DETAILED ACTION
This office action is in response to communication filed on 6/12/2026.
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 .
Response to Amendment
Applicant’s amendments with respect to claims filed on 6/12/2026 has been entered. Claims 11-21 remain pending in this application and are currently under consideration for patentability under 37 CFR 1.104.
The amendments and remarks filed on 6/12/2026 are sufficient to cure the previous specification objections set forth in the Non-Final office action mailed on 3/12/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-17 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-22 and 29 of copending Application No. 18/268,339 (hereinafter 339’) in view of Mochizuki (US 20210387057 A1).
Regarding claim 11, 339’ teaches a polymer electrolyte suitable for use in lithium-ion secondary batteries being obtained by reaction between:
i. at least one polyether polymer [hereinafter polymer (P)], said polymer (P) comprising:
a) at least 70.0 % by moles of oxyethylene units (EO);
b) from 0.0 to 10.0 % by moles of oxypropylene units (PO); and
c) from 1.00 to 4.0 % by moles of recurring units derived from at least one monomer [hereinafter, monomer (M)] of general formula (I) or of general formula (II):
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wherein
- each of R1 and R2, equal to or different from each other and at each occurrence, is C1-6 alkanediyl wherein said C1-6 alkanediyl, is optionally substituted with one or more substituents selected from halide, C1-4 alkyl, C3-6 cycloalkyl, CF3, and OR8, and wherein each of R8, equal to or different from each other and at each occurrence, is independently selected from the group hydrogen and C1-4 alkyl; n is an integer 0 or 1 or 2;
- each of X is a leaving group selected from the group consisting of halide, trifluoromethanesulfonate, nonafluorobutanesulfonate, p-toluenesulfonate and methanesulfonate;
and
ii. at least one polysiloxane compound having the formula (III)
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wherein
- each of R3, R4, R5, R6 and R7, equal to or different from each other and at each occurrence, is independently selected from the group consisting of C1-6 alkyl, C3-6 cycloalkyl, aryl, C1-6 alkoxy, and heterocyclyl, wherein said C1-6 alkyl, C3-6 cycloalkyl, aryl, C1-6 alkoxy, heterocyclyl are optionally substituted with one or more substituents selected from halide, C1-4 alkyl, C3-6 cycloalkyl, CF3, and OR9, and wherein each of R9, equal to or different from each other and at each occurrence, is independently selected from the group consisting of hydrogen, C1-4 alkyl, and a hydroxyl protecting group,
- m is an integer of at least 3; and
wherein said at least one polysiloxane compound having the formula (III) is grafted to said at least one polymer (P) through reaction of at least a fraction of the -CH=CH2 moiety of monomer (M) with the H-Si moiety of the polysiloxane compound having the formula (III) (see claim 16 of 339’, from “said polymer electrolyte being obtained by reaction between:” to the end of claim 16 of 339’; alternatively, see claim 29 of 339’, from “said polymer electrolyte being obtained by reaction between:” to the end of claim 29 of 339’).
However, 339’ does not teach said polymer (P) having an Mn (number average molecular weight) of at least 40,000 g/mol and at most 100,000 g/mol, as measured by GPC with a PEO standards calibration.
Mochizuki teaches said polymer (P) (Grade CP-A1H: An ethylene oxide/propylene oxide/allyl glycidyl ether random copolymer available as “Alkox®” from Meisei Chemical Works, Ltd., see [0077]) having an Mn (number average molecular weight) of at least 40,000 g/mol and at most 100,000 g/mol (approx. 50,000 g/mol; note: Alkox CP-A1H weight-average molecular weight (Mw) approx. 100,000, see Table 2, [0078]; Alkox CP-A1H has polydispersity (PDI = Mw/Mn) ~2.0*, therefore Mn = Mw / PDI = Mw / 2.0 = approx. 50,000 g/mol), as measured by GPC (weight-average molecular weight (Mw) is obtained by gel permeation chromatography (GPC), see [0046]) with a PEO standards calibration.
*Polydispersity (PDI) of Alkox CP-A1H see the product website < https://www.meisei-chem.co.jp/english/products/alkox/alkox_cpa.html >
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the number average molecular weight Mn of the said polymer (P) taught by 339’ to be 50,000 g/mol as taught by Mochizuki to have the water-soluble polymer with a weight-average molecular weight (Mw) preferably not more than 1,000,000, and more than 500,000 (see Mochizuki [0046]).
