DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. DE 10 2022118294.0 filed 7/21/2022, which papers have been placed of record in the file.
Claims 1-14 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-10 in the reply filed on 4/15/2026 is acknowledged.
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 1-10 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.
Claim 1 recites …Cl is a so-called cross-linker unit. However, so-called is an adjective used before a noun to indicate that a term, name, or description is commonly used but might be inaccurate, undeserved, or questionable. Further, it would not be clear how a …so-called crosslinker… vs …crosslinker… differs in scope. Finally, claims 2-10 do not recite “so-called crosslinker”. Hence, one skilled in the art would not understand the full scope and meaning of a …so-called “cross-linker.
Claims 2-10 are subsumed by this rejection because of their dependence.
Regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Appropriate correction and/or clarification is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 recites the Ver are bio based, natural product based or also synthetic. However, no other option is possible. Therefore, claim 7 does not further limit the scope of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Appropriate correction and/or clarification is required.
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mondal et al. (US 2022/0073745).
Regarding claim 1: Mondal is directed to a cross-linked polysiloxane containing the structure comprising the reaction product of a polymer A and polymer B ([0030]). A specific polymer B includes
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Which is equivalent to a so called cross linker unit which contains a polysiloxane chain with the basic structure of formula I) wherein R is a methyl group or -H, n is 19, Ver is an organic group whose precursor contain functional groups and heteroatoms and at least two terminal functional groups each form a covalent bond with a functional group of a crosslinker precursor or a functional group of a modifier precursor, and x is 0.
Regarding claim 2: The specific polymer B above comprises terminal dihydrogenpolydimethylsiloxane.
Regarding claim 3: The reactive groups for the cross-linker units CL include -Si-H groups.
Regarding claims 4-5: The Ver non terminal functional groups in polymer B above include an ether group that contains an oxygen heteroatom.
Regarding claim 6: Polymer B comprises 2,2'-Diallyl bisphenol A (equivalent to a Ver organic bridging group of terminal C=C double bonds.
Regarding claim 7: The Ver group are synthetic.
Regarding claim 8: The precursor Mod terminal groups are Si-H in polymer B above.
Regarding claim 9: The blend further comprises fillers such as particles fibers, mats, flakes, additive catalysts and mixtures thereof ([0034]).
Regarding claim 10: Mondal doesn't specifically recite the crosslinked polysiloxanes can be degraded at the organic bridging groups Ver by means of a biobased agent such as microorganisms, preferably bacteria, fungi or algae, or enzymes outside living organisms. However, the crosslinked polysiloxanes produced in Mondal is substantially identical to the crosslinked polysiloxane produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Mondal anticipates a crosslinked polysiloxanes that can be degraded within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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