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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 18, 19 and 21-23 are rejected under 35 U.S.C. 102(a1) as being anticipated by JP 2003096198 A (Santo) abstract and machine translation per IDS filed 02/11/2025 as evidenced by US 2014/0248557 (Yaguchi).
Santo discloses a process for reacting a (waste) silicone resin composed of organosiloxane bonds [0020] with water in a supercritical or subcritical state (meets Applicants’ process of reacting silicone waste with hydrothermal water or supercritical water) to produce silicone resin fine particles (meets Applicants’ solid mixture containing silicon) (e.g., abstract, examples, claims). Santo expressly exemplifies the organosilicone resin RSR213 having siloxane units.
As to claim 18, given that the same hydrothermal or supercritical conditions are disclosed by Santo, it would be expected that the Si-C and/or Si-O bonds of the silicone resin would be similarly cleaved.
As to claim 19, Santo’ organosilicone resin RSR213 does not contain halogens.
As to claim 21, given that the same hydrothermal or supercritical conditions are disclosed by Santo, it would be expected that methane would be similarly produced.
As to claim 22, in Example 1 Santo discloses a temperature of 400°C.
As to claim 23, Santo discloses the silicone resin fine particles can be reused/recycled [0001]/[0004].
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 26 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2003096198 A (Santo) described hereinabove.
Santo discloses that the process involves cooling the resin particles to room temperature. It would have been within the purview of one having ordinary skill in the art to conduct the cooling over the course of more hours with the reasonable expectation of success.
Response to Arguments
Applicant’s arguments and amendments filed August 14, 2026 have been fully considered and are persuasive. The 35 USC 102/103 rejections over JP 2003096198 A (Santo) have been withdrawn. Claim 1 has been amended to further recite that the silicone is reacted with hydrothermal water at a pressure of up to 160 bar. In contradistinction, Santo discloses a pressure of 20 MPa or more, i.e., over 200 bar. Santo does not suggest or provide any motivation of using a pressure of at most 160 bar as presently recited. An updated search has failed to reveal any additional prior art that would fairly teach, suggest or provide motivation to arrive at the presently claimed subject matter.
Allowable Subject Matter
Claims 9-13, 15-17, 25 and 27 are allowed.
Claims 20 and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Santo does not disclose or suggest the limitations per claims 20 and 24.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
