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 .
DETAILED ACTION
Claims 1, 4-12 and 15-16 of C. Hartmann-Thompson et al., US 18/285,382 (Mar. 4, 2022) are pending. Claims 7-12, 15 and 16, to the non-elected inventions of Groups (II)-(IV) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 1 and 4-6 are under examination on the merits. Claims 1 and 5 are rejected. Claims 4 and 6 are objectionable.
Election/Restrictions
Applicant elected 1 and 4-6 drawn to a reaction product of components comprising: an alicyclic hydrocarbon containing at least one 5- or 6-membered ring and having at least two carbon-carbon multiple bonds; and a first organosilane, without traverse in the Reply to Restriction Requirement filed on May 11, 2026. Claims 7-12, 15 and 16, to the non-elected inventions of Groups (II)-(IV) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction/election requirement is made FINAL.
Claim Objections
Claims 4 and 6 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.
Claim Rejections - 35 USC § 102 (AIA )
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
§ 102(a)(1) Rejection over S. Silver et al., European Journal of Organic Chemistry, 1058-1081 (2005) (“Silver”)
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by S. Silver et al., European Journal of Organic Chemistry, 1058-1081 (2005) (“Silver”).
It is first noted that the claim 1 “reaction product” is claimed using product-by-process language. MPEP § 2113(I); see footnote 2.
Silver teaches the reaction product (72) of 2-allyl-1H-indene (48) and 1,2-bis-dimethyl-silyl-ethane as follows:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Silver at page 1078, col. 1 (under the heading “1-{[2-(Dimethyl-indenyl-silanyl)-ethyl]-dimethyl-silanyl}-indene (72)”). Silver’s above 2-allyl-1H-indene (48), meets the claim 1 meaning of:
Claim 1 . . . an alicyclic hydrocarbon containing at least one 5- or 6-membered ring and having at least two carbon-carbon multiple bonds . . .
Here the bolded claim 1 term “containing” is interpreted as open-ended.1 As such, the indene ring of Silver’s 2-allyl-1H-indene (48), which is a a six-membered ring fused with a five-member ring, meets the meaning of “containing at least one 5- or 6-membered ring”. And Silver’s 1,2-bis-dimethyl-silyl-ethane meets the claim 1 meaning of “a first organosilane” as defined by the claim 1 formula. Thus, by definition Silver’s reaction product (72) of these two components meets each and every limitation of the claim 1 “reaction product”. Claim 1 is therefore anticipated.
The limitations of claim 5 are clearly met by Silver’s 2-allyl-1H-indene (48),
Subject Matter Free of the Art of Record
Claims 4 and 6 are free of the art of record. The claimed invention is directed to compositions having low dielectric constant and/or low dielectric loss characteristics suitable for use in 5G enabled wireless telecommunication devices, especially in the context of gap fillers and Organic Light Emitting Diode (OLED) encapsulant inks. Specification at page 1, lines 30-33. The specification teaches that:
The reaction product may be a linear polymer, or a branched polymer. In some preferred embodiments, the reaction product comprises a hyperbranched polymer, preferably having a plurality of vinyl groups. Hyperbranched polymers (e.g., a reaction product) are highly branched three-dimensional (3D) structures which have a multiplicity of reactive chain-ends. Generally, they do not constitute a 3-dimensional crosslinked network. Hyperbranched polymers can be made by careful attention to stoichiometry during manufacture according to methods well known in the chemical arts.
Specification at page 4, lines 9-14 (emphasis added). The claim 4 and 6 “reaction product of components” is claimed using product-by-process language. MPEP § 2113(I).2 While the patentability of a product generally does not depend on the process by which it is made, an exception lies where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979); MPEP § 2113(I).