Regarding claim 12, 339’ in view of Mochizuki teaches wherein from 80.0 % by moles to 99.0 % by moles of the recurring units of the polymer (P) are EO units (see claim 17 of 339’).
Regarding claim 13, 339’ in view of Mochizuki teaches wherein from 0.5 % by moles to 5.0 % by moles, or from 0.5 % by moles to 4.0 % by moles, or from 1.0 % by moles to 4.0 % by moles, or from 1.0 % by moles to 3.0 % by moles of the recurring units of the polymer (P) are PO units (see claim 18 of 339’).
Regarding claim 14, 339’ in view of Mochizuki teaches wherein from 1.2 % by moles to 4.0 % by moles, or from 1.5 % by moles to 3.5 % by moles, or from 1.5 % by moles to 3.0 % by moles of the recurring units of the polymer (P) are recurring units derived from the monomer (M) of general formula (I) or of general formula (II) wherein R1, R2, n and X are as defined in claim 11 (see claim 19 of 339’).
Regarding claim 15, 339’ in view of Mochizuki teaches wherein the monomer (M) is of formula (II)
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wherein
- each of R1 and R2, equal to or different from each other and at each occurrence, is a C1-2 alkanediyl and n is an integer 0 or 1 (see claim 20 of 339’).
Regarding claim 16, 339’ in view of Mochizuki teaches wherein the polymer (P) (polymer (P), see claim 16 of 339’) having an Mn (number average molecular weight) of at least 50,000 g/mol and at most 100,000 g/mol (approx. 50,000 g/mol, see rejection of claim 11 above), as measured by GPC (weight-average molecular weight (Mw) is obtained by gel permeation chromatography (GPC), see Mochizuki [0046]) with a PEO standards calibration.
However, 339’ in view of Mochizuki does not teach wherein the polymer (P) is a random copolymer.
Mochizuki teaches wherein the polymer (P) is a random copolymer (Grade CP-A1H: An ethylene oxide/propylene oxide/allyl glycidyl ether random copolymer available as “Alkox®” from Meisei Chemical Works, Ltd., see [0077]) having an Mn (number average molecular weight) of at least 50,000 g/mol and at most 100,000 g/mol (approx. 50,000 g/mol; see rejection above), as measured by GPC (weight-average molecular weight (Mw) is obtained by gel permeation chromatography (GPC), see [0046]) with a PEO standards calibration.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to substitute the polymer (P) taught by 339’ in view of Mochizuki with the Alkox CP-A1H random copolymer taught by Mochizuki because it is known in the art that Alkox CP-A1H is an ethylene oxide/propylene oxide/allyl glycidyl ether random copolymer with a weight-average molecular weight approx. 100,000 (see Mochizuki [0077]-[0078]).
Regarding claim 17, 339’ in view of Mochizuki teaches wherein each of R3, R4, and R7, equal to or different from each other and at each occurrence, is independently C1-6 alkyl; each of R5 and R6, equal to or different from each other and at each occurrence, is independently selected from C1-4 alkyl or phenyl, wherein said C1-4 alkyl is optionally substituted with one or more substituents selected from halide, C1-4 alkyl, or CF3; m is an integer of at least 5 and at most 1000 (see claim 21 of 339’).
Regarding claim 20, 339’ in view of Mochizuki teaches wherein the polysiloxane compound having formula (III) is grafted to polymer (P) through reaction of at least 10% and at most 90% by moles, of the-CH=CH2 moiety of monomer (M) with the H-Si moiety of the polysiloxane compound having the formula (III) (see claim 22 of 339’).
This is a provisional nonstatutory double patenting rejection.
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 16 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.
Claim 16 is indefinite because of the recitation “an Mn (number average molecular weight)”. It is unclear if the recitation refers to the same Mn (number average molecular weight) in claim 11 or a different Mn. To overcome the rejection, the Examiner suggests changing “an” to “the”. For examination purposes, the aforementioned recitation has been interpreted as “the Mn (number average molecular weight)”.
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.
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.
Claims 11-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Masaaki et al. (JP H08165349 A, provided on the IDS filed 6/26/2024 and 8/12/2025, citation see machine translate) in view of Miura et al. (US Patent No. 6,878,491) in view of Mochizuki (US 20210387057 A1).
