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
This application is a 371 of PCT/CN2021/076173 02/09/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 10/10/23, 10/18/24, 10/06/25 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 16-23 in the reply filed on 04/23/26 is acknowledged.
Claims 16-28 are pending. The claim 16 has been found allowable. Accordingly, the claims 24-28, incorporating features of claim 16, have been reconsidered and examined in this Office action.
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 26-28 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 pre-AIA the applicant regards as the invention.
Claims 26-28 provides for the use of the siloxane composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18-19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 18 does not further limit the claim 16 features of the dynamic viscosity. Claim 16 require component (c) has a dynamic
viscosity of greater than or equal to 30 mPas and less than 1,000 mPas at 25°C. However, claim 18 states component (c) comprises a dynamic viscosity of greater than
200 mPas and less than or equal to 5,000 mPas at 25°C. Thus, in claim 18 the viscosity range is above 1,000 mPas. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 19 depends from rejected claim 18.
Claim Rejections - 35 USC § 101
10. Claims 26-28 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Allowable Subject Matter
Claims 16-17, 20-25 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Closest prior arts are Hangzhou (CN 111154269), Hiroshi (US 2019/300767), and Hiroshi (US 2020/087514; hereinafter called “Hiroshi-1”).
Hangzhou discloses a curable silicone composition comprising two different components that are blended together before being cured and used in the manufacture of an electronic device module (abstract). In particular, in example 1, component A comprises (a) 26 parts by weight of an organopolysiloxane end-capped by vinyl groups and having a viscosity of 100 mPa.s (25°C), (b) 0.5 parts by weight of a resinous polysiloxane comprising vinyl groups and M and Q units, (c) a hydrosilylation catalyst and (d) various fillers. Component (B) of example 1 comprises (a') 28.0 parts by weight of an organopolysiloxane end-capped by vinyl groups and having a viscosity of 1000 mPa.s (25°C), (b') 1.25 parts by weight of an organopolysiloxane end-capped by SiH groups and having a viscosity of 80 mPa.s (25°C), (c') an inhibitor and (d') various fillers. Components A and B are cured at 120°C to form a gel. The composition of example 1 describes the use of two different organopolysiloxane end-capped by vinyl groups having different viscosities. Example 1 differs from claim 1 in that the organopolysiloxane end-capped by SiH groups is present in the composition at a level
of less than 30 wt.%. In the description and abstract, Hangzhou discloses that the hydrosilyl-containing polysiloxane can be present in the composition at a level of 1-50 parts by weight and may contain SiH at the extremities and/or along the polysiloxane chain. Therefore, in order to arrive at claim 1, a double selection is required, namely the selection of having a polysiloxane end-capped with SiH group and the selection of an amount of at least 30 wt.%.
Hiroshi discloses a laminate having a gel layer on a substrate wherein the gel layer is able, after cure, to protect the substrate and to provide heat resistance, softness and flexibility, low modulus of elasticity and low stress (page 1, para 1). The gel layer is prepared from a composition comprising (a) 9.9 wt.% of a first organopolysiloxane end-capped by vinyl groups, (b) 66.3 wt.% of an organopolysiloxane comprising vinyl groups along the chain, (c) 6.7 wt.% of a resinous organopolysiloxane of general formula MviQ, (d) 8.8 wt.% of an organopolysiloxane end-capped by SiH groups, (e) a hydrosilylation inhibitor, (f) silica and (g) a platinum-based hydrosilylation catalyst (comparative example 2). The silicone gel is used as a protective layer for electronic components. However, Hiroshi differs from claim 1 in that the composition does not comprise an organopolysiloxane end-capped by SiH groups (d) in an amount higher than 30 wt.%. Furthermore, the dynamic viscosity of polysiloxane (d) is not specified.
Hiroshi-1 discloses an addition-curable silicone composition used in the manufacture of electronic device. Upon cure, the silicone compositions of Hiroshi-1 provide a silicone gel suitable to be used as a bonding material (i.e. adhesive) or protective agent (i.e. potting agent) in the manufacture of electronic components (page 11, paragraphs 90 and 94, page 13, paragraphs 111-113). In particular, composition of example 5 of Hiroshi-1 (table 1) comprises (a1) 43.9 parts by weight of an organopolysiloxane end-capped by vinyl groups, (a2) 5.98 parts by weight of a second organopolysiloxane end-capped by vinyl groups, (b) 29.7 parts by weight of a resinous polysiloxane comprising vinyl groups and M and Q units, (c) a hydrosilylation catalyst, (d) 16.1 parts by weight of an organopolysiloxane end-capped by SiH groups, (e) an inhibitor and (f) various fillers. However, Hiroshi-1 differs from claim 1 in that (i) the amount of SiH-containing polysiloxane is less than 30 wt.% and in that (ii) the viscosity of the SiH-containing polysiloxane is not specified. The closest prior arts do not suggest or disclose claimed siloxane composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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