Prosecution Insights
Last updated: April 19, 2026
Application No. 18/264,261

PROCESSES FOR MAKING POLYSILOXAZANES AND USING SAME FOR PRODUCING AMINO-FUNCTIONAL POLYORGANOSILOXANES

Non-Final OA §102§103§112§DP
Filed
Aug 04, 2023
Examiner
HOU, FRANK S
Art Unit
1692
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Dow Silicones Corporation
OA Round
1 (Non-Final)
71%
Grant Probability
Favorable
1-2
OA Rounds
3y 2m
To Grant
99%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allow Rate
82 granted / 115 resolved
+11.3% vs TC avg
Strong +32% interview lift
Without
With
+31.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
49 currently pending
Career history
164
Total Applications
across all art units

Statute-Specific Performance

§101
0.9%
-39.1% vs TC avg
§103
33.7%
-6.3% vs TC avg
§102
24.2%
-15.8% vs TC avg
§112
22.3%
-17.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 115 resolved cases

Office Action

§102 §103 §112 §DP
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. DETAILED ACTION Claims 1- 4, 6- 15 of B. Rekken , et al., US 18 / 264 , 261 ( 08/04/2023 ) are pending , under examination on merits and are rejected. Claim Objections Claim s 1- 2 and 1 4 -15 are objected to because the amended parts in each of the claims are not clear enough to be recognized. Claim Interpretation Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See, MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III). Interpretation of the term “allyl-functional amine” Claims 1-2, 6-10 and 14-15 recite the term of “ allyl-functional amine” . The specification does not provide definition for “ allyl-functional amine” . According to its plain meaning, “ allyl-functional amine” is broadly and reasonably interpreted as any compound comprising at least one allyl group AND at least one amine group. Interpretation of the term “activate distillation” Claim 2 recites the term of “activate distillation” in the following context: . . . 5) performing a reactive distillation of the reaction product, thereby purifying the cyclic siloxazane. The specification does not teach what kind of distillation is the claimed “activate distillation” . All the working examples disclosed in the specification teaches that the produced cyclic siloxazane is “ purified by a distillation method described in EP0342518A 2”. See specification at page 43-45, Examples 5-6 and page 48-49, Example 9. EP0342518A2 indicates that the distillation method described in EP0342518A2 is a conventional distillation. See EP0342518A2 at page 4, 30-33; and E xamples of EP0342518A2 . Therefore, consistent with the specification, the term “ reactive distillation ” is broadly and reasonably interpreted as a process that separates liquids (or solids from liquids) by heating a mixture to vaporize the most volatile component, then cooling the vapor back into a liquid (condensate) in a separate container . Claim Rejections - 35 USC § 112(b) 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. Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp ., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a). Unclear Chemical Structure Claims 1-4, 6, 8-15 are rejected under 35 U.S.C. 112(b) as indefinite because structure of the claimed SiH-terminal siloxane oligomer in the step d ) of claim s 1-4, 6, 8-15 are not clear . Both the specification (see specification at page 15, [0032]) and the claims recite the claimed SiH-terminal siloxane oligomer in the step d ) with a formula as indicated below. T he valency of an oxygen atom is 2. See J. F. Heyes, 25 (154), The London, Edinburgh, and Dublin Philosophical Magazine and Journal of Science , 221-237 (1888)(“ Heyes ”) at page 225, paragraph 2, line 6 . Therefore, oxygen atoms can only form two bonds with groups at the most conditions , it is not clear which compound can have the formula of That can be used as a starting material in the step d) of the claimed method. It should be noted that while Heyes discussed (CH 3 ) 2 O•HCl may have a tetravalency oxygen atom (See Heyes at page 232, section vi); however, it has been confirmed that (CH 3 ) 2 O•HCl is a complex between (CH 3 ) 2 O and HCl rather a single covalent bond ed molecule. See F. M. Carnovale, et al., 102.2 Journal of the American Chemical Society 569-573 (1980)(“ Carnovale ”) . Claim Rejections - 35 USC § 112(d) 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. Claims 7 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claims upon which they depend on respectively, or for failing