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 .
Information Disclosure Statement
The information disclosure statement filed 7/11/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The IDS lists the NPL “Assembly, structure, and properties of cross-linked polymer structures from lipophilic cyclodextrin derivatives,” Ph.D. Dissertation by Wenke, 1994, but a copy of this NPL was not included with the IDS, therefore it was not considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claims 8 and 10 are 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 8 fails to include all the limitations of claim 1. Claim 8 part iii. states the alkenyl polysaccharide is other than a silylated starch, but claim 1 states that the polysaccharide is other than a cellulose or starch component. 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. Claim 10 is also rejected due to its dependency on claim 8, and does not rectify the issue.
Claim Rejections - 35 USC § 102
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ali, "Cyclodextrin-polymethylhydrosiloxane gel as sensitive membrane for heavy ion sensors", MATERIALS SCIENCE AND ENGINEERING C, ELSEVIER SCIENCE S.A., 1998, Pgs. 53-58, Vol. 6, No. 1 (reference included with applicant's IDS) as evidenced by "Preparation and Characterization of "Organic-Inorganic" Hybrids by Modification of Polymethyl Hydrosiloxane With Alcohols And Alkenes" Kalfat et al, Journal of the Chem. Soc. of Tunisia, Vol. 3, No. 8, Dec. 1994 (original and translation included).
Regarding claims 1-2, and 4-5, Ali teaches a composition comprising a crosslinked gel of cyclodextrin grafted onto polymethylhydrosiloxane (PMHS), abstract. The cyclodextrin (CD) is β-cyclodextrin, see Fig. 1 page 2, which Ali teaches consists of 6 to 8 d-glycopyranose units (which is the cyclic form of glucose) linked by α(1-4) glycosidic bonds, see sec. 1. Introduction, 3rd paragraph, which reads on the polysaccharide of claims 1, 2, 4, and 5.
The CD is grafted to the PMHS by reacting the hydroxyl groups of the CD with the Si-H group on the siloxane, resulting in the carbon-oxygen-silicon linkages, 2.1.1 preparation and see Fig. 1, page 2, and page 3 last line of left column. There is more than two of these C-O-Si linkages because Ali teaches that multiple CD molecules are bridged to the PMHS, 2.1.1. Ali further teaches the gel is crosslinked, made via the sol-gel process, sec. 1. Introduction, 2nd paragraph right column. The sol-gel process inherently requires a solvent, but Ali further teaches the method of making the gel is similar to the method utilized by Kalfat, which uses tetrahydrofuran as the solvent for the gel, page 2 Experimental section. Therefore Ali’s gel has solvent as evidenced by the method of Kalfat. Furthermore, because Ali describes it as a gel, it is inherently swollen in the solvent, as claimed.
Regarding claim 3, the CD has some -OH and/or -CH2OH pendant groups that did not react with the PMHS in the gel, see Fig. 2 page 2 which shows the IR spectra of the gel based on varying reaction times, labeled c, d, and e. The OH group shows up at 3364 cm-1.
Allowable Subject Matter
Claims 7, 9 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 8 and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach, suggest, or disclose the claimed solvents nor the method of making the elastomer gel as claimed. Ali cites the method of Kalfat, which only teaches using the solvent THF, and does not teach using an alkenyl polysaccharide, nor one that is silylated before reacting with the Si-H functional polyorganosiloxane. The claimed solvents would not be obvious to substitute in place of the THF because the claimed solvents are found in cosmetic compositions and are not commonly used in the field of membranes for ion sensors.
Ali and Kalfat also do not mix the gel under high shear methods to form a paste, as claimed in claim 11. It would not be obvious to perform the high shear mixing because the gel is already homogenous and high shear mixing can cause polymer scission, degradation, and possibly compromise the composition of Ali.
The closest prior art for the method claims is US10053543 to Knoer, S., included in applicant’s IDS. Knoer discloses a polysiloxane gel composition produced by the hydrosilylation of an alkenyl functional glycoside residue and a Si-H functional organopolysiloxane, abstract. The alkenyl glucoside is preferably (2-allyloxyethoxy)-glucoside with 1.5-2.5 repeat units, shown in Col. 6. The reaction of this alkenyl glucoside with the Si-H of the polysiloxane does not form the C-O-Si bonds required in claim 1, and the OH groups on the alkenyl glucoside are not silylated prior to the reaction with the Si-H, forming the gel.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765