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 .
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Claims 7-11 are withdrawn.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 2/10/2026 is entered and fully considered.
Response to Arguments
Applicant argues that the scope of MURAKAMI is too broad to be teaching individual species. In particular applicant argues that MURAKAMI reference does not teach R1-3 can be the same or different from each other. However, the examiner notes that general formula (III) is teaching an R group and the subscript is identifying the number of R groups present. When defining what the R group is, the reference states that “at least 1 selection from the set” column 4 lines 17+. When making more than 1 selection it is apparent that the R groups can be different from each other (R groups with and without an epoxy group).
Applicant also argues the reference does not teach the claimed ratios of monomers defined by subscripts v, w, x, and y. The subscripts used by the reference are g, h, i and j as positive numbers (or zero for j). The reference does not put an upper limit on the subscript numbers. However, the examiner notes that the subscripts are expressing the ratio of the different parts of the compound. The ratios can always be reduced (in proportion to each other) to be less than 1. For example a 10:1 ratio can be equivalently expressed as 1:0.1.
As for the breadth of the teachings in MURAKAMI, the examiner recognizes there are a broad number of possible organopolysiloxanes. However, in these circumstances, each of the compounds are obvious from the disclosure in MURAKAMI. The examiner notes that the substantially broad group of compounds covered by applicant’s claim could have been carved out of the disclosure in MURAKAMI by one of ordinary skill without making any changes in the reference’s instruction.
Applicant further argues that FURUTA fails to cure deficiencies of MURAKAMI. However, the examiner maintains that MURAKAMI teaches organopolysiloxanes within the claim scope. The FURUTA reference was relied on to further expressly teach the different ratios of organopolysiloxane elements are result effective variables.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over MURAKAMI et al. (US 6,090,890).
Regarding claims 1 and 2,
MURAKAMI teaches a composition that includes an epoxy functional organopolysiloxane abstract. The organopolysiloxane can have formula:
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In that formula the R groups are hydrocarbon groups with the proviso that at least 0.1-70 mol% (at least one R) are epoxy-functional monovalent organic groups column 3 lines 7-15. In this formula the g, h, and i are positive numbers, but j can be 0 column 3 lines 15-17. The alkyl groups are C1-C7 alkyl, alkenes, aryl, aralkyls column 3 lines 18-30 and column 4 lines 17-20. The reactive compound B that is reactive with the epoxy includes radical initiators (e.g. hydroxyls and esters) column 5 lines 7-17. The reference specifically uses tert-butyl ester form storage stability which is a perester (a radical initiator).
The reference does not expressly teach an embodiment where the particular R groups are selected. However, the reference clearly teaches C1-C7 alkyl, C2-C6 alkylene (unsaturated hydrocarbon), C6-C10 aryl/aralkyl column 3 lines 18-30. At the time of filing the invention it would have been prima facie obvious to select R groups according to the instructions in MURAKAMI. By following the direction of MURAKAMI one of ordinary skill would arrive at compounds within the scope of the claimed invention without any inventive skill.
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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over MURAKAMI et al. (US 6,090,890) in view of FURUTA (US 2016/0200842).
Regarding claims 4-5,
MURAKAMI 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,
MURAKAMI does not teach the viscosity of the compound (separate from a composition containing the compound). 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. Specifically, 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
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, 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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