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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/15/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-6 in the reply filed on 2/28/2025 is acknowledged.
Claims 7-11 are withdrawn.
Response to Amendment
The amendment filed 7/15/2026 is entered and fully considered.
In view of the amendment the previous rejections are removed.
Response to Arguments
In view of the amendment the previous rejection is removed. The arguments are moot.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over SARUYAMA et al. (US 5,824,762).
Regarding claim 1,
SARUYAMA teaches a composition for an organopolysiloxane in column 1 line 65 as:
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The general formula is similar to applicant’s claimed formula when y=0. The R1-3 are monovalent hydrocarbon groups including alkyl and aryl groups specifically teaching C1-3 alkyl and C6 phenyl and alkenyl (unsaturated) groups (e.g. vinyl and allyl) column 2 lines 33-38. The reference further teaches organic groups with a structure:
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SARUYAMA teaches the R4 is divalent but the organic group as a whole is a monovalent group bonding to the silicon in the generic formula. The R6 can be an acryloyl or methacryloyl group column 2 lines 1-15. Accordingly, the organic group when taken as a whole is a monovalent organic group that contains a methacryloyl group.
SARUYAMA teaches the ratio of siloxane units in the generic formula where “a” is a positive number; “b” can be zero and “b/a” is 0 to 2; and “c” can be zero and “c/(a+b+c)” is 0 to 0.3 column 4 lines 42-52. These ratios overlap with the claimed ratios where v, x, and y can also be 0.
SARUYAMA teaches using the composition with a photopolymerization initiator such as Darocur 1173 which is a radical photoinitiator column 6 lines 15-19 and column 6 line 64.
The reference does not expressly disclose a single embodiment where the R1-3 groups are chosen to match the R1-3 groups including at least one monovalent organic group having methacryloyl group. However, the scope of the generic claim includes formulas that fall within the claim scope and is considered prima facie obvious to one of ordinary skill in the art following the directions of the prior art.
Regarding claim 2,
In SARUYAMA the subscript “b” corresponds to the claimed subscript “x”. As previously noted, “b” can be zero and “b/a” is 0 to 2 column 4 lines 42-52. Therefore the amount of “b” can be greater than zero and reduced down to be a ratio of less than 1 because it should not be more than twice the value of “a”.
Regarding claim 3,
The limitation in claim 3 refers to the intended use of the composition as a physical vapor deposition method. However, the composition is defined by the components and is not particularly limited by the intended use. The same composition is expected to be able to be used in the same manner. Finding a new use for a composition does not make the composition itself patentable.
Regarding claim 12,
Claim 1 is directed to the composition while claim 12 is directed to an intended use of applying on a resin substrate and then applying an inorganic layer by dry film formation. The intended use does not limit the components of the composition.
Claim(s) 4-6 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over SARUYAMA et al. (US 5,824,762) in view of FURUTA (US 2016/0200842).
Regarding claims 4-5,
SARUYAMA generally teaches the amount of each g, h, i, and j as a positive number (j can also be zero) as described above. The reference does not expressly teach the ratios of the different monomers in the compound in terms of the claimed inequalities. However, the open ended amounts of material implicitly teaches ratios that overlap with the claimed range, MPEP 2144.05.I.
In addition, FURUTA teaches a similar composition of monomers groups Q, T, D and M, see [0035] each have a particular property that is imparted to the compound (polymer precursor), see [0036], [0038], [0040], and [0042], respectively. Each monomer imparts a particular property and the loading of each monomer depends on the desired final property. Accordingly, in addition to having an open/broad range of compositions that overlap the claimed ranges, generally changes in concentrations are not considered patentable without showing an unexpected result, MPEP 2144.05.II. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to changing the respective loadings of monomer units to optimize the desired properties.
Regarding claims 6 and 13,
SARUYAMA does not teach the viscosity of the compound (separate from a composition containing the compound - adding solvent would change the viscosity). However, the same compound is expected to have the same physical properties, including viscosity. In addition, as noted above FURUTA teaches a similar composition where the different components modify different properties. For example, FURUTA teaches the D monomer suppresses viscosity [0040]. At the time of filing the invention it would have been prima facie obvious to modify the relative amounts of the parts of the compound to achieve a desired viscosity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712
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