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 .
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.
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (U.S. 2019/0292320) in view of Fu et al. (U.S. 2016/0289388).
With regard to claim 12, Watanabe et al. teaches a polyorganosiloxane is a polymer having a siloxane bond as a main chain, and is represented by, for example, the following general formula (1) [0068]:
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[0068] wherein R1 to R6 are independently selected from an organic functional group and a hydrogen atom, and a+b+c+d=1 is satisfied. R7 is selected from an organic group having 1 to 7 carbon atoms. One polyorganosiloxane according to the present embodiment is a polyorganosiloxane including an M unit (R1R2R3SiO1/2) at a content of 10% by mol or more relative to the total of silicon and a T unit (R6SiO3/2) at a content of 80% by mol or less relative to the total of silicon, the polyorganosiloxane having an alkoxy group bound to silicon, and a reactive functional group bound to silicon, other than an alkoxy group, wherein the polyorganosiloxane has the alkoxy group bound to silicon at a content of 0.07 to 4% by weight based on the total weight of the polyorganosiloxane and has 3 to 12 of the reactive functional groups bound to silicon on a number basis per a molecular weight of 1000 of the polyorganosiloxane [0069-0070] and examples of the reactive functional group include an acryloyloxypropyl group, an acryloyloxyoctyl group, a methacryloyloxypropyl group, and a methacryloyloxyoctyl group [0119]. Watanabe et al. also teaches a curable composition containing any of the above-mentioned polyorganosiloxanes is also according to another embodiment of the present invention. The composition may appropriately contain a curing catalyst and/or a chain polymerization initiator depending on a curing system. The curing catalyst and the chain polymerization initiator are not particularly limited as long as these can allow the polyorganosiloxanes described herein to be cured [0133]. Watanabe et al. further teaches The method for introducing the reactive functional group into the polyorganosiloxane according to the present embodiment is not particularly limited. For example, the reactive functional group can be introduced with, as a raw material, a disiloxane compound having the reactive functional group, a disilazane compound having the reactive functional group, an alkoxysilane compound of the M unit, the D unit or the T unit having the reactive functional group, a chlorosilane compound of the M unit, the D unit or the T unit having the reactive functional group, a cyclic siloxane compound having the reactive functional group, or the like. The reactive functional group here introduced may be converted into another reactive functional group according to a chemical procedure. For example, the reactive functional group can be converted into another reactive functional group by a method including converting the reactive functional group into another reactive functional group by a reaction of a polyorganosiloxane having an alkenyl group and a monofunctional thiol having a reactive functional group, a method including oxidizing an alkenyl group with an oxidizing substance for conversion into an epoxy group, a method including converting the reactive functional group into another reactive functional group by a reaction of a polyorganosiloxane having a hydrogen atom directly bound to a silicon atom and a vinyl compound having a reactive functional group, a method including ring-opening a cyclic ether group introduced into the polyorganosiloxane for conversion into an alcoholic hydroxyl group, or the like [0061].
Watanabe et al. does not explicitly disclose the polysiloxane resin having the concentration in mole-percent of OZ groups as claimed.
