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(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.
Claims 21-25 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.
Applicant has amended claim 21 to replace the first disclosure of a “hydroxyl-functional silicone compound” with a “hydroxy-functional polymerized siloxane”, the intended benefits of which are unclear. In so doing, they have left the subsequent mention of “the hydroxyl-functional silicone compound” without proper antecedent basis.
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 21-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burril, EP 100623 for the reasons outlined previously.
Response to Arguments
It is Applicants’ contention that the claimed- and prior art methods are not even similar to one another. The Examiner respectfully does not concur, although it should be emphasized that it is not especially material that the two methods are the same/similar but, rather, whether products derived therefrom are patentably indistinct. Certainly, it can at least be said that the precursors outlined in Examples 1 of the reference and the instant Specification from which the silicone-modified polyesters are obtained are similar. Both employ neopentyl glycol and telechelic silanol-terminated polyalkylphenylsiloxane. One contains trimethylolpropane whereas the other incorporates trimethylolethane. Both use a structural isomer of phthalic acid. Of course, the claims are hardly so confined.
Example 1 of the instant Specification describes a preliminary reaction of the telechelic silanol-terminated polyalkylphenylsiloxane with the alcohol mixture, thus forming transetherification products (often referred to in the realm of organosilicon modification also as transesterification ostensibly because Si is a metalloid). Subsequently, the transetherification/transesterification product is reacted with a polycarboxylic acid mixture. Applicant emphasizes in their arguments that the resulting product will have silyl ether functional, which they improperly represent as Si-O-Si-R, as opposed to Si-O-R where R is contributed by the hydrocarbon portion of the alcohol compound and may contain residual hydroxyl groups insofar as the alcohols in use in the polymerization are diols/triols.
The prior art process differs in that the dircarboxylic acid (ester) and polyol mixture are reacted first with an apparent of excess of the polyol being used given that polyester macromer derived therefrom is said to contain 8% hydroxyl groups. The silanol-terminated alkylphenylsiloxane resin and also a transesterification (transetherification) catalyst are introduced thereafter. The silanol groups, one of ordinary skill will appreciate, are reacted with the residual hydroxyl groups present in the polyester macromer also forming Si-O-C bonds, which Applicant alleged would be absent.
The latter of these two differs from the former in that the dicarboxylic acid is added (to the polyol mixture) in the first stage and the silanol-terminated alkylphenylsiloxane resin in the second stage whereas exactly the opposite ordering of operations is performed in the former, i.e. the silanol-terminated alkylphenylsiloxane resin is added (to the polyol mixture) in the first stage and the dicarboxylic acid in the second stage. Hence, the Examiner disagrees with Applicants’ assertion that the process in Burril does not merely involves a reordering of the steps. More importantly, the Examiner contends that the resulting products are patentably indistinct with both featuring Si-O-C linkages derived the silanol moieties of the polysiloxane and the alcohol groups of either the polyol monomers or the hydroxyl groups present in the polyester macromer.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, Heidi Kelley can be reached at 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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May 18, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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