Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Indefiniteness Rejection
2. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 7-12 are 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.
Firstly, with respect to the definitions of R1, R2, and R 3, within claim 7, it is unclear what is meant by the language, “may be different radicals from the defined group”; the language is interpreted as allowing literally any definition for the variables; this so extends the scope of the variables that they are essentially meaningless.
Secondly, with respect to claim 7, the use of “may” within the definitions of R1, R2, R 3, and a, renders the claims indefinite, because it is unclear if or to what extent the language denoted “may” is a mandated limitation.
Thirdly, with respect to claim 11, the language, “the free radical polymerization”, lacks antecedence
Prior Art Rejection
4. 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.
5. Claims 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Herzig et al. (US 2010/0137544 A1) in view of Akahane et al. (US 2014/0120793 A1).
Herzig et al. disclose an organopolysiloxane having applicant’s claimed formula (I), wherein the R variable of the formula preferably contains a vinyl group (see abstract and paragraphs [0005]-[0013], especially paragraph [0008], and Example 1. Regarding claims 10 and 11, the examples disclose the use of catalyst and solvent, and the position is taken that the use of other conventional additives, such as those disclosed within paragraphs [0071]-[0093] of the secondary reference, would have been obvious, since it has been held that it is prima facie obvious to use a known component for its known function.
6. Furthermore, though the primary reference discloses the production of rapid crosslinking addition systems and coatings (see paragraph [0027]), the reference is silent with respect to the production of metal (copper) clad laminates. Still, the use of vinyl containing polysiloxane to produce copper clad laminates was known at the time of invention, as disclosed within Example 1 of the secondary reference. Accordingly, the position is taken that it would have been obvious to utilize the vinyl group-containing organopolysiloxane of Herzig et al. to also produce the claimed laminates.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 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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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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