DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 6/19/26 is acknowledged.
The Examiner notes that applicants did not respond to the election of species
requirement but, in an effort to expedite prosecution, the Examiner will search and examine both species at once.
Claim Rejections - 35 USC § 112
Claim 22 is 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.
The subscripts x, y, z, t and w are not defined such that it is unclear what amount
of these units are present or if they are even required.
Claim Rejections - 35 USC § 102 and 103
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.
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.
Claims 18 to 24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ferrar et al. US 2022/0380599.
The effective filing date for Ferrar et al. is May 4, 2021 as this is the filing date
of the provisional application.
Ferrar et al. teach POSS compounds (silsesquioxanes or trifunctional siloxanes) having 100% trifunctional units, including at least one that has a polyether group. These correspond to the polysiloxane (ii) in claim 18.
See the specific POSS molecules show in in paragraphs 18, 19 and 23. These compounds have a combination of units in which groups meeting both R1’ and R3’ are present. This corresponds to units having “d” of at least 50 mol% and at least one “e” unit.
For instance, in the compound POSS III in paragraph 23 there are 5 R1’aSiO3/2 units (in which a methacryloyl group is a monovalent substituted hydrocarbon radical) and 3 R3’cSiO, in which a polyethylene oxide meets the formula for claimed R3’ and is attached via an Si-C-O linkage. Such a structure anticipates claim 18. Paragraph 14 teaches the specific structure of the polyoxyethylene that meets the formula for claimed R3’.
For claims 19, 20 and 22 to 24, note that these claims place no additional limita-tion on the organopolysiloxane (ii) such that they do not distinguish the claimed organo-polysiloxane from that found in Ferrar et al.
For claim 21, the content of the corresponding R3’ group lies within this range. By the Examiner’s rough calculations the R3’ groups have a wt% content of around 60%.
Claims 18 to 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haluska 2,846,458.
Haluska teaches organosiloxane ethers and while the entire teachings in Haluska
are relevant to this rejection, for brevity the Examiner will refer to Example 7.
This shows a siloxane having 100% trifunctional siloxane units, all units having polyether group meeting claimed R3’ in formula (II). In R3’, R’a can be ethylene, ORb’ can be an ethylene oxide group and O-Rc’ can be OMe. Additionally “j” can be 1. The silox-ane shown has 100% “e” units and anticipates siloxane (ii), formula (II).
For claims 19, 20 and 22 to 24, note that these claims place no additional limita-tion on the organopolysiloxane (ii) such that they do not distinguish the claimed organo-polysiloxane from that found in Haluska.
For claim 21, the content of the corresponding R3’ group lies within this range. By the Examiner’s rough calculations the R3’ groups have a weight % of about 66%.
Claims 18 to 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Brehm et al. 7,053,166.
Brehm et al. teach a method of reacting an SiH siloxane (column 3, lines 5 to 15)
with an alcohol such that the SiH bonds are replaced by the alkoxide radicals of the alcohol and result in a siloxane having an Si-O-C linked polyether. This corresponds generally to the claim polysiloxane (i) having formula (I) in claim 18.
Particularly note that the SiH groups can be present on the backbone. This will result in a siloxane in which the “y” groups in formula (I) of Brehm et al. possess the 2 SiO1/2 groups shown in formula (I), as well as the SiO1/2 resulting from the reaction of the SiH and alcohol. When the alcohol is a polyether this will result in a siloxane having trifunctional units having a polyether group.
Note that, in formula (I), the ‘y” group can be as high as 80 while the “x” group can be present as low as 0. The ranges in column 3, lines 15-34, are not sufficient to anticipate a siloxane having more than 50% trifunctional units but, one is embraced by the teachings therein. For instance, both “y” and “x” can be the same number, up to 80, which will result in 50% trifunctional units. Also “y” can be as high as 80 while “x” can be anywhere from 0 to 80, which result in at least 50% trifunctional units.
It has been held that where the general conditions of a claim are disclosed
in the prior art, discovering the optimum or workable ranges involves only routine
skill in the art.
As such one having ordinary skill in the art would have found an organopolysilox-ane of formula (I) to have been obvious over Brehm et al. In this manner claim 18 is rendered obvious.
For claims 19 and 20, see the polyether used in column 6, line 18, which is a poly propylene oxide having a corresponding “n” value of 30 and “m” value of 0. While this is not reacted with a siloxane that will result in at least 50 mol% trifunctional units, as noted above such an SiH siloxane is embraced by the general formula in Brehm et al. such that one having ordinary skill in the art would have found such an SiH reactant and, thus, the organopolysiloxanes of claims 19 and 20 to have been obvious.
For claim 21, given the weight relationship between polyether groups such as the polypropylene oxide found in column 6 and the siloxane backbone as found in column 2, the skilled artisan would have found a wt% of R3 content within this claimed range to have been obvious.
For claim 22 note that the units in the obvious siloxane discussed above having corresponding “z” units. It is unclear if other units are required such that this siloxane appears be meet the requirement of this claim.
For claim 24 note that this is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patent-ability is based on the product itself. The patentability of a product does not depend on its method of production. 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.
Allowable Subject Matter
Note that if claim 23 were amended to depend only upon an organopolysiloxane of (i), formula (I), it would be in condition for allowance. That is, none of the prior art found by the Examiner taught or suggested and Si-O-C attached polyester R3 group as found in (i), formula (I) and having these specific ratio of units.
Conclusion
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
6/27/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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