Regarding Claim 11, Masaaki et al. teaches a polymer (polyoxyalkylene having a silicone group in a side chain, [0001]) being obtained by reaction (see [0025]) between:
i. at least one polyether polymer ((PO)2-O-CH2-CH2-O-(EO)96-(AGE)2; see formula (9), [0019], when Z = -CH2-CH2-, A1O = -CH2-CH(CH3)-O- (recurring unit of propylene oxide (PO)), a=2, i+p=0, m=1; A2O = -CH2-CH-O- (recurring unit of ethylene oxide (EO)); see “AO represent oxyalkylene groups having 2 to 22 carbon atoms”, [0009]; b=96, (B2O) = (-CH2-CH(-CH2-O-CH2-CH=CH2)-O-, recurring unit of allyl glycidyl ether (AGE)), see [0023]; j+q=2, n=1, the formula (9) is (PO)2-O-CH2-CH2-O-(EO)96-(AGE)2) [hereinafter polymer (P)], said polymer (P) ((PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, see formula (9), [0019]) comprising:
a) at least 70.0 % by moles of oxyethylene units (EO) (96% by moles of EO; see (PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, formula (9), [0019]);
b) from 0.0 to 10.0 % by moles of oxypropylene units (PO) (2% by moles of PO; see (PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, formula (9), [0019]); and
c) from 1.00 to 4.0 % by moles (2% by moles of allyl glycidyl ether (AGE); see (PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, formula (9), [0019], [0023]) of recurring units derived from at least one monomer [hereinafter, monomer (M)] of general formula (I) or of general formula (II) (allyl glycidyl ether (AGE), [0023]):
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wherein
- each of R1 and R2, equal to or different from each other and at each occurrence, is C1-6 alkanediyl wherein said C1-6 alkanediyl, is optionally substituted with one or more substituents selected from halide, C1-4 alkyl, C3-6 cycloalkyl, CF3, and OR8, and wherein each of R8, equal to or different from each other and at each occurrence, is independently selected from the group hydrogen and C1-4 alkyl; n is an integer 0 or 1 or 2 (both R1 and R2 is -CH2- and n = 1; see allyl glycidyl ether (AGE), [0023]);
- each of X is a leaving group selected from the group consisting of halide, trifluoromethanesulfonate, nonafluorobutanesulfonate, p-toluenesulfonate and methanesulfonate;
and
ii. at least one polysiloxane compound having the formula (III) (polydimethylsiloxane (PDMS), formula (10), [0019]; when R = methyl and r=14, formula (10) is r = 14 silysine-terminated polydimethylsiloxane, see [0020]; note: r = 14 silysine-terminated polydimethylsiloxane is a one-end terminated mono-hydride polydimethylsiloxane (PDMS))
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wherein
- each of R3, R4, R5, R6 and R7, equal to or different from each other and at each occurrence, is independently selected from the group consisting of C1-6 alkyl, C3-6 cycloalkyl, aryl, C1-6 alkoxy, and heterocyclyl, wherein said C1-6 alkyl, C3-6 cycloalkyl, aryl, C1-6 alkoxy, heterocyclyl are optionally substituted with one or more substituents selected from halide, C1-4 alkyl, C3-6 cycloalkyl, CF3, and OR9, and wherein each of R9, equal to or different from each other and at each occurrence, is independently selected from the group consisting of hydrogen, C1-4 alkyl, and a hydroxyl protecting group (each R3, R4, R5, R6 and R7 is methyl, -CH3-; see r = 14 silysine-terminated polydimethylsiloxane, see [0020]),
- m is an integer of at least 3 (m=14; see r = 14 silysine-terminated polydimethylsiloxane, see [0020]); and
wherein said at least one polysiloxane compound having the formula (III) (when R = methyl and r=14, formula (10) is r = 14 silysine-terminated polydimethylsiloxane (PDMS), see [0019]-[0020]) is grafted to said at least one polymer (P) ((PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, see formula (9), [0019]) through reaction (see [0025]) of at least a fraction of the -CH=CH2 (carbon-carbon double bond, [0025]) moiety of monomer (M) with the H-Si moiety (the silysine group, [0025]) of the polysiloxane compound having the formula (III).
Masaaki et al. does not teach a polymer electrolyte suitable for use in lithium-ion secondary batteries;
said polymer (P) having an Mn (number average molecular weight) of at least 40,000 g/mol and at most 100,000 g/mol, as measured by GPC with a PEO standards calibration.