However, Fu et al. teaches a method of preparing a functional silicate resin composition comprising reacting (a) an MQ resin with (b) a monofunctional silane of the formula RR″2Si(OR′) in the presence of (c) a catalytic amount of a base to form an MM′Q resin having a general formula:
((CH3)3SiO1/2)m(RR″2SiO1/2)n(SiO4/2)o Formula (4)
wherein R is an organic functional group comprising an epoxy group, an acrylate group, a thiol group, an alkenyl group, a vinyl ether group, an amino group, a fluoro group, or any combination(s) thereof; R′ is a hydrogen atom or a hydrocarbon group having 1 to 4 carbon atoms; each R″ is independently an alkyl or aryl group having 1-20 carbon atoms; and m, n, o is the molar percent of each resin unit in the resin, m+n+o=1; and (d) optionally, an organic solvent [0015] wherein examples of the MQ resin include MQ resin powder with a structure of M0.43TOH0.12Q0.45 seen in Example 9 [0061] and examples of the monofunctional silane include methacryloxypropyl trimethoxysilane seen in Example 5 [0053] which corresponds to Applicant’s polysiloxane resin (A1) on pages 24-25 of the instant specification and therefore equivalent to a polysiloxane having siloxy units [R3SiO1/2], [(OZ)qSiO(4-q)/2] and at least one of [(OZ)tRMASiO(3-t)/2] or [(OZ)dRRMASiO(2-d)/2] in which R is a unsubstituted hydrocarbyl, RMA is
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where X is a divalent linking group and R1 is H or an alkyl group, Z is H or an alkyl group, q is 0-3, t is 0-2, d is 0-1 in which the average concentration of OZ groups is at least 12 mole-precent relative to moles of silicon atoms of instant claims 1 and 7, absent any evidence to the contrary. It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, both Watanabe and Fu teach polysiloxanes having a (meth)acrylate functional group using known methods.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Watanabe et al. to include other known methods such as those disclosed by Fu et al. and arrive at the instantly claimed polysiloxane through routine experimentation of substituting one synthesis method for another.
Claims 1, 3-7, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (U.S. 2019/0292320) in view of Fu et al. (U.S. 2016/0289388) and Sakamoto et al. (U.S. 5,391,588).
Watanabe et al. teaches a cured product obtained by curing of the curable composition is also according to another embodiment of the present invention. The curing procedure is not particularly limited, and a known technique with heat, ultraviolet light or the like can be appropriately applied depending on the type of the polyorganosiloxane [0154] and the polyorganosiloxane can be used in applications such as a viscosity adjuster, a compatibilizing agent, a lubricant, a dispersant, an aggregating agent, an adhesive, a pressure-sensitive adhesive, a release agent, a water-proofing agent, an oil-proofing agent, a coating agent, a surface modifier, a metal surface repairing agent, a flame retarder, a sealing material and a substrate for a semiconductor device such as an inorganic or organic light-emitting element, a coating material, and an optical member [0162] (claims 1 and 11). Watanabe et al. also teaches a polyorganosiloxane is a polymer having a siloxane bond as a main chain, and is represented by, for example, the following general formula (1) [0068]:
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[0068] wherein R1 to R6 are independently selected from an organic functional group and a hydrogen atom, and a+b+c+d=1 is satisfied. R7 is selected from an organic group having 1 to 7 carbon atoms. One polyorganosiloxane according to the present embodiment is a polyorganosiloxane including an M unit (R1R2R3SiO1/2) at a content of 10% by mol or more relative to the total of silicon and a T unit (R6SiO3/2) at a content of 80% by mol or less relative to the total of silicon, the polyorganosiloxane having an alkoxy group bound to silicon, and a reactive functional group bound to silicon, other than an alkoxy group, wherein the polyorganosiloxane has the alkoxy group bound to silicon at a content of 0.07 to 4% by weight based on the total weight of the polyorganosiloxane and has 3 to 12 of the reactive functional groups bound to silicon on a number basis per a molecular weight of 1000 of the polyorganosiloxane [0069-0070] and examples of the reactive functional group include an acryloyloxypropyl group, an acryloyloxyoctyl group, a methacryloyloxypropyl group, and a methacryloyloxyoctyl group [0119]. Watanabe et al. also teaches a curable composition containing any of the above-mentioned polyorganosiloxanes is also according to another embodiment of the present invention. The composition may appropriately contain a curing catalyst and/or a chain polymerization initiator depending on a curing system. The curing catalyst and the chain polymerization initiator are not particularly limited as long as these can allow the polyorganosiloxanes described herein to be cured [0133]. Watanabe et al. further teaches The method for introducing the reactive functional group into the polyorganosiloxane according to the present embodiment is not particularly limited. For example, the reactive functional group can be introduced with, as a raw material, a disiloxane compound having the reactive functional group, a disilazane compound having the reactive functional group, an alkoxysilane compound of the M unit, the D unit or the T unit having the reactive functional group, a chlorosilane compound of the M unit, the D unit or the T unit having the reactive functional group, a cyclic siloxane compound having the reactive functional group, or the like. The reactive functional group here introduced may be converted into another reactive functional group according to a chemical procedure. For example, the reactive functional group can be converted into another reactive functional group by a method including converting the reactive functional group into another reactive functional group by a reaction of a polyorganosiloxane having an alkenyl group and a monofunctional thiol having a reactive functional group, a method including oxidizing an alkenyl group with an oxidizing substance for conversion into an epoxy group, a method including converting the reactive functional group into another reactive functional group by a reaction of a polyorganosiloxane having a hydrogen atom directly bound to a silicon atom and a vinyl compound having a reactive functional group, a method including ring-opening a cyclic ether group introduced into the polyorganosiloxane for conversion into an alcoholic hydroxyl group, or the like [0061].