to include all the limitations of the claims upon which they depend. Claim 7 depends on claim 1 which limits the claimed SiH-terminal siloxane oligomer in the step d must has the chemical structure as indicated below. Wherein, R 8 is an independently selected monovalent hydrocarbon group of 1 to 18 carbon atoms . Claim 7 recites the limitation of : The process of claim 1, where starting material d), the SiH-terminated siloxane oligomer, is selected from the group consisting of 1,1,3,3-tetramethyldisiloxane and 1,1,3,3,5,5-hexamethyltrisiloxane . Neither 1,1,3,3-tetramethyldisiloxane nor 1,1,3,3,5,5-hexamethyltrisiloxane can meet the structural limitation of the formula of as recited by claim 1 . Therefore, claim 7 cannot further limit claim 1, rather it is extending the scope of claim 1. 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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Notes : Claim 7 has been rejected under 35 USC 112(d) above. In the interests of compact prosecution, the purposes of applying prior art rejection for claim 7 as the claim 7 is interpreted as an independent claim. 35 USC § 102 (a)(2) Rejection Over S. Reisch, et al, WO2021108067A1 (2021)(“Reisch”) Claim 7 rejected under 35 U.S.C. 102(a)(2) as being anticipated by S. Reisch, et al, WO2021108067A1 (2021)(“ Reisch ”). Reisch is effective prior art under 35 USC § 102(a)(2) respecting the subject matter cited as of the filing date of Reisch’s priority document US 62/940407 ( 11/26/2029 ) because: (1) Reisch is a WIPO publication of a PCT international application that designates the United States ; (2) names another inventor; and (3) the subject matter of Reisch relied upon in this rejection is disclosed in Reisch ’s priority document US 62/940407 (11/26/20 1 9) . See MPEP § 2154.01; 35 USC § 102(d). Applicant may consider an exception under 35 U.S.C. 102(b)(2) to remove Reisch as prior art. Reisch teaches a new hydrocarbyloxy-functional arylsilane has the formula as indicated below and Reisch teaches that the hydrocarbyloxy- functional arylsilane is useful as a hydrosilylation reaction promoter. Reisch at page 1-2, [0005]. Reisch teaches that t he hydrocarbyloxy-functional arylsilane described above may be used in a process for preparing a cyclic polysiloxazane comprising: 1) combining starting materials comprising : i) an allyl-functional amine , h) the hydrosilylation reaction catalyst described above, c) the hydrocarbyloxy-functional arylsilane described above; thereby forming a reaction mixture, and thereafter 2)adding to the reaction mixture: d) an SiH-terminated siloxane oligomer of formula each R 8 is an independently selected monovalent hydrocarbon group of 1 to 18 carbon atoms and subscript x is 1 or 2; thereby preparing the cyclic polysiloxazane. Starting materials h) and c) may be combined to form the promoted catalyst, described above, before step 1). Alternatively, the promoted catalyst may be formed in situ by combining starting materials i), h), and c) in step 1). Reisch at page 9-10, [0026], emphasis added. Reisch teaches working examples for using a hydrocarbyloxy-functional arylsilane as a p romoter for a hydrosilylation reaction , such as Example 5 as below. [0049] In this Reference Example 5: cyclic siloxazane of formula - SiMe 2 O SiMe 2 C 3 H 6 NH- was prepared by the process of this invention where the mole ratio of allyl-amine to TMDSO was 2:1 or greater and the TMDSO was added to the allyl-amine. Quantities are given in the Table below. First, a Pt-Promoter solution prepared as described above was mixed with the allyl-amine and any solvent at RT in a glass reaction flask with a thermocouple, magnetic stir bar, and a condenser cooled to between -5 “ C to -20 “ C. The allyl-amine/catalyst solution was then heated to reflux temperature. The TMDSO was fed into the mixture over time and produced copious amounts of hydrogen within moments after addition, typically less than 5 seconds. The solution temperature gradually increased during the addition of TMDSO and also when feeding the TMDSO was halted as long as heat is put into the system. After feeding TMDSO was complete, the mixture was set to a temperature and stirred for 1 hour to 5 hours and then cooled to RT. The product, cyclic siloxazane, - SiMe 2 OSiMe 2 C 3 H 6 NH -, was characterized by GC-FID, GC-MS, 1 H NMR and/or 2 9Si NMR. The cyclic siloxazane, - SiMe 2 OSiMe 2 C 3 H 6 NH -, was purified by a distillation method as described in EP 0342518A2 and gave isolated