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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 1: Room temperature will be interpreted as 25 oC.
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 7 and 9 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 7: It is unclear if the text within the parentheses (n=3 to 8) is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parenthesis further limits the claim.
Claim 9: It is unclear what 50 oC below corresponds to, therefore claim 9 is indefinite. For the purpose of further examination, 50 oC below will be interpreted as 20 oC to 40 oC (see instant specification [28]).
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jia et al. (WO 2020/082359).
Regarding claim 1: Jia et al. (WO ‘359) discloses silicone compositions for additive manufacturing by printing the composition with a 3D printer [abstract; pg. 1, ln. 6-8], wherein Example 10 [Ex. 10; pg. 24, ln. 3-11; Table 2-1, Ex. 10] prepares a composition containing 57.28 parts A-1 (vinyl terminated polydimethylsiloxane [Table 1]), 7.05 parts (A-2 vinyl terminated polydimethylsiloxane [Table 1]), 2.16 parts B-1 (poly(methylhydrogeno)(dimethyl)siloxane [Table 1]), 1.72 parts B-2 (poly(methylhydrogeno)(dimethyl)siloxane [Table 1]), 1.72 parts B-3 (poly(methylhydrogeno)(dimethyl)siloxane [Table 1]), 0.017 part C-1 (Pt catalyst [Table 1]), 24.59 parts D-1 (treated fumed silica [Table 1; pg. 14, ln. 6-12]), 0.36 parts F-1 (2,4,6,8-tetramethyl-2,4,6,8-tetravinylcyclotetrasiloxane [Table 1]), 0.36 parts F-2 (ethynylcyclohexanol; inhibitor [Table 1; pg. 17, ln. 25 – pg. 16, ln. 1]), and 4.9 parts G-1 (methyl polysiloxane; 50 mPa·s; tackifier [Table 1]). The resulting composition has a viscosity [pg. 25, ln. 8-12] of 397000 mPa·s (397 Pa·s) [Ex. 10; pg. 24, ln. 3-11; Table 2-1, Ex. 10].
The claimed effects and physical properties, i.e. a viscosity change value is smaller than or equal to 10% after storage at room temperature for more than 30 days [instant claim 1], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 2: Jia et al. (WO ‘359) discloses mixing A-1, A-2 and D-1. F-1 is added and then mixed sufficiently. B-1, B-2, B-3 are added and stirred, following with C-1 (additional incorporation of F-2 and G-1) [Ex. 10; pg. 24, ln. 3-11; Table 2-1, Ex. 10].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al. (WO 2020/082359) in view of Hou (WO 2020/228363) (English machine translation for citation).
Regarding claim 3-5 and 8: Jia et al. (WO ‘359) discloses silicone compositions for additive manufacturing by printing the composition with a 3D printer [abstract; pg. 1, ln. 6-8], wherein Example 10 [Ex. 10; pg. 24, ln. 3-11; Table 2-1, Ex. 10] prepares a composition containing 57.28 parts A-1 (vinyl terminated polydimethylsiloxane [Table 1]), 7.05 parts (A-2 vinyl terminated polydimethylsiloxane [Table 1]), 2.16 parts B-1 (poly(methylhydrogeno)(dimethyl)siloxane [Table 1]), 1.72 parts B-2 (poly(methylhydrogeno)(dimethyl)siloxane [Table 1]), 1.72 parts B-3 (poly(methylhydrogeno)(dimethyl)siloxane [Table 1]), 0.017 part C-1 (Pt catalyst [Table 1]), 24.59 parts D-1 (treated fumed silica [Table 1; pg. 14, ln. 6-12]), 0.36 parts F-1 (2,4,6,8-tetramethyl-2,4,6,8-tetravinylcyclotetrasiloxane [Table 1]), 0.36 parts F-2 (ethynylcyclohexanol; inhibitor [Table 1; pg. 17, ln. 25 – pg. 16, ln. 1]), and 4.9 parts G-1 (methyl polysiloxane; 50 mPa·s; tackifier [Table 1]). Jia et al. (WO ‘359) discloses mixing A-1, A-2 and D-1. F-1 is added and then mixed sufficiently. B-1, B-2, B-3 are added and stirred, following with C-1 (additional incorporation of F-2 and G-1) [Ex. 10; pg. 24, ln. 3-11; Table 2-1, Ex. 10].
