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 Objections
Claim 1 and the claims dependent therefrom are objected to because the alkenyl-containing siloxane compound is said to “contain(ing) an organopolysiloxane compound comprising units…” Very obviously, a compound doesn’t contain a compound hence it is suggested that Applicant simpliy remove the phrase, “containing an organopolysiloxane compound.”
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sterin et al., U.S. Patent Application Publication No. 2006/0089455 in view of Karstedt et al., U.S. Patent # 3,775,452.
Sterin outlines a process by which a catalyst complexed by an inhibitor conforming with either of formulae (I) or (III) as defined in the abstract, where tris(2,4-di--tert-butylphenyl)phosphite is a most favored permutation of the latter given that [0056] says of the variables R2, R4, and R5 in formula (III) of paragraph [0055] are preferably hydrogen atoms and t-butyl is exemplary of R1 and R3 according to that same passage, is prepared by first dispersing the aforementioned phosphorus compound into a silane- or siloxane bearing ethylenically-unsaturated groups and thereafter introducing the platinum catalyst. Paragraphs [0053,0060] state that the inhibitors adhering to formula (I), of which those having formulae (II) and (III) are exemplary, are dissolved in said silane or siloxane. By contrast, ones complying with formula (III)/(VIII), of which tris(2,4-di--tert-butylphenyl)phosphite is preferred, are insoluble and therefore are merely dispersed thus formation of the inhibited catalyst takes a little longer according to [0061].
As an aside, the Examiner expects that Applicant might argue that this represents a teaching away from the use of the phosphite required by claim 1 in which case he would respectfully disagree. "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).)
Unlike in some of the related disclosures, the catalyst is not prepared in situ but, rather, before being combined with the other components of a hydrosilylation-curable organopolysiloxane composition [0054]. Relevant to the present discussion, paragraph [0059] says of the unsaturated organosilicon compounds with which the phosphite compounds may be dispersed/dissolved, that those mentioned under formulae (1) and (2) in the Karstedt disclosure and incorporated by reference may be used and, in this connection, Karstedt mentions as embodiments of formula (2) compounds that comply with general formula (2) of claim 1 such as 1,3,5-trivinyl-1,3,5-trimethylcyclotrisiloxane and 1,3-divinyl-octamethylcyclopentasiloxane.
As for claims 3 and 4, it seems evident from Applicants’ examples that the mere mixing of the platinum compound, inhibitor, and vinylated siloxane diluent will lend to the “association” of the Pt center in addition to the complexation of the phosphite compound. In fact, page 13, paragraph [0016] of the instant Specification indicates that the platinum phosphite complex and vinylsiloxane compound readily form an associated compound.
Regarding claim 5, the paragraph bridging claims 18 and 19 of the Specification makes clear that the 1,3-divinyl-1,1,3,3-tetramethyldisiloxane is not necessarily free like the alkenylsiloxane compound of formula (2). Indeed, that passage says that it, “(is) contained as ligand to platinum.” Kardstedt catalysts inherently contain a bound 1,3-divinyl-1,1,3,3-tetramethyldisiloxane, at least when reacted with the phosphite compound, and therefore claim 5 is unpatentable.
Concerning the “free of hydrocarbon-based solvents” limitation, the broader disclosure of Sterin doesn’t address the form in which the platinum compound is added whereas Examples 1 and 2 refer to a platinum solution without identifying the solvent. Example 4, on the other hand mentions a vinylsilicone solution of Karstedt catalyst, in which case there would be no hydrocarbon solvent source.
The reference further contemplates the subsequent use of the platinum complex as a hydrosilylation catalyst for curing crosslinkable organopolysiloxane compositions thus anticipating claims 6 and 8.
Allowable Subject Matter
Claims 9-12 are allowable. The Examiner’s rejection is predicated on the platinum compound that is reacted with phosphite in the presence of 1,3,5-trivinyl-1,3,5-trimethylcyclotrisiloxane and 1,3-divinyl-octamethylcyclopentasiloxane being furnished in a solution of something other than a hydrocarbon such as the vinylsilicone diluent mentioned in Example 4. To the extent that there is no hydrocarbon compound present when the catalyst is formed, both steps steps (a) and (d) of claims 9 and 11 are not met.
There is contained in the prior art a number of references that at least teach the platinum-phosphite complex of claim 1 including U.S. Patent Nos. 6,300,455 and 7,452,955, in addition to the several disclosures cited in Applicants’ IDS. None of these teach combining said complex with a siloxane compound anticipatory of the alkenyl-containing siloxane (2).
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 21, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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