yields of 65% to 85%. Reisch at page 19-21, [0049] and Table , emphasis added . It should be noted that the Reisch Example 5 a-b is identical with the working Example 5 a-b disclosed by the instant application . See the instant specification at page 43-44, [0111], example 5. Reisch Example 5 a-b method comprises: 1) . combining starting materials comprising : i) allylamine, h) Pt source catalyst , c) allyloxy-methyl-(2,4,6-tri-isopropyl-phenyl)silane (ATM) or (1-methyl-2-propyn-1-yl)oxy-diphenylsilane (M1PP) as a promoter ; thereby forming a reaction mixture, and thereafter 2) intermittently adding to the reaction mixture: d) 1,1,3,3-tetramethyldisiloxane (TMDSO) over time. The Reisch Example 5 a-b method meets each and every limitation of claim 7, therefore, claim 7 is anticipated. 35 USC § 102(a)(2) Rejection Over B. Rekken , et al, US11,760,839B2 (202 3 )(“ Rekken ”) Claim s 7 and 14-15 rejected under 35 U.S.C. 102(a)(2) as being anticipated by B. Rekken , et al, US 11,760,839 B2 (2023)(“ Rekken ”). Rekken is effective prior art under 35 USC § 102(a)(2) respecting the subject matter cited as of the filing date of Rekken ’s priority document US 62/9404 14 ( 11/26/2029 ) because: (1) Rekken is a US patent ; (2) names another inventor; and (3) the subject matter of Reisch relied upon in this rejection is disclosed in Rekken ’s priority document US62/9404 14 (11/26/20 1 9) . See MPEP § 2154.01; 35 USC § 102(d). Rekken teaches a process for preparing a cyclic polysiloxazane comprises: 1) combining starting materials comprising a) an allyl-functional amine, b) a platinum catalyst capable of catalyzing hydrosilylation reaction, c) a hydrosilylation reaction promoter (hydrocarbyloxy-functional di-hydrocarbylsilane) of formula 2) adding to the reaction mixture: d) an SiH-terminated siloxane oligomer of formula Rekken at col. 2, line 30 to col. 3, line 16. The Rekken hydrosilylation reaction promoter and the Rekken SiH-terminated siloxane oligomer is identical with the hydrosilylation reaction promoter and the SiH-terminated siloxane oligomer respectively claimed by the instant claims 1-2. Rekken teaches working examples for the process for preparing a cyclic polysiloxazane comprises , such as Example 5 as below. In this Working Example 5: cyclic siloxazane of formula - SiMe 2 O SiMe 2 C 3 H 6 NH- was prepared by the process of this invention where the mole ratio of allylamine to TMDSO was 2:1 or greater and the TMDSO was added to the allylamine. Quantities are given in the Table below. First, a Pt-Promoter solution was mixed with the allylamine and any solvent at RT in a glass reaction flask with a thermocouple, magnetic stir bar, and a condenser cooled to between -5 “ C to -20 “ C. The allylamine/catalyst solution was then heated to reflux temperature. The TMDSO was fed into the mixture over time and produced copious amounts of hydrogen within moments after addition, typically less than 5 seconds. The solution temperature gradually increased during the addition of TMDSO and also when feeding the TMDSO was halted as long as heat is put into the system. After feeding TMDSO was complete, the mixture was set to a temperature and stirred for 1 hour to 5 hours and then cooled to RT. The product, cyclic siloxazane, - SiMe 2 OSiMe 2 C 3 H 6 NH -, was characterized by GC-FID, GC-MS, 1 H NMR and/or Si NMR. The cyclic siloxazane, - SiMe 2 OSiMe 2 C 3 H 6 NH -, was purified by a distillation method as described in EP 0342518A2 and gave isolated yields of 65% to 85%. Rekken at col. 30, line 39 to col. 31, line 22. It should be noted that the Rekken Example 5 b-c is identical with the working Example 5 a-b disclosed by the instant application . See the instant specification at page 43-44, [0111], example 5. Rekken Example 5 b-c method comprises: 1). combining starting materials comprising : i) an allyl amine, h) Pt source catalyst , c) allyloxy-methyl-(2,4,6-tri-isopropyl-phenyl)silane (ATM) or (1-methyl-2-propyn-1-yl)oxy-diphenylsilane (M1PP) as a promoter ; thereby forming a reaction mixture, and thereafter ; 2) intermittently adding to the reaction mixture: d) 1,1,3,3-tetramethyldisiloxane (TMDSO) over time. The Rekken Example 5 b-c method meets each and every limitation of claim 7, therefore, claim 7 is anticipated. Regarding claim 14, Rekken teaches a process for preparing an amino-functional organosilicon compound comprises: 1) combining starting materials comprising: A) the cyclic polysiloxazane prepared by the general method taught by