Miura et al. teaches a solid electrolyte (obtained by using the same type of polymer: a multi-component copolymer in which propylene oxide and ethylene oxide are combined with an oxirane compound, see col. 1, lines 50-58; example of oxirane compound see allyl glycidyl ether, col. 4, line 33) suitable for use in lithium-ion secondary batteries (solid electrolyte, see col. 1, line 51) being obtained by the same reaction (the hydrosilylation reaction, see col. 8, line 45).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to configure the polyoxyalkylene having a silicone group in a side chain taught by Masaaki et al. to be a solid polymer electrolyte as taught by Miura et al. because a multi-component copolymer in which propylene oxide and ethylene oxide are combined with a further crosslinkable oxirane compound has an excellent ionic conductivity and showing little plastic deformation or fluidity even at a high temperature (see Miura et al. col. 1, lines 50-58). It is noted that the body of claim 11 as worded does not contain any specific structure beyond that taught by Masaaki et al. which causes the composition to function as a polymer electrolyte.
However, Masaaki et al. in view of Miura et al. does not teach said polymer (P) having an Mn (number average molecular weight) of at least 40,000 g/mol and at most 100,000 g/mol, as measured by GPC with a PEO standards calibration.
Mochizuki teaches said polymer (P) (Grade CP-A1H: An ethylene oxide/propylene oxide/allyl glycidyl ether random copolymer available as “Alkox®” from Meisei Chemical Works, Ltd., see [0077]) having an Mn (number average molecular weight) of at least 40,000 g/mol and at most 100,000 g/mol (approx. 50,000 g/mol; note: Alkox CP-A1H weight-average molecular weight (Mw) approx. 100,000, see Table 2, [0078]; Alkox CP-A1H has polydispersity (PDI = Mw/Mn) ~2.0*, therefore Mn = Mw / PDI = Mw / 2.0 = approx. 50,000 g/mol), as measured by GPC (weight-average molecular weight (Mw) is obtained by gel permeation chromatography (GPC), see [0046]) with a PEO standards calibration.
*Polydispersity (PDI) of Alkox CP-A1H see the product website < https://www.meisei-chem.co.jp/english/products/alkox/alkox_cpa.html >
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the number average molecular weight Mn of the polyoxyalkylene having a silicone group in a side chain taught by Masaaki et al. in view of Miura et al. to be 50,000 g/mol as taught by Mochizuki to have the water-soluble polymer with a weight-average molecular weight (Mw) preferably not more than 1,000,000, and more than 500,000 (see Mochizuki [0046]).
Regarding claim 12, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein from 80.0 % by moles to 99.0 % by moles of the recurring units of the polymer (P) are EO units (96% by moles of EO; see (PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, Masaaki et al. formula (9), [0019]).
Regarding claim 13, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein from 0.5 % by moles to 5.0 % by moles, or from 0.5 % by moles to 4.0 % by moles, or from 1.0 % by moles to 4.0 % by moles, or from 1.0 % by moles to 3.0 % by moles of the recurring units of the polymer (P) are PO units. (2% by moles of PO; see (PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, Masaaki et al. formula (9), [0019])
Regarding claim 14, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein from 1.2 % by moles to 4.0 % by moles, or from 1.5 % by moles to 3.5 % by moles, or from 1.5 % by moles to 3.0 % by moles of the recurring units of the polymer (P) are recurring units derived from the monomer (M) of general formula (I) or of general formula (II) wherein R1, R2, n and X are as defined in claim 11 (2% by moles of allyl glycidyl ether (AGE); see (PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, Masaaki et al. formula (9), [0019], [0023]).
Regarding claim 15, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein the monomer (M) is of formula (II) (see allyl glycidyl ether, Masaaki et al. [0023])
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wherein
- each of R1 and R2, equal to or different from each other and at each occurrence, is a C1-2 alkanediyl and n is an integer 0 or 1 (both R1 and R2 is -CH2- and n = 1; see allyl glycidyl ether, Masaaki et al. [0023]).
Regarding Claim 16, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein the polymer (P) ((PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, see formula (9), Masaaki [0019]) is a random copolymer (random manner, see Masaaki et al. [0019]), having an Mn (number average molecular weight) of at least 50,000 g/mol and at most 100,000 g/mol (approx. 50,000 g/mol; see rejection of claim 11 above), as measured by GPC (weight-average molecular weight (Mw) is obtained by gel permeation chromatography (GPC), see Mochizuki [0046]) with a PEO standards calibration.
