DETAILED ACTION
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 1-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for some substituent groups
the office notes that in the case of Ra as NR5R6 when R5 and R6 are halogen the resulting amino species where nitrogen is bonded to a halogen can be stable or unstable depending on the halogen involved, with fluorine forming the most stable nitrogen halide and larger halogens producing increasingly unstable compounds.
This instability is also noted with SiR7R8,R9 and R13SiR10R11R12 when the R group are halogens. The resultant silyl-halogens are hydroscopic and readily reactive with moisture to be hydrolyzed to form siloxane networks and under certain conditions form silicones. Such halogenated species are not viewed in the art a final product, but are viewed as intermediates. The specification provides no description as to how such products exist or what conditions are utilized to stabilize these reactive end groups.
The specification while listing said groups fails offer enough support to show applicant was in possession of the invention as recited. Therefore, claims 1 and 10 along with all claims requiring the limitations claims 1 and 10 are rejected as lacking a suitable written description.
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 1-20 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.
Claim 1 recites:
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650
740
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The office notes that wherein RA represents mono to the maximum allowable substitution, or no substitution; wherein at least one of R^ is NR³R⁶, SiR⁷R⁸R⁹, or R¹³SiR¹⁰R¹¹R¹². As RA represents mono to the maximum allowable substitution bonded at Z4 to Z8 this correlates to a single point of substitution to a maximum of five points of substitution. When a Z group is substituted by RA said Z group must be a carbon atom. RA represents mono to the maximum allowable substitution bonded at Z4 to Z8; however, any Z group can be C or N but the Z groups as C are not substituted with RA are not defined. In other words, the metes and bounds of the substituent group options for Z as C not bonded to RA is indefinite which affects claims 1 and 10 and all claims requiring the limitations of said claims.
Claims 1-20 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.
Claim 1 recites:
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290
760
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Applicant has listed a number of examples for Ra above. The office notes that in the case of Ra as NR5R6 when R5 and R6 are halogen the resulting amino species where nitrogen is bonded to a halogen can be stable or unstable depending on the halogen involved, with fluorine forming the most stable nitrogen halide and larger halogens producing increasingly unstable compounds.
This instability is also noted with SiR7R8,R9 and R13SiR10R11R12 when the R group are halogens. The resultant silyl-halogens are hydroscopic and readily reactive with moisture to be hydrolyzed to form siloxane networks and under certain conditions form silicones. Such halogenated species are not viewed in the art a final product, but are viewed as intermediates. The specification provides no description as to how such products exist or what conditions are utilized to stabilize these reactive end groups. Therefore, the metes and bound of how said species can exist as a final product is lacking. This aspect of the invention is viewed as indefinite with respect to Claims 1 and 10 and all claims requiring the above mention substituents.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY D CLARK whose telephone number is (571)270-7087. The examiner can normally be reached on 8AM-4PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Chriss can be reached on 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY D CLARK/Primary Examiner, Art Unit 1786
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