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 .
This action is responsive to applicants’ amendment and response received May 4, 2026. Claims 1-15 and 17-22 are currently pending.
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 1-15 and 17-22 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. Applicants have amended claim 1 such that the siloxane compound now contains zero polydimethysiloxane groups. The examiner questions whether such a compound can exist. Previously up to 1000 PDMS units could be present and now it is zero, such that component A is now made up almost entirely of the [SiR9OR10] groups. If there are many of these groups together, and the claims have at least 10, and up to 1000, would not steric hindrance render such a compound impossible? Claim 7 has the minimum molecular weight of the compound at 2000 daltons, so there are many [SiR9OR10] groups present in the compound. If every [SiR9OR10] group has an R10 of at least 6 carbon atoms, the examiner maintains such a structure is impossible. Claim 17 has been amended to allow for zero PDMS groups, but claims 18 -21 have not. Claim 18 has a maximum of 80% [SiR9OR10] groups, which raises the question what else is present in component A if only 80% is [SiR9OR10] groups? Claim 19 allows for very small amounts of [SiR9OR10] groups. Again, what else comprises component A?
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.
The rejection of claims 1, 3-10, 15, and 17 under 35 U.S.C. 102a1 as being anticipated by Itagaki et al, US 5,916,090 are withdrawn in view of applicants’ amendment and response.
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 rejection of claims 1-13, and 15-22 under 35 U.S.C. 103 as being unpatentable over Nedelec et al, US 5,387,364 is withdrawn for the present, but may be reinstated when the issues raised above are addressed.
The rejection pf claims 1-22 under 35 U.S.C. 103 as being unpatentable over Nedelec et al, US 5,387,364 in view of Stenger, US 2021/0108159 364 is withdrawn for the present, but may be reinstated when the issues raised above are addressed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHARLES I BOYER whose telephone number is (571)272-1311. The examiner can normally be reached M-S 10-430.
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, Angela Brown-Pettigrew can be reached at 5712722817. 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.
/CHARLES I BOYER/Primary Examiner, Art Unit 1761
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