The closest art of record to claim 4 is S. Silver et al., European Journal of Organic Chemistry, 1058-1081 (2005) (“Silver”). As discussed above, Silver teaches the reaction product (72) of 2-allyl-1H-indene (48) and 1,2-bis-dimethyl-silyl-ethane as follows:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Silver at page 1078, col. 1 (under the heading “1-{[2-(Dimethyl-indenyl-silanyl)-ethyl]-dimethyl-silanyl}-indene (72)”). Silver differs from claim 4 in that Silver’s above 2-allyl-1H-indene (48) does not meet the claim 4 limitation of:
Claim 4 . . . wherein the 5- or 6-membered ring is bonded to from 2 to 4 monovalent groups having the formula -(CH2)xCH=CH2, wherein each x is independently 0 or 1.
The claim 4 “reaction product of components” is clearly chemically and structurally different from Silver’s product (72) because a different unsaturated alicyclic hydrocarbon is employed. MPEP § 2113(I) (citing In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)). Claim 4 is not obvious in view of Silver, because neither Silver nor Silver in combination with secondary art motivates one of ordinary skill to replace or structurally modify Silver’s 2-allyl-1H-indene (48) so as to meet the claim 4 requirement that the “5- or 6-membered ring is bonded to from 2 to 4 monovalent groups having the formula -(CH2)xCH=CH2”.
The closest art of record to claim 6 is D. Hucul et al., US 2012/0237855 (2012) (“Hucul”). Hucul discloses use of a modified carbon-supported platinum catalyst to form a catalyzed electrode for the use in a polymer electrolyte fuel cell (PEFC). Hucul at page 4, [0060]. Hucul teaches that hyperbranched polycarbosilanes, are low volatility precursors that have a high yield to silicon carbide after calcinations. Hucul at page 3, [0053]. In Example 5, Hucul teaches platinum catalyzed reaction of tetraallylsilane with HSiMe2CH2CH2SiMe2H to provide a hyperbranched polycarbosilane. Hucul at page 5, [0076]-[0081] (Example 5). Hucul’s HSiMe2CH2CH2SiMe2H meets the claim 1 limitation of:
PNG
media_image2.png
200
400
media_image2.png
Greyscale
And Hucul’s hyperbranched polycarbosilane product is per claim 6 “hyperbranched and comprises a plurality of vinyl groups”. Hucul Example 5 differs from the claim 6 synthetic process in that Hucul does not react:
(per base claim 1) an alicyclic hydrocarbon containing at least one 5- or 6-membered ring and having at least two carbon-carbon multiple bonds
as a reaction component. The specification evidences that the claim 6 “reaction product of components . . . wherein the reaction product is hyperbranched and comprises a plurality of vinyl groups” is chemically and structurally different from Hucul’s hyperbranched polycarbosilane that comprises a plurality of vinyl groups. In specification Comparative Example B (CE-B), a reaction similar to Hucul was performed, only differing in the solvent (Hucul THF versus specification’s toluene). Specification at page 8, lines 25-35. Specification Example 1 (a claimed embodiment) was performed similarly to Comparative Example B (and Hucul) but further including 5-vinylbicyclo[2.2.1]hept-2-ene as a reaction component. Specification at page 8, lines 18-24. Specification Example 2 (also a claimed embodiment) was performed as Example 1 but 1,2,4-trivinylcyclohexane is included as a reaction component. Specification at page 8, lines 18-24. Specification Table 2 shows that the polymer products of Examples 1 and 2 differ from Comparative Example B (prior art Hucul), particularly in the Tg, °C. Thus, although claim 6 is a product-by-process claim, the claim 6 manufacturing process steps impart distinctive structural characteristics to the final product such that it differs from Hucul’s Example 5 product. In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979); MPEP § 2113(I). Claim 6 is not obvious in view of Hucul, because neither Hucul nor Hucul in combination with secondary art motivates one of ordinary skill to modify Hucul by including (per base claim 1) a “an alicyclic hydrocarbon containing at least one 5- or 6-membered ring and having at least two carbon-carbon multiple bonds” as a reaction component in Hucul Example 5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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, Scarlett Goon can be reached at 571-270-5241. 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.
ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. MPEP § 2111.03.
2 A product-by-process claim, is a product claim that defines the claimed product in terms of the process by which it is made. MPEP § 2173.05(p). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP § 2113(I). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113(I) (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). However, the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. MPEP § 2113.
Prosecution Insights