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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 16 December 2025, with respect to the rejection(s) of claim(s) 1-15 and 21-22 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Eckberg (US Patent No. 4670531).
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.
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.
Claim(s) 1-15, 21, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eckberg (US Patent No 4670531), as evidenced by “Chempoint”.
Regarding claims 1, 3-5, 7, and 12; Eckberg teaches curable compositions, comprising (a) an organopolysiloxane base polymer; (b) an organohydrogenpolysiloxane crosslinking agent; (c) an effective amount of precious metal containing catalyst (hydrosilylation catalyst); and (d) an azo compound wherein at least one -N=N- moiety is not part of a cyclic structure [col2, line11-24]. Eckberg teaches the organopolysiloxanes (a) can be any silicone polymer which will react with an organohydrogenpolysiloxane in the presence of a precious metal containing catalyst [col2, line 24-26]. Eckberg teaches the organopolysiloxanes base polymer is an olefinorganopolysiloxane having structural units of the formula (I) (vinyl-functionalized siloxane)
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wherein R is an organic radical, R1 is an olefinic organic radical (e.g. vinyl, allyl, (meth)acrylate), a is 0-3, b is 0.005-2.0, the sum of a+b is 0.8-3, and the viscosity is from about 10 cps to 250,000,000 at 25°C. Eckberg teaches the organohydrogenpolysiloxane (b) can be any Si-H containing polymer, preferably having the structural units of the formula (II) (silane-terminated siloxane)
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wherein R is preferably an organic radical, a is 0-3, b is 0.005-2.0, a+b is 0.8-3; and the viscosity ranges from about 10 cps to about 10,000 cps at 25°C [col3,line5-24].
Although Eckberg does not explicitly disclose the term “monomer”, the viscosity taught by Eckberg for said polysiloxanes reads on applicant’s claimed monomer since the instant specification defines the claimed monomer to have a MW in a range of 1,000 to 100,000 g/mol [0040]. Eckberg teaches suitable azo compounds to be used in the present invention include Vazo® 88 and Vazo® 67, both capable of functioning as a radical initiator [Ex2].
Eckberg teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Eckberg does not specifically disclose an embodiment containing (a) an organopolysiloxane base polymer; (b) an organohydrogenpolysiloxane crosslinking agent; (c) an effective amount of precious metal containing catalyst (hydrosilylation catalyst); and (d) an azo compound wherein at least one -N=N- moiety is not part of a cyclic structure (radical initiator) [col2, line11-24]. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing comprising (a) an organopolysiloxane base polymer; (b) an organohydrogenpolysiloxane crosslinking agent; (c) a precious metal containing catalyst (hydrosilylation catalyst); and (d) an azo compound, based on the invention of Eckberg, and would have been motivated to do so since Eckberg suggests that the composition can contain (a) an organopolysiloxane base polymer; (b) an organohydrogenpolysiloxane crosslinking agent; (c) a precious metal containing catalyst (hydrosilylation catalyst); and (d) an azo compound (radical initiator) [col2, line11-24].
Chempoint provides evidence that Vazo® 88 and Vazo® 67 are free radical initiators that are activated by light or heat (thermally activated and photoactivated).
Regarding claim 2; Eckberg teaches the organohydrogenpolysiloxane can possess a linear structure [col3, line25-28].
Regarding claims 6, 8, and 9; Eckberg teaches generally the azo compound is used in an amount as little as 0.005 wt.% to 2 wt.% or more; preferred embodiments employing 0.1 wt.% and 1.0 wt.% (reads on both thermally activated and photoactivated initiators) [col5, line24-29; Ex2].
Regarding claims 10 and 11; Eckberg teaches the composition may further contain a photosensitizer [col5, line1-4], employed in an amount of about 2 wt.% (benzophenone; i.e. employed in an amount about equivalent to the radical initiator) [Ex1].
Regarding claim 13; Eckberg teaches the precious metal catalyst includes platinum, rhodium, iridium, and ruthenium [col3, line29-36].
Regarding claims 14 and 15; the Examiner makes note that “for forming” and an “ink for forming” are intended use limitations. 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, 7.37.09.
Regarding claims 21 and 22; Eckberg teaches the composition comprising an azo compound (reads on both photoactivated and thermally activated, see above) and a photosensitizer [col5, line1-4]. The Examiner makes note that “configured to function as a curing accelerator for converting…” is an intended use limitation. 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, 7.37.09.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 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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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767