Regarding claim 17, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein each of R3, R4, and R7, equal to or different from each other and at each occurrence, is independently C1-6 alkyl; each of R5 and R6, equal to or different from each other and at each occurrence, is independently selected from C1-4 alkyl or phenyl, wherein said C1-4 alkyl is optionally substituted with one or more substituents selected from halide, C1-4 alkyl, or CF3 (each R3, R4, R5, R6 and R7 is methyl, -CH3-; see r = 14 silysine-terminated polydimethylsiloxane, Masaaki et al. [0020]);
m is an integer of at least 5 and at most 1000 (m=14; see r = 14 silysine-terminated polydimethylsiloxane, Masaaki et al. [0020]).
Regarding claim 18, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein the polymer (P) and the polysiloxane having formula (III) are at least partially dissolved in an organic solvent selected from the group consisting of benzene, toluene, xylene, and cymene (aromatic solvents such as toluene and xylene, see Masaaki et al. [0027]).
Regarding claim 19, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein the polysiloxane compound having the formula (III) is grafted to the polymer (P) in the presence of a catalyst (catalyst, see Masaaki et al. [0025]).
Regarding claim 21, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein the catalyst is a hydrosilylation catalyst selected from the group consisting of a Karstedt's catalyst (platinum-olefin complex, see Masaaki et al. [0025]), a Wilkinson catalyst, a Speier catalyst (chloroplatinic acid, see Masaaki et al. [0025]), and mixtures thereof.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Masaaki et al. (JP H08165349 A, provided on the IDS filed 6/26/2024 and 8/12/2025, citation see machine translate) in view of Miura et al. (Patent No. 6,878,491) in view of Mochizuki (US 20210387057 A1) in view of Blevins et al. (Patent No. 4,962,218, provided in the IDS filed 6/19/2023).
Regarding Claim 20, Masaaki et al. in view of Miura et al. in view of Mochizuki teaches wherein the polysiloxane compound having formula (III) (when R = methyl and r=14, formula (10) is r = 14 silysine-terminated polydimethylsiloxane (PDMS), see [0019]-[0020]) is grafted to polymer (P) ((PO)2-O-CH2-CH2-O-(EO)96-(AGE)2, see formula (9), [0019]) through reaction (see [0025]) of the-CH=CH2 (carbon-carbon double bond, [0025]) moiety of monomer (M) with the H-Si moiety (the silysine group, [0025]) of the polysiloxane compound having the formula (III).
Masaaki et al. in view of Miura et al. in view of Mochizuki is silent on the conversion the-CH=CH2 moiety of monomer (M) is at least 10% and at most 90%.
Blevins et al. teaches the same type of reaction (hydrosilation, col. 8, line 1) wherein the polysiloxane compound (monofunctional siloxane, col. 7, lines 43-45) having formula (III) (one example: MD3M’ ((CH3)3SiO[Si(CH3)2O]3Si(CH3)2H), col. 8, lines 42-44) is grafted to polymer (P) (multifunctional polyether by alkoxylation of EO and/or PO with allyl glycidyl ether (AGE), col. 7, lines 50-51) that at least 10% and at most 90% (less than 90%, col. 8, line 2) by moles, of the-CH=CH2 moiety (allyl (or vinyl), col. 7, line 61) of monomer (M) with the H-Si moiety (SiH, col. 7, line 61) of the polysiloxane compound having the formula (III).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to run the reaction taught by Masaaki et al. in view of Miura et al. in view of Mochizuki and have at least 10% and less than 90% of the-CH=CH2 moiety of monomer (M) reacts with the H-Si moiety as taught by Blevins et al. because it was found that these hydrosilations converted less than 90% of the allyl group to the hydrosilated product even in the presence of excess SiH (see Blevins et al. col. 7, line 68 and col. 8, lines 1-8).
Response to Arguments
Applicant’s arguments with respect to claims 11-21 have been considered but are moot because the new ground of rejection of the newly added limitations “said polymer (P) having an Mn (number average molecular weight) of at least 40,000 g/mol and at most 100,000 g/mol, as measured by GPC with a PEO standards calibration” in claim 11 and “at least 50,000 g/mol and at most 100,000 g/mol, as measured by GPC with a PEO standards calibration” in claim 16 rely on the combination of Mochizuki (US 20210387057 A1), which is not applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/NING CHEN/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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