteristics.
Jia also teaches the use of compounds such as hexamethyldisilazide as terminating agents (Example 3), which corresponds to the amine containing structure of the instant claim with R3 being methyl. Jia also teaches that the ratio of reactive groups in the core structure (8) to those of the terminating agent (1) is 1.002 (Example 3), meeting the requirement of the instant claim.
Regarding Claim 5,
Jia constructs the molecule in a fashion where the siloxane polymerizes in the reaction mixture, as evidenced by the cyclic siloxane containing only 3 or 4 silicon atoms (Examples 1-3) which result in oils with molecular weights of between 200,000 (Example 1), 600,000 (Example 2) and 100,000 (Example 3). However, Jia teaches the use of excess siloxane relative to the core molecule through these examples. As high levels of crosslinking would increase viscosity, it would logically follow that crosslinking density must be controlled in order to obtain the desired viscosity. This would require an excess of siloxane in order to lower the concentration of core molecule to silicone oil ratio. This would render the ratio of reactive groups between the core and silicone oil to be a result-effective variable. It would therefore have been obvious prior to the effective filing date of the instant application to have selected a ratio between the reactive groups of the silicone oil and the core to any value that afforded products with the desired viscosity.
Regarding Claim 14,
As discussed in regard to claim 5 above, the increase in viscosity is correlated to the crosslinking density. Because of this, it would logically follow that the crosslinking density is being indirectly measured through the viscosity increase. As such, this would render the difference in viscosity from the starting silicone oil and the final polymer to be a result-effective variable.
Claims 2-3 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jia (CN101016384) as applied to claims 1, 4-7, and 14 above and in further view of Hietala (WO2022112660).
Regarding Claims 2-3 and 8,
Jia teaches polymer with a core structure, terminating group, and siloxane groups attached as discussed above in regard to claim 1. However, Jia does not teach that the core structure is of the type of the instant claims. Jia does teach that branched silicone oils have improved rheological properties (Paragraph 6) and that the purpose of the invention is a star shaped silicone oil (Paragraph 8). As a star shaped polymer would be one in which multiple arms emanate from a central structure, it would logically follow that any structure that can form bonds to multiple siloxane chains would meet this requirement. Hietala teaches the formation of a siloxane mixture that can be a mixture of polymers and monomers (Page 7, lines 6-8) and that may include bis(triethyoxysilyl)ethane (Page 7, lines 17-22) and siloxane oligomers (Page 8, Lines 25-31) and further that branched structures can be generated (Page 9, Lines 1-5). Hietala teaches that siloxanes are useful for their improved chemical resistance (Page 8, lines 11-12). One of ordinary skill in the art, recognizing that bis(triethyoxysilyl)ethane has six reactive groups and thus capable of generating a polymer with multiple arms, would be motivated to use this compound as the core structure to increase the amount of branching in the structure over its linear counterpart but with fewer branches than afforded by a POSS structure in order to reduce the viscosity of the final polymer. As Hietala teaches the reaction of bis(triethyoxysilyl)ethane with oligomeric siloxanes similar to those of Jia, it would have been obvious prior to the effective filing date of the instant application to have substituted the core structure of Hietala into the polymer of Jia to obtain the predictable result of a polymeric silicone oil with a branched structure with a reasonable expectation of success.
Regarding Claims 9 and 10,
Jia teaches a polymer that is identical to that which would be obtained through the combination of materials as described in claim 1. As claim 1 is a product-by-process claim, the patentability is determined by the product and not the process steps. See MPEP 2113.I. As such, the rejection does not require meeting the requirements of the process steps. However, siloxane polymers can be made through the use of acidic or basic conditions. Hietala teaches the use of acidic catalysts for making siloxane polymers, including hydrochloric, acetic, and formic acid (Page 10, Lines 13-19). While Hietala does not specify a global range of catalyst, the amount of catalyst used would be determined based upon the speed of the reaction desired while avoiding unwanted reactions. The ordinarily skilled artisan would thus optimize this amount in order to maintain this balance. As such, it would have been obvious prior to the effective filing date of the instant application to have used any amount of catalyst sufficient to conduct the reaction in an efficient manner.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Jia (CN101016384 as applied to claims 1, 4-7 and 14 above, and further in view of Christensen (WO2020257371, Foreign Patent Document #1 from IDS dated 10/18/2023).
Regarding Claims 11-13
Jia teaches the preparation of a multi-arm silicone oil (Paragraph 2) and its use as a dielectric oil (Paragraph 5). However, Jia fails to teach the use of additives to this oil. Christensen teaches dielectric fluids for use in heat transfer (Abstract) which may be comprised mainly of a silicone oil base (Paragraph 62). Christensen also teaches that such compositions typically include antioxidants (Paragraph 105) which include hindered phenols such as di-tert-butyl-p-cresol (Paragraph 106) in amounts of 0.01 to 5% by weight (Paragraph 107), which is identical to that of the instant claims. Christensen further teaches the use of metal deactivators (Paragraph 127) such as triazoles (Paragraph 132) which can be used in amounts of 0.005 to 0.25% by weight (Paragraph 132), which overlaps with the range of the instant claims. One of ordinary skill in the art would be motivated to adjust the amount of metal deactivator to achieve an appropriate level of metal surface passivation needed for the desired use case. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jia (CN101016384) in view of Christensen (WO2020257371) as applied to claim 11 above, and further in view of Chaianov (WO2020216954, Foreign Patent Document #1 from IDS dated 10/18/2023).
Regarding Claim 15,
Jia teaches a star shaped multi-arm silicon oil for use as a dielectric oil, but does not teach an apparatus that it is used in. Chaianov teaches a cooling system that uses dielectric fluid (Abstract) where each reservoir in the device may contain an electronic, heat generating element to be cooled (Page 6, Lines 34-38) and in which a heat exchanger may be used (Page 5, Lines 1-8). Chaianov also teaches the use of silicone oil as the dielectric fluid (Page 4, Lines 13-17). One of ordinary skill in the art would recognize that a device would be required for the use of a dielectric fluid used for cooling and would naturally seek to use an existing device for such a purpose. It would therefore have been obvious prior to the effective filing date of the instant application to have combined the silicone oil dielectric fluid of Jia with the cooling system of Chaianov to obtain the predictable result of a cooling system containing a silicone oil with a reasonable expectation of success.
Conclusion
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765