Rekken, and D) a silanol-functional organosilicon compound; thereby preparing a reaction product comprising the amino-functional organosilicon compound; and optionally 2) recovering the amino-functional organosilicon compound. Rekken at col. 15, line 12-25. The Rekken process for preparing an amino-functional organosilicon compound meets each and every limitation of claim 14, therefore, claim 14 is anticipated. Regarding claim 1 5 , Rekken teaches a process for preparing the α-alkoxy-ω-amino-functional polysiloxane comprises: I) combining starting materials comprising A) the cyclic polysiloxazane prepared by the process described above, and B) an alcohol of formula R 10 OH, where R 10 is an alkyl group of 1 to 8 carbon atoms; thereby preparing a reaction product comprising C) an α-alkoxy-ω-amino-functional polysiloxane of formula where each R 8 , R 9 , R 10 , and subscript x are as described above; and optionally II) purifying the reaction product to recover C) the α-alkoxy-ω-amino-functional polysiloxane. Rekken at col. 23, line 37-60. The Rekken process for preparing the α-alkoxy-ω-amino-functional polysiloxane meets each and every limitation of claim 15, therefore, claim 15 is anticipated. 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 35 USC § 10 3 Rejection Over S. Reisch, et al, WO2021108067A1 (2021)(“Reisch”) Claims 1-4, 6 , 8 -1 4 are rejected under 35 U.S.C. 103 as being unpatentable over S. Reisch, et al, WO2021108067A1 (2021)(“ Reisch ”). S. Reisch, et al, WO2021108067A1 (2021)(“Reisch”) As mentioned above that Reisch teaches a new hydrocarbyloxy-functional arylsilane that can be as a hydrosilylation reaction promoter. Reisch at page 1-2, [0005]. Reisch teaches the follows three compounds as example compound of his hydrocarbyloxy-functional arylsilane . Reisch at page 4-5, [0010]. It should be noted that the Reisch three example compound s have the same chemical structures as those of the last three species claimed by the instant claim 6 . Thus, the Reisch example compound ( s ) meets each and every structural limitation of the hydrosilylation reaction promoter claimed by the instant claims 1 and 6. Reisch teaches that t he hydrocarbyloxy-functional arylsilane described above may be used in a process for preparing a cyclic polysiloxazane comprising: 1) combining starting materials comprising : i) an allyl-functional amine , h) the hydrosilylation reaction catalyst described above, c) the hydrocarbyloxy-functional arylsilane described above; thereby forming a reaction mixture, and thereafter 2)adding to the reaction mixture: d) an SiH-terminated siloxane oligomer of formula each R 8 is an independently selected monovalent hydrocarbon group of 1 to 18 carbon atoms and subscript x is 1 or 2; thereby preparing the cyclic polysiloxazane. Starting materials h) and c) may be combined to form the promoted catalyst, described above, before step 1). Alternatively, the promoted catalyst may be formed in situ by combining starting materials i), h), and c) in step 1). Reisch at page 9-10, [0026], emphasis added. The Reisch SiH-terminated siloxane oligomer has the same structural limitation as those SiH-terminated siloxane oligomer claimed by claims 1-2 . Reisch teaches that the SiH-terminated siloxane oligomer alternatively can be 1,1,3,3-tetramethyldisiloxane (TMDSO) . Reisch at page 11, [0029], the last sentence , emphasis added. Reisch teaches that the allyl-functional amine may have formula of , where each R 9 is independently selected from the group consisting of hydrogen and an alkyl group of 1 to 15 carbon atoms . Reisch at page 10, [0027]. It should be noted that the Reisch allyl-functional amine has the same structural limitation as that claimed by the instant claim 3. Reisch teaches that the catalyst in his method is a platinum catalyst. Reisch at page 8, [0022], line 1. Reisch also teaches a dditional d etail about the p rocess s teps as: [0033] Step 1) of the process for preparing the cyclic polysiloxazane described herein comprises combining starting materials comprising i) the allyl-functional amine, h) the platinum catalyst capable of catalyzing hydrosilylation reaction, c) the hydrocarbyloxy-functional arylsilane, and optionally e) the solvent, as described above. Combining in step 1) may be performed by mixing the starting materials i), h), and c) to form a reaction mixture, and heating the reaction mixture to a temperature up to 140°C, alternatively up to 110°C , alternatively up to 95°C, and alternatively 