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 § 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 8-9 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.
Claim 8 recites the limitation "the form" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the form" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amako et al. (US 2015/0001567).
Regarding claims 1-3: Amako et al. (US ‘567) discloses organosiloxane compositions [abstract; 0165], wherein the composition has melt flow temperatures of from 25 oC to 200 oC [0030]. Amako et al. (US ‘567) discloses the solid compositions can contain a resin-linear organosiloxane block copolymer and a superbase catalyst [0125; 0318], such as 1,8-diazabicyclo[5.4.0]undece-7-ene (DBU) [0134-0135; 0142] in an amount of 0.1 to 1000 ppm (0.00001-0.1 wt%) [0143]. Amako et al. (US ‘567) discloses the resin-linear organosiloxane block copolymer contains T-units (R2SiO3/2) [0099; 0101; 0195], silanol and/or alkoxy (hydrolyzable) groups [0198], and has a glass transition temperature (Tg) of about 50 oC to about 100 oC [0099], wherein R2 can be phenyl and/or methyl [0104]. Amako et al. (US ‘567) discloses the solid composition can contain additional components [0224; 0318] such as a silicon-containing small molecule stabilizer [0153; 0156] having a molecular weight not exceeding 1,000 g/mol {corresponding to x = 1-12 with R1 = Me} [0155] in an amount of about 0.1 wt% to about 0.5 wt% [0157].
Amako et al. (US ‘567) does not specifically disclose a pre-mix of superbase catalyst (ex. DBU) and silicon-containing small molecule, at a mass ratio of 1:99 to 90:10 However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared a pre-mix containing superbase catalyst and silicon-containing small molecule based on the invention of Amako et al. (US ‘567), and would have been motivated to do so since Amako et al. (US ‘567) suggests that the composition can contain 0.1 wt% (1000 ppm) superbase catalyst [0134-0135; 0143; 0318] and 0.1 wt% silicon-containing small molecule [0153; 0157; 0318] (corresponding to a 50:50 mass ratio). Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claims 4-6: Amako et al. (US ‘567) discloses the solid composition contains a phosphor, wherein the phosphor is incorporated using 3-roll mixing [0085-0087; 0307-0309].
Regarding claim 7: Amako et al. (US ‘567) discloses the solid composition is suitable for injection transfer molding [0226].
Regarding claims 8-9: Amako et al. (US ‘567) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Amako et al. (US ‘567) discloses the solid composition in the form of a film or pellets [0185] [instant claim 8], and can be ink-jet printed [0227] [instant claim 9].
The claimed effects and physical properties, i.e. the complex melt viscosity of the entire composition at 130 °C is 500,000 Pa·s or less [instant claims 8-9] would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 10: Amako et al. (US ‘567) discloses curing the composition [0229] to form an encapsulant [0319].
Regarding claim 11: Amako et al. (US ‘567) discloses applying the composition to a release film [0185].
Regarding claims 12-13: Amako et al. (US ‘567) discloses laminates [0226], wherein the composition is layered on a LED [0225].
Regarding claim 14: Amako et al. (US ‘567) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Amako et al. (US ‘567) discloses adding the superbase catalyst and stabilizer to the solid composition by stirring, vortexing, mixing, and/or 3-roll milling [0224; 0307-0308; 0318]. Amako et al. (US ‘567) discloses the solid composition is suitable for injection transfer molding for the production of a layered body [0225-0226]. Amako et al. (US ‘567) discloses forming the composition without solvent [0184; 0307; 0318].
Amako et al. (US ‘567) does not disclose process steps in the same order of instant claim 14. However, a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
Regarding claim 15: Amako et al. (US ‘567) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Amako et al. (US ‘567) discloses the solid composition is suitable for injection transfer molding for the production of a layered body [0225-0226-0228]. Amako et al. (US ‘567) discloses curing the composition [0229; 0319].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767