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 § 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 2, 3, and 18-20 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 2 contains the following very convoluted language,
“and wherein the propaldehyde-functional group has formula propylaldehyde-functional group covalently bonded to silicon may have the formula
PNG
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104
148
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Greyscale
where G has empirical formula -C2H4-.”
Not only is there duplicative subject matter here but the above formula merely provides a structural representation of a propylaldehyde group, which is already required of the organosilicon-based precursor in claim 1. In this sense, claim 2 is not further limiting of claim 1. (It is already presumed that the propylaldehyde group is bonded to silicon given that it is characterized as a “propyaldehyde-functional organosilicon compound”.)
Claim 3 is not further limiting insofar as the claim 1 defines the compound undergoing imidization/dehydrative imine generation as one that is propylaldehyde-functional. Only a vinyl-functional organosilicon compound subjected to hydroformylation will provide a propylaldehyde group. By contrast, claim 3 characterizes (B) as alkenyl-functional, which of course is open to alkenes other than vinyl.
Claims 18-20 are rejected as not-further limiting on a similar foundation. The polymer products in claim 17, from which claims 18 and 19 depend, are all defined as being aminopropyl-functional, and even the preamble of claims 18 and 19 states that it is aminopropyl-functional, yet the group G, which connotes the hydrocarbon linker between the silicon atom of the organosilicon compound and the amine group, is somehow allowed to have up to 8 carbon atoms. The silazane compound of claim 20 is, likewise, aminopropyl-functional and, thus, G is necessarily a C2H4 moiety.
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.
Allowable Subject Matter
Claims 2, 3, and 18-20 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. Claims 1 and 4-17 are allowable.
The general approach of making an amine-functional compound according to the approach defined by claim 1 is known. See, for instance, U.S. 2011/0222611 and U.S. Patent No. 5,055,618. However, the Examiner saw essentially no evidence that it had ever been contemplated to prepare an amine-substituted organosilicon compound in this manner.
Indeed, the Examiner did not even encounter any disclosures, outside of ones that were commonly assigned and did not constitute prior art, that taught the preliminary reaction of an aldehyde-substituted organosilicon compound with a primary amine so as to form an silicon-bound imine-containing group. In fact, the only references encountered that taught the formation of an imine bond involving an organosilicon compound were ones in which the organosilicon compound had an aminoalkyl substituent that had been reacted with an aldehyde or ketone compound. See, for instance, WO 2020/018690 and U.S. 2,942,019.
An open source article entitled “Methods for the Preparation of Modified Polyorganosiloxanes (A Review) authored by Yur’evich K. A et al. and published in Orient J Chem 2018; 34(2) available at
https://www.orientjchem.org/vol34no2/methods-for-the-preparation-of-modified-polyorganosiloxanes-a-review/
makes reference to polyorganosiloxane functionalization with nitrogen containing groups with their subsequent reduction to amino groups but there is no development of this concept whatsoever.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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August 7, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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