50°C to 140°C. [0034] Alternatively, starting material h), the platinum catalyst, and starting material c), the hydrocarbyloxy-functional arylsilane, may be combined before combining starting material i), the allyl-functional amine in step 1). For example, starting material h) and starting material c) may be combined by mixing, optionally in the presence of e) a solvent, under ambient conditions (RT and ambient pressure) for at least 1 h, alternatively at least 4 h, alternatively 4 h to 6 months, before combining with starting material i) in step 1). [0035] In step 2) of the process for making the cyclic polysiloxazane, step 2) may be performed at a temperature of 20°C to 150°C , alternatively 50°C to 150°C, alternatively 70°C to 110°C and alternatively 70°C to < 100°C. Without wishing to be bound by theory, it is thought that adding d) the Si-terminated siloxane oligomer either incrementally or slowly over time may improve safety of the process described herein. By controlling temperature and the addition of a reactant, potential for uncontrolled exothermic reaction may be minimized . [0036] The process may optionally further comprise step 3) purifying the cyclic polysiloxazane after step 2) . For example, the process described above may produce a crude product comprising the cyclic polysiloxazane, unreacted starting materials, and when used, solvent. Step 3) may be performed by stripping and/or distillation , optionally under vacuum, e.g., by heating up to 150°C; alternatively, up to 130°C; and alternatively, up to 120°C. Reisch at page 12, [0033]-[0036] , emphasis added . Reisch further teaches that the prepared cyclic polysiloxazane can be used as a capping agent for a silanol-functional polyorganosiloxane through reacting of the prepared cyclic polysiloxazane with a silanol-functional polyorganosiloxane to produce an amino-functional polyorganosiloxane , which may avoid one or more drawbacks associated with previous methods for preparing amine-terminated polyorganosiloxanes. Reisch at page 13 , [00 39 ] , emphasis added . Difference between Reisch and the Claims T he general method taught by Reisch differs from claims 1-2 in that Reisch does not specify the limitation of step (2) the SiH-terminated siloxane oligomer is intermittently added to the mixture of the step (1) . Reisch differs from claim 14 in that Reisch does not teach use specific working example to react a cyclic polysiloxazane with a silanol-functional polyorganosiloxane to produce an amino-functional polyorganosiloxane . Obvious Rational e of the Claims Claims 1-2 are obvious because one ordinary skill seeking cyclic polysiloxazane as a capping agent for a silanol-functional polyorganosiloxane is motivated to modify the general method taught by Reisch by intermittently adding the SiH-terminated siloxane oligomer to the mixture of step 1 thus arrive at a method meeting each and every limitation of claims 1-2, therefore, claims 1-2 are obvious. One ordinary skill is motivated to halt the addition of the Si-terminated siloxane oligomer as long as heat is produced and then then re-addition of the Si-terminated siloxane oligomer when the heat reduced. One ordinary skill is motivated to do so with a reasonable expectation of success because Reisch teaches that by controlling the addition of the Si-terminated siloxane oligomer the uncontrolled exothermic reaction may be minimized . Claims 3-4 are obvious because Reisch teaches that the allyl-functional amine can be allylamine (CH 2 =CH-CH 2 -NH 2 ) which anticipates claim 3 as each of R 9 is hydrogen atom. Reisch at page 10, [0028]. Claim 6 is obvious because one ordinary skill has a motivation to elect one of the three hydrocarbyloxy-functional arylsilane example compounds taught by Reisc h for the process . Reisch at page 4-5, [0010]. These Reisch three example compound s have the same chemical structures as those of the last three species claimed by the instant claim 6. Claim 8 and 10 are obvious because Reisch teaches that: [0034] Alternatively, starting material h), the platinum catalyst, and starting material c), the hydrocarbyloxy-functional arylsilane, may be combined before combining starting material i), the allyl-functional amine in step 1) . For example, starting material h) and starting material c) may be combined by mixing, optionally in the presence of e) a solvent , under ambient conditions (RT and ambient pressure) for at least 1 h, alternatively at least 4 h, alternatively 4 h to 6 months, before