Prosecution Insights
Last updated: April 19, 2026
Application No. 18/279,057

CO-MODIFIED ORGANOPOLYSILOXANE AND CURABLE ORGANOPOLYSILOXANE COMPOSITION INCLUDING SAME

Non-Final OA §102§112
Filed
Aug 26, 2023
Examiner
ZIMMER, MARC S
Art Unit
1765
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Dow Toray Co. Ltd.
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
2y 7m
To Grant
95%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allow Rate
1230 granted / 1549 resolved
+14.4% vs TC avg
Strong +16% interview lift
Without
With
+15.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
48 currently pending
Career history
1597
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
39.2%
-0.8% vs TC avg
§102
27.7%
-12.3% vs TC avg
§112
24.2%
-15.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1549 resolved cases

Office Action

§102 §112
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. Specification There is no antecedent basis in the Specification for the scope of claim 1 as now presented. Whereas the Specification supports an aspect of the claimed polymer where the number of substituents bearing a hydroxyl group is 0.1 to 1 relative to the number of substituents bearing an acrylic group, claim 1, as amended, has dropped this limitation in favor of another that sets the number of substituents bearing a hydroxyl group relative to all substituents at 0.1 to 1. Claim Objections Claim 1 and the claims dependent therefrom are objected to because “Z” is defined as being a divalent organic group that “may” contain a heteroatom. The Examiner contends, though, that Z must contain an oxygen atom and said oxygen atom will need to be bonded directly to the carbonyl group. Indeed, a (meth)acryl group, by definition is one complying with the formula CH 2 =CH(R)C(= O) O - where R is a hydrogen atom or methyl group. 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 appl icant regards as his invention. Claim 1 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. As an initial matter, the Examiner questions the propriety of referring to an “average mass” of the group R OH (3 lines above General Formula (1) in claim 1) when all the subject matter that follows seems instead to reference a mol ratio. Also, in the preliminary amendment, “(R A )” was removed from the claim in the final line prior to the presentation of General Formula (1). The impact of this modification was to recite the mole ratio of hydroxyl groups relative to the total number of groups bound to the siloxane backbone instead of the mol ratio of number of hydroxyl groups to the number of (meth)acrylic moieties, which has seemed to be original intent prior to amendment. Indeed, Applicant is directed to [0018] of the Specification where the number of hydroxyl groups is reported in terms of their quantity relative to that of the (meth)acrylic groups. As further evidence, Applicant is encouraged to peruse their examples , and also Table 1 , where it will be discovered that (i) Table 1 has no heading for a number of hydroxyl groups relative to all groups and (ii) the number of hydroxyl groups as a fraction of all groups in the polymer does not conform with the requirement of preliminarily-amended claim 1 in any one example. The Examiner is also having substantial difficulty deciphering the intent of claim 5. Is Applicant simply saying that there must be at least two hydroxyl groups whereas claim 1 only mandates the presence of one? Clarification is needed but, in the interim, it will be presumed that this is a proper construal of the metes-and-bounds of claim 5. 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. Claim s 1-5 and 7 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Tanaka et al., U.S. Patent Application Publication No. 2022/0228038 . Applicants are directed to Synthesis Example 5 where there is depicted the individual units making up a linear diorganosiloxane polymer with some repeat units bearing an acrylate-terminated oxyethylene-oxypropylene pendant groups and others bearing hydroxyl-terminated oxyethylene-oxypropylene pendant groups. The compound is prepared by transesterifying the compound adhering to formula (10) at the top of column 5 with ethyl acrylate in the presence of a zirconium catalyst. The polymer has (38x2) + (10x2) + 6 = 10 2 total silicon-bound groups wherein the acrylate -terminated pendant moiety constitutes 8 of these and, therefore, 8/10 2 x 100 = 7. 84 % of the total. The product (A5) has two hydroxyl-containing substituents thus making the number of moles of a group correlated with R OH to the number of groups R A equal 0.25:1. The prior art hydroxyl-containing groups correlated with R OH are carbinol-modified (claim 2) where the residue Y is -CH 2 OCH 2 CH 2 CH 2 - in general formula (2) of claim 3 and the left-most Y 1 represents a C 1 alkylene and the right-most Y 1 represents a C 3 alkylene in general formula (3) of claim 4. Claim s 1-3 and 7 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Gruning et al., U.S. Patent # 6,288,129 . Applicant is directed to Example 1 where there is described an enzyme-promoted transesterification of a linear polyoxyalkylene-polydimethylsiloxane-polyoxyalkylene block terpolymer (polyether modified as characterized by claim 2) with butyl acrylate. The extent of “acrylation” is 65% meaning there are 0.35 remaining hydroxyl groups per 0.65 acrylate groups (or 0.53:1) . Given that 65% of all hydroxyl groups are acrylated, and there are two hydroxyl groups per molecule, the number of acrylate groups in the modified polymer product is 1.3. This represents 1.3/42 x 100 = 3.1% of all the groups in the polymer. As for claim 3, whereas the hydroxyl groups are depicted in the polymer to be modified as being bonded to the propylene groups, i.e. where OH would be bonded to a -CH(CH 3 ) group instead of a CH 2 group, the Examiner submits that one of ordinary skill will appreciate that, when a polyether chain is depicted as (-CH(CH 3 )CH 2 O) x (CH 2 CH 2 O) y -, it is understood that these repeating units are distributed randomly such that the hydroxyl group may be bonded to a propylene oxide unit in some cases and an ethylene oxide unit in others. That is to say, the end group will inherently be HO-CH 2 -Y in some fraction of the polymers. Allowable Subject Matter Claims 6 and 8-18 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims. In none of the art rendering unpatentable claim 1 was the acrylate modifying compound one that would, upon reacting with the carbinol groups of the polysiloxane precursor, provide bridging moieties -X-C(=O)-X-. In one of the references not cited as a foundation for rejection, the acrylic moiety is introduced by acrylic acid attack of an epoxide-terminated diorganosiloxane. This too will not provide bridging moieties -X-C(=O)-X-. As for claims 8-18, the most applicable art available did not teach an anticipatory co-modified siloxane in the same context of preparing a dual-curable polysiloxane where the other crosslinking sources are a photoinitiator and a polyisocyanate compound nor as a component of a silicone PSA. The ISA identified a couple of additional references that are anticipatory of the same claims named in the above statements of rejection. In the name of brevity, and insofar as they serve to reject no more than what is rejected herein, the Examiner will abstain from formulating rejections over these at the present time. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MARC S ZIMMER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1096 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8:30-5:00 . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Heidi Kelley can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-1831 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. March 16, 2026 /MARC S ZIMMER/ Primary Patent Examiner, Art Unit 1765
Read full office action

Prosecution Timeline

Aug 26, 2023
Application Filed
Mar 16, 2026
Non-Final Rejection — §102, §112 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
95%
With Interview (+15.6%)
2y 7m
Median Time to Grant
Low
PTA Risk
Based on 1549 resolved cases by this examiner. Grant probability derived from career allow rate.

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