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 Objections
The word “comprising” in claim 4 should be replaced with “derived from” insofar as the liner is ostensibly one obtained when the material has been cured, at which point it will no longer conform to the structure delineated in claim 1.
Claims 12 and 16 should have a proviso mandating that at least one or more groups R4 are fluorine substituted given that the product identified in the preamble is said to be a fluorosilicone.
The word “of” should follow “method” in line 1 of claim 15. Also in claim 15, the phrase “fluorine-containing” should precede the word compound in line 3 of claim 15 to the extent that the target product is a fluorosilicone and the first compound is the only clear source of fluorine substitution.
Finally, the Examiner takes issue with the product of claims 12 and 15 being defined as a hydrosilylated fluorosilicone. The word “hydrosilylated” would generally be indicative of the presence of SiH groups but none of the variables R1, R2, R5, nor R6 may be representative of a hydrogen atom. Hydrosilylation, the Examiner appreciates, is the chemical reaction by which the fluoro-functional substituents and substituents bearing interior alkene residues are introduced but, even then, it is the organohydrogensiloxane/hydride-functional polysiloxane that hydrosilylates the appropriate compounds featuring terminal ethylenic unsaturation, not the reverse. Insofar as the term “hydrosilylated” as in “hydrosilylated fluorosilicone” only convolutes the description, the Examiner recommends that it be removed from the claims.
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, 9, 12, 16, and the claims dependent therefrom 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.
In each of the aforementioned claims, among the permutations of the variable R5 disclosed is “-Si”. This is obviously an incompletely characterization of that embodiment inasmuch as silicon atoms are tetravalent yet the chemical makeup of all the other moieties attached to the silicon atom are not revealed and, therefore, the intended scope of these claims cannot be ascertained.
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.
Claims 1-2, 4, and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chung et al., U.S. Patent # 5,708,075.
The two exemplifications of prior art component (A) mentioned in column 10, lines 12-18 are both anticipatory of the claimed invention. The first is aptly represented by the formula in claim 1 where “y” and “z” are 0, R1 and R1 are the alkenes depicted with “n” =2, and R5 is methyl. The latter disclosed compound, because it has 150 repeat units of which 2 mol% are hexene will have one pendant hexenyl group and, thus, is suitably represented by the formula in claim 1 where “y” is 0, “z” is 1, R1 and R1 are the alkenes depicted with “n” =2, and R5 is methyl. The calculated molecular weights of these, molecular weights with no weighting factor, are approximately 2343 and 11349 respectively. The polymers constitute the base polymer in a hydrosilylation-curable composition having utility as a silicone release coating (column 1, lines 4-10).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Chung et al., U.S. Patent # 5,708,075. Claim 3 attaches a minimum molecular weight to the higher alkene-functional polysiloxane of at least 50,000 g/mol. Whereas it is recognized that the two compounds alluded to supra don’t conform with this requirement, there are contemplated in column 4, lines 27-41 a broader array of hexenyl-functional siloxane polymers that can contain as many as 7,000 dimethylsiloxane units, and 350 methylhexenylsiloxane units. Encompassed within this teaching are numerous candidates of (A) for which the molecular weight range of claim 3 would be inherently satisfied. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claims 5-9 and 12-18 would be allowable if rewritten or amended 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. Olefin metathesis, also called ethenolysis, is a known strategy for converting interior alkene groups to terminal alkene groups but the Examiner saw no evidence of this having been done in the context of a polysiloxane. Indeed, the Examiner encountered very few examples of a polysiloxane even featuring a substituent with internal alkene groups. U.S. 4,710,541 teaches polysiloxanes (B) with 4-hexenyl substituents introduced by hydrosilylation of 1,4-hexadiene (column 4, lines 29 and 57) but there is no expressed desire to then convert that interior unsaturated group to a terminal one. See also [0067] of WO 2010/025140 for a similar teaching. None of the references found that mentioned a polysiloxane with substituents containing internal alkene moieties also contained fluorine atom substitution thus justifying the indication of allowable subject matter over the prior art in claims 12-18.
Suto et al., U.S. Patent Application Publication No. 2022/0056322 is of interest because the second polymer compound structurally disclosed in the right column of page 4 conforms generally with the requirements of the polysiloxane depicted in claim 1 but nevertheless fails to represent an obstacle to patentability because it contains much large quantities of dimethylsiloxane and siloxane repeat units bearing fluoroalkyl substitution than are permitted. JP 4341871 at page 20, line 40 depicts a butenyl-terminated polydiorganosiloxane that is not anticipatory of claim 1 inasmuch as the group correlated with R4 is the C1 fluorinated alkyl group trifluoropropyl. U.S. 2022/0073749 is relevant because it embraces polysiloxanes with hexenyl groups [0040] and perfluoropolyether groups but R4 is not representative of perfluoropolyether segments.
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.
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January 30, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765