DETAILED ACTION
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 7 and 19-21 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 7: Claim 7 requires R18 and R19 to be -N(R24)(R25). However, in claims 5 and 1, from which claim 7 ultimately depends, R18 and R19 cannot be -N(R24)(R25). Therefore, the scope of the claim is indefinite. For the purpose of further examination, it is taken to mean R20 and R21 are -N(R24)(R25).
Regarding claims 19-21: Claim 20 is dependent on claim 19 and claim 19 is dependent on claim 20, and therefore “the cured product of claim 20” does not have antecedent basis. For the purpose of further examination, it is taken to mean claim 19 depends on claim 18 instead of 20.
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.
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 1, 2, 4, 5, 12-19, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Griswold 2006 (US 2006/0115657) in view of Griswold 2013 (US 2013/0150535).
Regarding claims 1, 2, 4, 5, and 12: Griswold 2006 teaches a silicone coating/adhesive (abstract) comprising a silicone resin (abstract), a silicone fluid/silanol terminated siloxane polymer (abstract, para. 48), and an aminosilane (para. 18). Griswold 2006 does not teach the claimed structure of the aminosilane. However, Griswold 2013 teaches a similar composition that includes a coupling agent such as bis(dimethylamino)dimethylsilane (para. 55), which is the instant claimed aminosilane where n is 0, R20 and R21 are methyl, and R16, R17, R18, and R19 are methyl, and is represented by the second compound shown in claim 12. Griswold 2006 and Griswold 2013 are analogous art since they are both concerned with the same field of endeavor, namely silicone coatings/adhesives. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the aminosilane of Griswold 2013 in the composition of Griswold 2006 and would have been motivated to do so in order to increase the cohesive properties due to the presence of a coupling agent, as evidenced by Griswold 2013.
Regarding claim 13: Griswold 2006 teaches the amount of aminosilane is 5-30 percent by weight (para. 49), which overlaps the claimed range.
Regarding claim 14: Griswold 2006 teaches the silicone resin can comprise aromatic/aryl groups (para. 12).
Regarding claims 15 and 16: Griswold 2006 teaches a silicone resin having the formula MaDbTcQd (para. 7) where a, b, c and d are zero or positive (para. 12), and the substituents can be hydrogen, alkyls, or aryl radicals (para. 12), which overlap the claimed structure.
Regarding claim 17: Griswold 2006 teaches the silicone fluid/siloxane polymer (b) has the structure MeDfTg (para. 13-17), which can have aromatic/aryl substituents, and hydroxyl groups (para. 17), which overlaps with the claimed structure.
Regarding claim 18: Griswold 2006 teaches a cured product (para. 24).
Regarding claim 19: Griswold 2006 teaches an article coated with the composition (abstract) and curing the composition (para. 24).
Regarding claims 22 and 23: Griswold 2006 teaches a method of making a silicone coating/adhesive (abstract) comprising a silicone resin (abstract), a silicone fluid/silanol terminated siloxane polymer (abstract, para. 48), and an aminosilane (para. 18). Griswold 2006 teaches curing the composition by reacting the components at a temperature of 25-150 °C (para. 54). Griswold 2006 does not teach the claimed structure of the aminosilane. However, Griswold 2013 teaches a similar composition that includes a coupling agent such as bis(dimethylamino)dimethylsilane (para. 55), which is the instant claimed aminosilane where n is 0, R20 and R21 are methyl and R16, R17, R18, and R19 are methyl. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the aminosilane of Griswold 2013 in the composition of Griswold 2006 and would have been motivated to do so in order to increase the cohesive properties due to the presence of a coupling agent, as evidenced by Griswold 2013.
Claims 3 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Griswold 2006 (US 2006/0115657) in view of Griswold 2013 (US 2013/0150535) as applied to claims 1, 2, and 5 set forth above and in view of Dinkar et al. (WO 2013/090127).
Regarding claim 3: Griswold 2006 teaches the basic claimed composition as set forth above. Not disclosed is where R16, R17, R18, and R19 are hydrogen. However, Dinkar et al. teaches the component
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(para. 29), where n can be 0 (para. 32), Z can be a bond, X can be polypropylene/alkyl (para. 31, 32), and R2 can be amino (para. 30), meaning that R16, R17, R18, and R19 are hydrogen. Griswold 2006 and Dinkar et al. are analogous art since they are both concerned with the same field of endeavor, namely silicone coatings/adhesives. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the polyorganosiloxane of Dinkar et al. in the composition of Griswold 2006 and would have been motivated to do so since it also affects crosslinking.
Regarding claim 6: Griswold 2006 teaches the basic claimed composition as set forth above. Not disclosed is where R20 and R21 have the claimed moieties. However, Dinkar et al. teaches methyltricyclohexylaminosilane (para. 10, pg. 5), in which R20 is methyl, R21 is -N(R24)(R25), R16, R18, and R24 are hydrogen, and R17, R19, and R25 are C6 alkyl. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the aminosilane of Dinkar et al. in the composition of Griswold 2006 and would have been motivated to do so since it also affects crosslinking.
Regarding claim 7: Griswold 2006 teaches the basic claimed composition as set forth above. Not disclosed is where R20 and R21 (see interpretation of the claimed scope in the 112(b) rejection above). However, Dinkar et al. teaches a similar composition comprising tetra-N,N-diethylaminosilane (para. 10, page 5), in which R20 and R21 are both -N(R24)(R25), and R16, R17, R18, R19, R24 and R25 are all ethyl groups. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the aminosilane of Dinkar et al. in the composition of Griswold 2006 and would have been motivated to do so since it also affects crosslinking.
Regarding claims 8-11: Griswold 2006 teaches the basic claimed composition as set forth above. Not disclosed is where n is 1. However, Dinkar et al. teaches the component
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(para. 29), where n is desirably 1 (para. 32), Z is a direct bond, X is a polyolefin with a degree of polymerization greater than 6 (para. 32) meaning it can be an alkyl group of 12 carbon atoms, which is an obvious variant of a C10 alkyl. R2 can be amino or aminoalkyl (para. 30). This structure overlaps with the claimed structure of claims 8-11. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the polyorganosiloxane of Dinkar et al. in the composition of Griswold 2006 and would have been motivated to do so since it also affects crosslinking.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Griswold 2006 (US 2006/0115657) in view of Griswold 2013 (US 2013/0150535) as applied to claim 18 set forth above and in view of Singh et al. (US 2019/0037705).
Regarding claims 20 and 21: Griswold 2006 teaches the basic claimed composition as set forth above. Not disclosed is a surface coated light emitting diode. However, Singh et al. teaches a similar organosilicone composition comprising an aminosilane that encapsulates a light emitting diode (para. 122). Griswold 2006 and Singh et al. are analogous art since they are both concerned with the same field of endeavor, namely silicone polymer compositions. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to encapsulate a light emitting diode as in Singh et al. with the composition of Griswold 2006 and would have been motivated to do so to protect the electrical components.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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