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 Interpretation
Most of the claims reference an “aldehyde (ketone)”. The Examiner understands this portion of the disclosure to denote an aldehyde and a ketone in the alternative, as opposed to “(ketone)” being another way of expressing “aldehyde”, or even connoting a sub-genus of aldehyde compounds as is sometimes seen in the construction of claims. While the Examiner is confident of his construal, Applicant is still strongly encouraged to instead disclose “aldehyde/ketone” or, even better, “aldehyde or ketone” so there can be no doubt as to Applicants’ intentions.
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.
Claim 8 is 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.
In the previous Office communication, the Examiner had inadvertently characterized claim 9 as saying that the solvent is “various polar- or non-polar solvents”, the word “various”, itself, being an indefinite claim concept. The Examiner then speculated that it was likely that Applicant meant that one of the various polar-, non-polar solvents could be enlisted. Applicant made minor modifications of claim 9, which is perhaps understandable given that it was, due to typographical error, listed as being subject to rejection, but did not address claim 8 where the specified problematic subject matter had been disclosed.
As an aside, the Examiner is not in agreement with Applicant’s stance that a skilled practitioner of the instant invention would recognize the differences between a small molecule siloxane, an oligosiloxane, and a polysiloxane as Applicant had intended them. Indeed, the meaning attached to these varies from disclosure to disclosure. For instance, whereas Applicant argues that small molecule siloxane would be inclusive of cyclic D3, D4, and D5, and that a person of ordinary skill in the art would recognize them as such, U.S. Patent Application Publication No. 2009/0192282 at [0031] and the attached partial description of JP 2014-070123 both identify these same compounds as oligosiloxanes. The Examiner continues to maintain that one of ordinary skill would not be able to differentiate between these based on the subject matter of the original disclosure alone. The rejection is, nevertheless, removed only because the aforementioned three types of siloxane compound would cover all permutations of a siloxane compound and the rejection is only merited if one of these were deleted from the claims because it would then be unclear as to what would then be excluded.
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.
Claim 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xuehai et al., CN 101585917.
Claim 1 is a method claim from which claim 16 depends and is related as process of making and product made with the latter being expressed in a product-by-process format. "Even 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).
Claim 1 now stipulates that the mol ratio of the amine-functional organosilicon compound, aldehyde/ketone, and bisphenol compound are combined in a molar ratio of 1:6-20:1-20. (Claim 10, now cancelled, had required that these be mixed in a mol ratio of 1:1-20:1-20.) Although method claim 1 differs from original method claim 10 in a manner that renders claim 1 allowable over the prior art of record whereas claim 10 had been rejected, the Examiner does not perceive that this difference would make the product derived therefrom patentably distinct. That is to say, amended claim 1 differs from original claim 10 in that it mandates that there be at least 6 moles of the aldehyde/ketone relative to 1 mol of the organosilicon compound having two amine moieties. Based on the mechanism by which a compound bearing two amine groups, an aldehyde/ketone, and bisphenol compound are reacted to provide a product compound featuring benzoxazole residues, four equivalents of the formaldehyde precursor would be needed. Present claim 1 effectively recites the employment of a 6/4 = 1.5-fold excess of the formaldehyde but this is not believed to result in the formation of a distinct product. Hence, while the amendment to claim 1 does indeed overcome the rejection of the claims directed to methods of making the claimed dispersant agent, product-by-process claim 16 is still believed to be indistinct from the prior art product.
The aforementioned difference constitutes the lone foundation on which the rejection of the method claims is withdrawn. That the prior art does not characterize the prior art, patentably-indistinct, product as fulfilling the role of a high temperature resistant dispersing agent is immaterial. Certainly, the prior art products are capable of being used in this capacity given that they would share the same structural attributes in common with the claimed dispersants. The prior art products are not required to exhibit the same levels of char yield and thermal weight loss as is mentioned in the arguments although, once more, the claimed and prior art products are believed to be sufficiently similar that the latter are expected to inherently be in possession of the same properties as the former.
Allowable Subject Matter
Claims 1, 3-5, 7, 9, 11-15, and 17-18 are allowable. Claim 8 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.
No additional references more germane than those already of record were found in an updated/modifed survey of the prior art.
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 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.
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May 18, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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