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 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 1-11 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 1 is vague and indefinite because “providing a polysiloxane powder” indicates the polysiloxane powder is already formed, contrary to the other portion of the claim indicating the polysiloxane powder is formed by the hydrolysis condensation reaction.
Claims 1, 5 is further vague and indefinite because it is not clear how the T unit is integrated into the polysiloxane. Polysiloxanes do not contain species in the ionic form RSiO3-. The same issue exists for the Q unit, D unit, and M unit recited in claim 5.
Claims 1, 4 do not recite the units associated with the calcining temperature.
Claim 2 is vague and indefinite because it is not clear what “polysiloxane” is referring to and specifically at which stage of the process.
Claim 8 fails to further limit claim 1 because the limitation is already present in claim 1.
The remaining claims are merely rejected due to dependency from a rejected claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishii (WO 03/104319) in view of Bockstie (US 3834938) in view of Haluska (US 5387480).
Claims 1, 3-4, 6, 8:
Ishii teaches a method for manufacturing silica-coated zinc oxide fine particles (abstract) useful as a filler in resins and polymers (pg. 31-36). The process brings zinc oxide particles into contact with silicic acid, water, an alkali, and an organic solvent (pg. 8). Zinc oxide is a high-dielectric-constant powder (see instant claim 3). The silicic acid is formed by the reaction of tetraalkoxysilane, water, and alkali (pg. 9) and is deposited onto the zinc particles (pg. 13). Because this is a buildup of material onto the zinc oxide particles, the coated particles necessarily have a larger particle size compared to the uncoated zinc oxide particles. Thereafter, the coated particles may be fired (pg. 17).
Ishii does not teach adding RSiX3 to coat the particles and form polysiloxane or the particulars of the firing step.
As an initial matter, the examiner does note that Ishii does state RSiX3 compounds are not suitable for forming silicic acid (pg. 9-10). This is true in the sense that the R group is not readily hydrolysable and therefore the compound is unable to form silicic acid. Ishii does not teach away from RSiX3 compounds because Ishii does not identify any specific disadvantage for their inclusion.
Bockstie teaches a similar composition including RSiX3 (R=methyl, X=alkoxy, a hydrolysable group) monomers for making monomethyl polysiloxane resins by hydrolysis condensation reaction (4:28-75) and ultimately cured to form silica (4:54-56; 5:15-16). The claimed T unit is assumed to represent a “unit cell” within the polymer structure, and does correspond to the monomethyl polysiloxane resin. Bockstie explains that the inclusion of the methyl group gives a high degree of moisture resistance without affecting the flameproof properties (4:55-59). The monomethyl monomer can be used in conjunction with alkyl silicates such as TEOS (5:32-49).
Haluska teaches a similar procedure where the polysiloxane is cured/fired/calcined at a temperature of 50-1000 °C in an oxygen atmosphere for up to about 6 hours to convert to silica (5:13-29).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Ishii and further include monomethyl RSiX3 monomers in order to improve moisture resistance and subject the coated particles to calcining in an oxygen atmosphere in order to convert the silicon polymer into silica.
Claims 2, 9:
The thickness of the silica coating relative to the size of the zinc oxide particles varies and does include where the particle size is less than or equal to 1/3 the particle size of polysiloxane (Ishii pg. 22). The same analysis applies to the volume fraction. The goal of Ishii is for the resulting particles to have a size less than 5 µm (pg. 4).
Claim 5:
The silicon monomer taught by Ishii and TEOS taught by Bockstie are analogous to the claimed Q unit.
Claim 7:
Ishii further teaches adding a hydrophobicity-imparting agent to the silicon oxide powder filler including chlorosilane and alkoxysilanes (pg. 20) which correspond to the claimed silane coupling agent.
Claim 10:
Ishii teaches incorporating the resulting filler into polymer [0032] and Haluska teaches the use in circuit boards (2:1-9).
Claim 11:
Ishii teaches sieving to remove particles above 5µm in size (pg. 41-42).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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