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 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 6-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dimitrova et al, WO2019190776A1.
Regarding claims 6-9, Dimitrova teaches a composition comprising a) polydiorganosiloxane with at least two OH or hydrolysable groups, b) a crosslinker, c) filler, d) filler treating agent, and e) a condensation curing catalyst, abstract. Specifically, Dimitrova teaches in Table 2a, page 16, that Base 2 comprises dimethyl hydroxyl terminated polydimethylsiloxane with a DP of about 550, and a dimethylhydroxy terminated polydimethylsiloxane with a DP of about 10. The hydroxyl terminated PDMS with a DP of about 550 reads on component (A) where R1 is a methyl group, a=2, R2 is a hydroxy group, b=0.0036, and there is no R3 group, the subscript of which, c, can be zero. The molecular weight of this polysiloxane, with DP of about 550, is about 40,792 g/mol, which anticipates the range of claim 7.
The dimethyl hydroxy terminated PDMS with a DP of 10 reads on component (B) where R8 is methyl, R9 is hydrogen, and m=10.
Dimitrova also teaches that the composition further comprises a catalyst, shown in table 2b page 17. The curing agent composition comprises an aminoalkyl silane and dimethyl tin dineodecanoate, both of which read on the catalyst (C) of claims 6, 8, and 9.
Regarding claims 10-13, Dimitrov teaches that the polymer mixture can further comprise solvents, ¶[0009].
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.
Claims 6-21 rejected under 35 U.S.C. 103 as being unpatentable over Dooley, B. US9683130.
Regarding claims 6, 8-13, Dooley teaches a composition for a liquid coating comprising a silanol terminated copolymer with a diphenylsiloxane repeat unit and a crosslinker selected from tetraethoxysilane, a trialkylsilane terminated polydialkylsiloxane, and/or one or more of a trialkoxysilyl terminated polymer, abstract.
Specifically, Dooley teaches in example 2, Col. 12, a composition comprising silanol terminated dimethylsiloxane-diphenylsiloxane copolymer (reads on component (B)), and triethoxysilylethyl terminated polydimethylsiloxane, which reads on component (A) of claim 1 where R1 is a methyl group, a=2, R2 is triethoxysilylethyl which also reads on general formula (3), b=2 to 0.067, based on a DP of 1 to 30, Col. 6 lines 29 and 33, which encompasses the claimed range for b. There is no R3 group, the subscript of which, c, can be zero. The composition further comprises cyclohexanone solvent, and titanium acetylacetonate catalyst in isopropyl alcohol, which reads on component (C) and claims 8 and 9. The cyclohexanone and the IPA read on the solvent of claims 10-13.
Dooley does not specify the degree of polymerization of the silanol terminated copolymer used in the examples, but Dooley teaches the structure of the silanol terminated copolymer, shown below, and the subscripts s and t are from 1-500 and 1-300 respectively, Col. 5 lines 23-24, which encompasses the claimed range for m in the polysiloxanediol formula (5).
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Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. 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).
Regarding claim 7, Dooley teaches the polysiloxane that reads on component (A) used in example 2 is triethoxysilylethyl terminated polydimethylsiloxane. Dooley does not explicitly state the molecular weight of this copolymer but in Col. 5 lines 42-67 and Col 6 lines 4-33, Dooley teaches that the trialkoxysilyl terminated polymer can be represented by formula (I), where the L groups are hydrocarbon linking groups and R1 is dialkylsiloxane, which is represented by the moiety shown in Col. 6 line 29, where x = 0-30, line 33. This structure is what matches the triethoxysilylethyl terminated PDMS of example 2, so calculating the molecular weight when x=1, it is about 1,252 g/mol. Calculating the molecular weight when x=30, it is about 4,518 g/mol. The range of possible molecular weights for the triethoxysilylethyl terminated polydimethylsiloxane fall within the claimed range.
Regarding claims 14-21, Dooley teaches coating the composition of example 2 on substrates, curing the coatings, and producing a film, Col. 12 lines 27-34.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765