combining with starting material i) in step 1). Reisch at page 12, [003 4 ], emphasis added. Claim 9 is obvious because Reisch teaches the step (1) can be conducted at a temperature up to 1 1 0°C that: Combining in step 1) may be performed by mixing the starting materials i), h), and c) to form a reaction mixture, and heating the reaction mixture to a temperature up to 140°C, alternatively up to 110°C , . . . Reisch at page 12, [00 33 ], emphasis added , emphasis added . Claims 11 is obvious because one ordinary skill motivated to optimize the reaction condition of the step (2) into the claimed condition as Reisch teaches to control the reaction temperature and control addition of Si-terminated siloxane oligomer as follows: [0035] In step 2) of the process for making the cyclic polysiloxazane, step 2) may be performed at a temperature of 20°C to 150°C , alternatively 50°C to 150°C, alternatively 70°C to 110°C and alternatively 70°C to < 100°C. Without wishing to be bound by theory, it is thought that adding d) the Si-terminated siloxane oligomer either incrementally or slowly over time may improve safety of the process described herein . By controlling temperature and the addition of a reactant, potential for uncontrolled exothermic reaction may be minimized . Reisch at page 12, [0035], emphasis added. Therefore, one ordinary skill is motivated to conduct the step 2 at a temperature of 20°C to 150°C as taught by Reisch ; which anticipates the claimed 20°C to 20 0°C ; one ordinary is motivated to control the concentration of the Si-terminated siloxane oligomer because Reisch teaches that by controlling the addition of the Si-terminated siloxane oligomer the uncontrolled exothermic reaction may be minimized ; one ordinary skill is also motivated to halt the addition of the Si-terminated siloxane oligomer as long as heat is produced and then then re-addition of the Si-terminated siloxane oligomer when the heat reduced. With regards the claimed concentration of SiH derived from the addition of the Si-terminated siloxane oligomer , generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05. II . Herein, the instant application does not provide evidence the claimed concentration is critical. [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation MPEP 2144.05. II. Claim 12 is obvious because Reisch teaches that distillation can be used to purify the formed cyclic polysiloxazane after step 2) . See Reisch at page 12, [0036] . O ne ordinary skill is also motivated to purging the distillation system with an inert gas because Reisch teaches that “ flowing inert gas though the reactor headspace may help to remove low-boiling impurities from the system ”. Reisch at page 5 , the last sentence. Claim 13 is obvious because the conduction of step 5 is not required in claim 1. Claim 14 is obvious because one ordinary skilled is further motivated to react of the produced cyclic polysiloxazane with a silanol-functional polyorganosiloxane so that can form an amino-functional polyorganosiloxane because Reisch teaches that the reaction can avoid one or more drawbacks associated with previous methods for preparing amine-terminated polyorganosiloxanes. Reisch at page 13 , [00 39 ]. 35 USC § 10 3 Rejection Over B. Rekken, et al, US11,760,839B2 (2023)(“Rekken”) Claims 1-4, 6 , 8 -1 3 are rejected under 35 U.S.C. 103 as being unpatentable over B. Rekken, et al, US11,760,839B2 (2023)(“Rekken”). B. Rekken, et al, US11,760,839B2 (2023)(“Rekken”) Rekken teaches a process for preparing a cyclic polysiloxazane comprises: 1) combining starting materials comprising a) an allyl-functional amine, b) a platinum catalyst capable of catalyzing hydrosilylation reaction, c) a hydrosilylation reaction promoter (hydrocarbyloxy-functional di-hydrocarbylsilane) of formula 2) adding to the reaction mixture: d) an SiH-terminated siloxane oligomer of formula Rekken at col. 2, line 30 to col. 3, line 16. The Rekken hydrosilylation reaction promoter and the Rekken SiH-terminated siloxane oligomer is identical with the hydrosilylation reaction promoter and the SiH-terminated siloxane oligomer respectively claimed by the instant claims 1-2 . Rekken teaches that the allyl-functional amine may have formula of , where each R 9 is independently selected from the group consisting of hydrogen and an alkyl group of 1 to 15 carbon atoms . Rekken at col. 3, line 20-30. It should be noted that the Rekken allyl-functional amine has the same structural limitation as that claimed by the