Claim Objections
Claims 10 to 13 are objected to because of the following informalities: There are two claim 10s, such that the second claim 10 to 13 should be renumbered 11 to 14.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 - 4 and 6 - 13 are rejected under 35 U.S.C. 103 as being unpatentable over Otomo et al. 8,999,485 in view of Kato et al. 2018/0134871 and further in view of WO 2018/198830, as interpreted by Hara et al. 2021/0108079.
This rejection relies on the rationale found in paragraph 4 of the previous office
action. This is the only prior art rejection made for claim 5, the subject matter of which has now been placed in claim 1. As such, this rejection rationale will not be repeated.
Applicants’ traversal has been considered but is not deemed persuasive. In
response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. The response does not address the combination of references or the specific obviousness rationale noted in the previous office action. As such this rejection is maintained.
As this rejection applies to new claims 6 to 13, please note the following.
For claim 6, note the rejection rationale for claim 4, as it presently applies. The only difference between claims 4 and 6 is the difference between 30% or less and 25% or less.
For claims 7 to 10, note Hara et al., paragraph 54, in which a range of 1 to 10 parts of the component meeting claimed (D) is present per 100 parts of the organopoly-siloxane having alkenyl groups (claimed (A)). This includes a preferred range of from 3 to 8 that is sufficiently narrow as to render obvious a value of 3.85, which is found within this range.
Also for claims 7 and 8, see column 6, line 27, as well as column 10, lines 25 to 30, which teaches a range of the corresponding component (E) which overlaps with that claimed such that one having ordinary skill in the art would have found the selection of an amount within the claimed range to have been obvious. Note that adjusting the amount of such a siloxane in an effort to optimize the properties associated therewith in the final product is well within the skill of the ordinary artisan. Note too that column 10, lines 30 to 38, teaches the benefits of the disclosed amount of this siloxane.
For claim 10 (second occurrence) and claims 11 to 13, Hara et al., paragraph 55, teaches a phenyl content as low as 35%, thus giving the skilled artisan motivation to select a value within the claimed range.
In an effort to expedite prosecution, the Examiner notes that amending claim 1 to require a phenyl content of 2 to 25 mol% for component (D) would place the claims in condition for allowance. The Hara et al. reference does not teach or render obvious a value within this range.
Conclusion
THIS ACTION IS MADE FINAL. 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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
7/27/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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