Jia et al. (WO ‘359) does not disclose the process steps in the same order of instant claim 3. However, a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
Jia et al. (WO ‘359) does not disclose heating the first mixture and holding for a first time; heating the second mixture and holding for a second time; cooling the second mixture. However, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Jia et al. (WO ‘359) does not disclose vacuum defoamation and filtration under pressure. However, Hou (WO ‘363) discloses liquid silica gel for 3D printing [abstract], wherein the composition for three-dimensional printing undergoes vacuum degassing and pressure filtration [0031; claim 8]. Jia et al. (WO ‘359) and Hou (WO ‘363) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polysiloxane compositions for three-dimensional printing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined vacuum degassing and pressure filtration after the composition has been prepared, as taught by Hou (WO ‘363) in the invention of Jia et al. (WO ‘359), and would have been motivated to do so since Hou (WO ‘363) suggests vacuum degassing and pressure filtration affords excellent extrusion smoothness and stability, which improves printing speed and precision [0100].
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al. (WO 2020/082359) in view of Hou (WO 2020/228363) (English machine translation for citation) as applied to claim 3 above, and further in view of Degroot et al. (WO 2020/051039).
Regarding claim 6: Jia et al. (WO ‘359) and Hou (WO ‘363) disclose the basic claimed method [as set forth above with respect to claim 3]; wherein Jia et al. (WO ‘359) discloses platinum catalysts [pg. 13, ln. 13-25].
Jia et al. (WO ‘359) does not disclose chloroplatinic acid as the catalyst. However, Degroot et al. (WO ‘039) discloses silicone compositions for 3D printing [abstract], wherein the catalyst can be chloroplatinic acid [0067-0068]. Jia et al. (WO ‘359) and Degroot et al. (WO ‘039) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polysiloxane compositions for three-dimensional printing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined chloroplatinic acid, as taught by Degroot et al. (WO ‘039) in the invention of Jia et al. (WO ‘359), and would have been motivated to do so since Degroot et al. (WO ‘039) suggests chloroplatinic acid as a hydrosilylation (addition reaction) catalyst [0067-0068].
Regarding claim 7: Jia et al. (WO ‘359) and Hou (WO ‘363) disclose the basic claimed method [as set forth above with respect to claim 3]; wherein Jia et al. (WO ‘359) discloses methyl polysiloxane (G-1); 50 mPa·s [Table 1; Table 2-1, Ex. 10]
Jia et al. (WO ‘359) does not disclose hexamethylcyclotrisiloxane. However, Degroot et al. (WO ‘039) discloses silicone compositions for 3D printing [abstract], wherein the composition can contain a low viscosity organopolysiloxanes, such as hexamethylcyclotrisiloxane and polydimethylsiloxanes [0084]. Jia et al. (WO ‘359) and Degroot et al. (WO ‘039) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polysiloxane compositions for three-dimensional printing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined hexamethylcyclotrisiloxane, as taught by Degroot et al. (WO ‘039) in the invention of Jia et al. (WO ‘359), and would have been motivated to do so since Degroot et al. (WO ‘039) suggests hexamethylcyclotrisiloxane and polydimethylsiloxanes as equivalent low viscosity organopolysiloxanes [0084] [see also MPEP 2144.06].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al. (WO 2020/082359) as applied to claim 1 above.
Regarding claim 10: Jia et al. (WO ‘359) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Jia et al. (WO ‘359) discloses printed layers having a diameter (height-width ratio of 1) of 50 to 3000 μm, preferably 100 to 500 μm [pg. 6, ln. 22-24].
Jia et al. (WO ‘359) does not specifically disclose a printed line width from 1 to 200 μm. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Allowable Subject Matter
Claim 9 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 combination of Jia et al. (WO 2020/082359) and Hou (WO 2020/228363) does not disclose heating the first mixture (polysiloxane containing carbon-carbon double bonds, tackifier, and platinum catalyst) to 50 oC to 80 oC in step S2, and in step S3, the second mixture (polysiloxane containing carbon-carbon double bonds, tackifier, platinum catalyst, and inhibitor) is cooled to 20 oC to 40 oC with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767