instant claim 3 . Rekken further teaches that the allyl-functional amine can be ally l amine (CH 2 =CH-CH 2 -NH 2 ). Rekke n at col. 3, line 51. Rekken teaches 10 example compound of the promoter. Rekken at col. 6, line 1 to col. 7, line 35. The 10 example compound of the promoter taught by Rekken has the same chemical structure respectively as the claimed 10 species in the instant claim 6. Rekken also teaches a dditional d etail about the p rocess s teps as: Step 1) of the process described herein comprises combining starting materials comprising a) the allyl-functional amine, b) the platinum catalyst capable of catalyzing hydrosilylation reaction, c) the hydrosilylation reaction promoter and optionally e) the solvent , as described above. Combining in step 1) may be performed by mixing the starting materials a), b), and c) to form a reaction mixture, and heating the reaction mixture to a temperature up to 150° C., alternatively up to 120° C., alternatively up to 110° C ., alternatively up to 95° C., and alternatively 50° C. to 150° C. Alternatively, starting material b), the platinum catalyst, and starting material c), the hydrosilylation reaction promoter, may be combined before combining starting material a), the allyl-functional amine in step 1) . For example, starting material b) and starting material c) may be combined by mixing, optionally in the presence of a solvent, under ambient conditions (RT and ambient pressure) for at least 1 day, alternatively at least 1 week, alternatively 2 weeks, alternatively 1 month, alternatively at least 4 h, and alternatively 4 h to 4 months, before combining with starting material a) in step 1). When starting material c) contains a carbon-carbon triple bond, it is combined with starting material b) the platinum catalyst before combining the resulting mixture with either starting material a) the allyl-functional amine or d) a SiH-terminated siloxane oligomer. The mixture prepared by combining starting materials b) and c) may be aged for at least 1 week at room temperature, alternatively 2 weeks, alternatively 1 month before combining with starting material a) or starting material d). Alternatively, if starting materials b) and c) are mixed at elevated temperature, e.g., >30° C. to 90° C., the aging time may be reduced. In step 2) of the process for making the cyclic polysiloxazane, step 2) may be performed at a temperature of 20° C. to 200° C., alternatively 50° C. to 150° C., alternatively 70° C. to 110° C. and alternatively 70° C. to <110° C. Without wishing to be bound by theory, it is thought that adding d) the Si-terminated siloxane oligomer either incrementally or slowly over time may improve safety of the process described herein. By controlling temperature and the addition of a reactant, potential for uncontrolled exothermic reaction may be minimized . The process may optionally further comprise step 3) purifying the cyclic polysiloxazane after step 2) . For example, the process described above may produce a crude product comprising the cyclic polysiloxazane, unreacted starting materials, and when used, solvent. Step 3) may be performed by stripping and/or distillation , optionally under vacuum, e.g., by heating up to 120° C. Rekken at col. 11, line 60 to col. 12, line 47, emphasis added. Rekken also teaches that flowing inert gas through the reactor headspace may help to remove odors and low boiling impurities from the system . Rekken at col. 25 , line 23-26. Obvious Rational e of the Claims Claims 1-4, 6, 8-13 are obvious for the same reasons as given for the 103 rejection over S. Reisch, et al, WO2021108067A1 (2021)(“Reisch”) above . Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). Nonstatutory Double Patenting Rejection over US 11772084B2 (2023) Claims 1-4, 6- 10 and 14- 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 9-14 of US patent 11772084B2 (2023). T he C onflicting C laim s Regarding claims 1- 2 , t he conflicting claim 1 claims a process for preparing a cyclic polysiloxazane comprises: 1) combining starting materials comprising a) an allyl-functional amine, b) a platinum catalyst capable of catalyzing hydrosilylation reaction, c) a hydrosilylation reaction promoter (hydrocarbyloxy-functional di-hydrocarbylsilane) of formula 2) adding to the reaction mixture: d) an SiH-terminated siloxane oligomer of formula The hydrosilylation reaction promoter and the SiH-terminated siloxane oligomer claimed by the conflicting claim 1 respectively is identical as the