Watanabe et al. does not explicitly disclose the polysiloxane resin having the concentration in mole-percent of OZ groups as claimed.
However, Fu et al. teaches a method of preparing a functional silicate resin composition comprising reacting (a) an MQ resin with (b) a monofunctional silane of the formula RR″2Si(OR′) in the presence of (c) a catalytic amount of a base to form an MM′Q resin having a general formula:
((CH3)3SiO1/2)m(RR″2SiO1/2)n(SiO4/2)o Formula (4)
wherein R is an organic functional group comprising an epoxy group, an acrylate group, a thiol group, an alkenyl group, a vinyl ether group, an amino group, a fluoro group, or any combination(s) thereof; R′ is a hydrogen atom or a hydrocarbon group having 1 to 4 carbon atoms; each R″ is independently an alkyl or aryl group having 1-20 carbon atoms; and m, n, o is the molar percent of each resin unit in the resin, m+n+o=1; and (d) optionally, an organic solvent [0015] wherein examples of the MQ resin include MQ resin powder with a structure of M0.43TOH0.12Q0.45 seen in Example 9 [0061] and examples of the monofunctional silane include methacryloxypropyl trimethoxysilane seen in Example 5 [0053] which corresponds to Applicant’s polysiloxane resin (A1) on pages 24-25 of the instant specification and therefore equivalent to a polysiloxane having siloxy units [R3SiO1/2], [(OZ)qSiO(4-q)/2] and at least one of [(OZ)tRMASiO(3-t)/2] or [(OZ)dRRMASiO(2-d)/2] in which R is a unsubstituted hydrocarbyl, RMA is
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where X is a divalent linking group and R1 is H or an alkyl group, Z is H or an alkyl group, q is 0-3, t is 0-2, d is 0-1 in which the average concentration of OZ groups is at least 12 mole-precent relative to moles of silicon atoms of instant claims 1 and 7, absent any evidence to the contrary. It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, both Watanabe et al. and Fu et al. teach polysiloxanes having a (meth)acrylate functional group using known synthesis methods.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Watanabe et al. to include other known methods such as those disclosed by Fu et al. and arrive at the instantly claimed polysiloxane through routine experimentation of substituting one synthesis method for another. Watanabe et al. and Fu et al. both teach that a solvent is optional and can therefore be excluded (claims 3 and 4).
With regard to claims 5 and 6, Watanabe et al. teaches the polyorganosiloxane composition of the present embodiment can contain not only any of the above-mentioned polyorganosiloxanes, but also a monofunctional (meth)acrylate compound, a polyfunctional (meth)acrylate compound, and/or a (meth)acrylic polymer [0209] and examples of the polyfunctional (meth)acrylate compound include trimethylolpropane tri(meth)acrylate [0226], dipentaerythritol penta(meth)acrylate [0228], and/or dipentaerythritol hexa(meth)acrylate [0229] which are equivalent to (c) functional diluent comprising a polyfunctional acrylate compound of instant claims 1, 5, and 6.
Watanabe et al. and Fu et al. do not teach exposing the uncured layer to moisture.
