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 .
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 3, 9, and 17 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.
Concerning claim 3, because there is no development of the concepts of a small molecule siloxane, an oligosiloxane, and a polysiloxane, it is not possible to fully distinguish between these. Indeed, “oligosiloxanes” are generally recognized of one having ordinary skill as being siloxane polymers with a low degree of polymerization. “Small molecule siloxane” is an uncommon characterization and, seemingly, would be overlapping in scope with oligosiloxane given the latter’s typical meaning. The problem, from the Examiner’s perspective, is that it is not possible for someone operating in a similar inventive space to know whether or not they are infringing on Applicants’ invention. (The Examiner recognizes, incidentally that, by mentioning all of small molecule siloxanes, oligosiloxanes, and polysiloxanes, that Applicant basically covers siloxane compounds of any degree of polymerization. Questions of scope would arise however if, during this prosecution, one of these was removed as a means of attempting to invalidate a rejection.
Regarding claim 9, though it is presumed that Applicant might employ a single solvent as a reaction medium, or possibly a combination of miscible solvents if the reactants have differently solubility profiles, claim 9 says that the solvent is, “various polar- or non-polar solvents”, various itself being an indefinite claim concept. Likely, it was intended that one of various polar- or non-polar solvents could be enlisted.
As for claim 17, this is a very awkwardly worded claim, possibly an artifact of an improper translation of the foreign priority document. As an initial matter, “use” and “method” are redundant and Applicant is strongly encouraged to delete the former. Additionally, the so-called steps that follow, separated by semicolons, seem not to be steps defining a single method but, rather, appear to disclose different ways of utilizing the dispersing agent. The first of these, “directly serving as a dispersant to be used” doesn’t actually disclose anything more than what is recited in the preamble to the extent that it is made clear that the method involves a dispersing agent. The subject matter in quotes does not at all address the substance of how/in what way it is being used. From the subject matter that follows the first semicolon, i.e. “or adding a catalyst, a filler, and an auxillary to be used cooperatively”, it is surmised that Applicant intends that the dispersing agent is being used by combining it with these components. Again, this seems to be represent an alternative means of using the dispersing agent, particularly given that it begins with the conjunction “or”. The remaining description is suggestive that Applicant contemplates combining the siloxane/benzoxazine copolymer with other materials known to have dispersive capabilities.
The Examiner suggests that Applicant consider amending claim 16 to make clear that the method comprises combining the dispersing agent with other classes of material- catalysts and fillers obviously enjoy support but “auxillary” is so broad as to be effectively non-limiting- with the caveat that they should be careful to avoid introducing new subject matter.
Given the considerable number of outstanding issue in this five-line claim, it is really not possible to know what was its intended aim and breadth and, therefore, to evaluate as to its patentability over the prior art. Should Applicant amend or replace this claim with one for which the metes-and-bounds are clear, they are advised that the Examiner may then make a new prior art rejection and make the next Office action final.
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 1-12, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xuehai et al., CN 101585917.
Xuehei endeavors to prepare compounds that enjoy the benefits bestowed by siloxane polymers and polybenzoxazine resins [0010] by preparing copolymers featuring both linear siloxane chains and benzoxazine resins in the backbone [0012]. The structure of the copolymer is aptly represented by the formula at the top of page 3 of the original with the accompanying description of the variables being provided in the translation at [0016]. The wide range of values attached to “m” connote a polymer that would be recognized by one of ordinary skill as being derived from a small molecule siloxane, oligosiloxane, or polysiloxane. Relevant to the present discussion, the copolymer is prepared by reacting an amine-terminated polydiorganosiloxane, paraformaldehyde, and a bisphenol compound in the ratios set forth in [0020], said ratios being anticipatory of the limitations in claims 10 and 11. Suitable reactions conditions in terms of reaction temperature and duration are taught in [0021-0022] and these are anticipatory of the ranges set forth in claims 12 and 14. Organic solvents having application in the copolymer-forming systems according to [0030] include both non-polar (toluene/xylene) and polar (chloroform/acetone) compounds.
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.
Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Xuehai et al., CN 101585917.
To reiterate, acceptable periods of time and also temperature are addressed in [0021-0022] and the broader and preferred ranges are encompassing of, and overlapping respectively, of the ranges set forth in claims 13 and 15. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
CN 107629182 and CN 108164708 are two other disclosures, among several, that are anticipatory of most of the claims wherein ‘182 focuses on copolymers derived from an amino-functional disiloxane (small molecule/oligomer) and ‘708 is an essentially identical disclosure except that the amine-containing organosilicon compound used in the copolymer synthesis is a polysiloxane. In the name of brevity, and because these two disclosures address fewer permutations of the claimed invention than does Xuehai, no formal statement of rejection will be proffered over these at the present time. An article from the journal Polymer (2010) 51(5), 1124-1132 constitutes yet another foundation for rejection of many of the claims having taught a polysiloxane-benzoxazole copolymer derived from a combination of aromatic- and siloxane-containing diamines, a bisphenol, and paraformaldehyde.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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, Heidi Kelley can be reached at 571-270-1831. 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.
January 9, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765