hydrosilylation reaction promoter and the SiH-terminated siloxane oligomer respectively claimed by the instant claims 1-2. Regarding cla ims 3-4, t he conflicting claim s 2-3 claims the same structure of the allyl-functional amine as the instant claim 3-4 respectively. Regarding claim 6, t he conflicting claim 4 claims the same 10 species of the promoter as the instant claim 6. Regarding claim 7 , the conflicting claim 5 claims the same 2 species of the SiH-terminated siloxane oligomer as the instant claim 7 . Regarding claim 8 , the conflicting claim 9 claims : The process of claim 1, where starting material e), a solvent, is added during and/or after step 1) Regarding claim 9 , the conflicting claim 10 claims: The process of claim 1, where combining in step 1) is performed by mixing starting materials a), b), and c); and heating the reaction mixture to a temperature up to 110° C . Regarding claim 10 , the conflicting claim 1 1 claims: The process of claim 1, where starting material b), the platinum catalyst, and starting material c), the hydrosilylation reaction promoter, are combined before combining starting material a), the allyl-functional amine. Regarding claim 1 4, the conflicting claim 1 3 claims : A process for preparing an amino-functional organosilicon compound comprising: pre-1) preparing A) a cyclic siloxazane by practicing the process of claim 1; 1) Combining starting materials comprising: A) the cyclic siloxazane, and D) a silanol-functional organosilicon compound; thereby preparing a reaction product comprising the amino-functional organosilicon compound; optionally 2) recovering the amino-functional organosilicon compound; and optionally, before step 2), adding to the reaction mixture E) an acid precatalyst. Regarding claim 1 5 , the conflicting claim 1 4 claims: A process for preparing an α-alkoxy-ω-amino-functional polysiloxane comprising: pre-1) preparing A) a cyclic siloxazane by practicing the process of claim 1; I) combining starting materials comprising A) the cyclic siloxazane, and B) an alcohol of formula R 10 OH, where R 10 is an alkyl group of 1 to 8 carbon atoms; thereby preparing a reaction product comprising C) the α-alkoxy-ω-amino-functional polysiloxane of formula and optionally II) purifying the reaction product to recover C) the α-alkoxy-ω-amino-functional polysiloxane. Difference Between the C onflicting C laim s and the instant Claims The instant c laims 1 ,3 -4, 6-10 and 14-15 differs from the conflicting claims 1-5, 9- 11, 13-14 respectively only in that the conflicting claim 1 does not claim the SiH-terminated siloxane oligomer is intermittently added to the mixture of the step (1) . T he conflicting claim 1 further differs the instant claim 2 in that the conflicting claim 1 does not claim to conduct a step of distillation after the step (2) to purify the produced cyclic siloxazane . C laims 1-4, 6-10 and 14-15 are Obvious The instant claims 1,3-4, 6-10 and 14-15 are obvious because one ordinary skill is motivated to modify the method claimed by the conflicting claim 1 through adjusting the manner for the addition of the SiH-terminated siloxane oligomer ( such as in portions ) to the mixture of the step (1) so that to conduct the reaction at a mild condition , thus arrive at the claimed method (s) . [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation MPEP 2144.05. II. Claim 2 is obvious because one ordinary skill is also motivated to further purify the cyclic siloxazane produced in the proposed method by distillation given distillation is a usual purification method used in chemistry lab, thus arrive at a method meeting each and every limitation of claim 2. Terminal Disclaimer A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT FRANK S. HOU whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1802 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 6:30 am-2:30 pm Eastern on Monday to Friday . 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, FILLIN "SPE Name?" \* MERGEFORMAT Scarlett Goon can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)2705241 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /FRANK S. HOU/ Examiner, Art Unit 1692 /ALEXANDER R PAGANO/ Primary Examiner, Art Unit 1692
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Prosecution Timeline

Aug 04, 2023
Application Filed
Dec 17, 2025
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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3y 2m
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