However, Sakamoto et al. teaches the curable composition of the present invention can be obtained by mixing uniformly the above-described components, together with the optional compounding ingredients, as required. When irradiated with UV rays, the composition is readily cured in a short time of from 1 to 20 seconds to be a silicone rubber. The cured composition, or silicone rubber, is further cured in the presence of moisture in the atmosphere, whereby rubber properties are enhanced [col 11 lines 30-39] (claim 1). It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, Watanabe, Fu, and Sakamoto teach polysiloxanes having (meth)acrylate functional groups. Watanabe also teaches the composition can be cured using known techniques [00154] while Sakamoto teaches both UV and moisture curing.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply other known curing techniques such as those taught by Sakamoto et al. to other known curable compositions comprising polysiloxanes such as those of Watanabe modified by Fu et al. and arrive at the instant claims through routine experimentation with a reasonable expectation of success.
Claims 8 and 9 rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (U.S. 2019/0292320) in view of Fu et al. (U.S. 2016/0289388) and Sakamoto et al. (U.S. 5,391,588) as applied to claim 1 above, and further in view of Zha et al. (U.S. 6,818,721).
With regard to claims 8 and 9, Watanabe in view of Fu and Sakamoto teach the above composition and method thereof in which the composition is UV and moisture cured.
Watanabe, Fu, and Sakamoto do not teach UV curing through a photomask or removal of uncured regions via a solvent.
However, Zha et al. teaches a process for the preparation of an organosilicon condensate which comprises reacting together: (A) at least one silicon containing compound having at least one silanol group; and (B) at least one silicon containing compound having at least one --OR group wherein R represents an alkyl group having from 1 to 8 carbon atoms, or an alkoxyalkyl group having from 2 to 8 carbon atoms in the presence of (C) a calcium or magnesium catalyst selected to allow the reaction to proceed and (D) at least one solvent. The organosilicon condensate is a siloxane, and most preferably a polysiloxane [col 3 lines 8-21], preferably, the at least one silicon containing compound (B) is an alkoxysilane, which has from one to four alkoxy groups inclusive. Preferably, the alkoxy group (OR) is selected from the group consisting of methoxy, ethoxy, n-propoxy, i-propoxy, n-butoxy, i-butoxy, t-butoxy. Like the silanol, the alkoxy silane may also bear a crosslinkable group, for example, a double bond of the acrylate, methacrylate or styrene type [col 3 lines 47-54] in which example 18 illustrates UV curing and UV patterning applications of the inventive polycondensates, for producing integrated optical waveguides. To deposit a lower cladding layer, a polycondensate prepared according to Example 14 was diluted with cyclohexanone (4 wt %) containing 1 wt % of the photoinitiator Irgacure 1000. After vigorous mixing, the solution was filtered to 0.2 µm through a PTFE filter. A film was spin coated at 3000 rpm for 45 secs onto a silicon wafer, then flood exposed under a UV lamp. To form a core layer, a polycondensate prepared according to Example 8 was diluted with cyclohexanone (4 wt %) containing 1 wt % of the photoinitiator Irgacure 1000. After vigorous mixing, the solution was filtered to 0.2 µm through a PTFE filter, then a film was spin coated at 5000 rpm for 60 seconds. This layer was patterned via a UV proximity exposure in a mask aligner, with unexposed material then dissolved in propyl acetate to leave the desired waveguide core pattern. A top cladding layer was then deposited in the same manner as the lower cladding layer, and the process completed with a post bake at 170°C for 3 hours under vacuum [col 13 lines 1-21]. It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, Watanabe, Fu, Sakamoto, and Zha teach polysiloxanes having (meth)acrylate functional groups. Watanabe et al. also teaches the composition can be cured using known techniques including UV [00154], Sakamoto et al. teaches both UV and moisture curing, while Zha et al. teaches UV curing through a mask to create a pattern. Watanabe et al. further teaches applications such as a substrate for a semiconductor device such as an inorganic or organic light-emitting element, a coating material, and an optical member [0162] which typically have a pattern.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply other known curing techniques such as those taught by Zha et al. to other known curable compositions comprising polysiloxanes such as those of Watanabe modified by Fu et al. and Sakamoto and arrive at the instant claims through routine experimentation of combining equally suitable curing techniques with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 5,837,784 and U.S. 4,568,566.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 8:00-4:30 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737