DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 04/16/2026 is acknowledged.
Claims 7-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/16/2026.
In the amendments filed on 04/16/2026, claims 1-6 are pending. Claims 7-17 are canceled.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Objections
Claims 2-6 are objected to because of the following informalities: Claim 2 recites “a0 is zero or 1;” “a0 and a1 independent of each other are zero or 1” in lines 11 and 17, which is redundant. The Office suggests that Applicant delete “a0 is zero or 1;”. Appropriate correction is required.
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 1-6 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 the limitation “A polysiloxane vinylic monomer, (1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence; (2) one sole terminal ethylenically unsaturated group; and (3) a quaternary ammonium moiety” in lines 1-3, which is indefinite because it is unclear how “A polysiloxane vinylic monomer”, “(1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence”. “(2) one sole terminal ethylenically unsaturated group”, and “(3) a quaternary ammonium moiety” are related to each other. Based on the specification of the instant application (p. 2), for further examination of the claims, this limitation is interpreted as “A polysiloxane vinylic monomer comprising (1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence; (2) one sole terminal ethylenically unsaturated group; and (3) a quaternary ammonium moiety”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parakka et al. (US 2012/0136087 A1).
Regarding claim 1, Parakka teaches a compound that is
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[0027], which reads on a polysiloxane vinylic monomer, (1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence, (2) one sole terminal ethylenically unsaturated group, and (3) a quaternary ammonium moiety as claimed.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schorzman et al. (US 2007/0242215 A1).
Regarding claim 1, Schorzman teaches monomers that have the following structures
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[0040], wherein n is an integer from 1 to about 300 [0013], which reads on a specific embodiment in which n is an integer from 5 to about 300, which reads on a polysiloxane vinylic monomer, (1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence, (2) one sole terminal ethylenically unsaturated group, and (3) a quaternary ammonium moiety as claimed.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (CN 107880213 A, machine translation in English or untranslated patent used for citation as indicated).
Regarding claim 1, Han teaches a siloxane quaternary ammonium salt monomer containing double bonds that has the structure (translation [0069])
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(untranslated [0067]), which reads on a polysiloxane vinylic monomer, (1) a polysiloxane polymer chain comprising at least 2 dimethylsiloxane units in a consecutive sequence, (2) one sole terminal ethylenically unsaturated group, and (3) a quaternary ammonium moiety. Han teaches that the siloxane quaternary ammonium salt monomer containing double bonds has the structure shown in the formula (translation [0024])
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(untranslated [0021]), wherein A is O or NH, a = 2-5, b = 2-4, c = 2-5, R1 is CH3 or C2H5, R2 is CH3 or C2H5, R1 and R2 may be the same or different, R3, R4, and R5 are independently selected from OSi(CH3)3,, OCH3, OC2H5, or C1-C3 alkyl groups, R3, R4, and R5 may be the same or different, and X is Cl, Br, or I (translated [0019], [0026]), which suggests modifying Han’s
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to have 5
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groups, which suggests (1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence as claimed.
Han does not teach a specific embodiment of (1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify Han’s
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to have 5
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groups. The proposed modification would read on (1) a polysiloxane polymer chain comprising at least 5 dimethylsiloxane units in a consecutive sequence as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because Han teaches a siloxane quaternary ammonium salt monomer containing double bonds that has the structure (translation [0069])
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(untranslated [0067]), and that the siloxane quaternary ammonium salt monomer containing double bonds has the structure shown in the formula (translation [0024])
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(untranslated [0021]), wherein A is O or NH, a = 2-5, b = 2-4, c = 2-5, R1 is CH3 or C2H5, R2 is CH3 or C2H5, R1 and R2 may be the same or different, R3, R4, and R5 are independently selected from OSi(CH3)3,, OCH3, OC2H5, or C1-C3 alkyl groups, R3, R4, and R5 may be the same or different, and X is Cl, Br, or I (translated [0019], [0026]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claims 2-4, Han teaches a siloxane quaternary ammonium salt monomer containing double bonds that has the structure (translation [0069])
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(untranslated [0067]), wherein the siloxane quaternary ammonium salt monomer containing double bonds is methacryloyloxyethyltrimethylammonium chloride (translation [0027]), which reads on wherein the polysiloxane vinylic monomer is represented by formula (1) in which To is a linear C1 alkyl, X- is a counter anion, R1 and R2 independent of each other are a C1 alkyl, E0 is a monovalent radical of
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, R0 is methyl, a0 is zero, X0 is O, n1 is an integer of 1, L1 is a divalent radical of
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, a0 independently is zero, R3 independently is a linear C1 alkylene divalent radical, L2 is a linear C2 alkylene divalent radical, wherein in formula (1) E0 is a monovalent radical of
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. Han teaches that the siloxane quaternary ammonium salt monomer containing double bonds has the structure shown in the formula (translation [0024])
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(untranslated [0021]), wherein A is O or NH, a = 2-5, b = 2-4, c = 2-5, R1 is CH3 or C2H5, R2 is CH3 or C2H5, R1 and R2 may be the same or different, R3, R4, and R5 are independently selected from OSi(CH3)3, OCH3, OC2H5, or C1-C3 alkyl groups, R3, R4, and R5 may be the same or different, and X is Cl, Br, or I (translated [0019], [0026]). Based on Han’s
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, the Office interprets Han’s OSi(CH3)3 for Han’s R4 in Han’s
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to be Si(CH3)3. Han’s teachings therefore suggest modifying Han’s
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to have 5
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groups and be terminated by the
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group, which suggests n1 is an integer of 4 as claimed.
Han does not teach a specific embodiment in which n1 is an integer of from 4 to 50, or wherein in formula (1) n1 is from 4 to 40. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify Han’s
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to have 5
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groups and be terminated by the
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group. The proposed modification would read on in which n1 is an integer of 4 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because Han teaches a siloxane quaternary ammonium salt monomer containing double bonds that has the structure (translation [0069])
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(untranslated [0067]), that the siloxane quaternary ammonium salt monomer containing double bonds is methacryloyloxyethyltrimethylammonium chloride (translation [0027]), and that the siloxane quaternary ammonium salt monomer containing double bonds has the structure shown in the formula (translation [0024])
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(untranslated [0021]), wherein A is O or NH, a = 2-5, b = 2-4, c = 2-5, R1 is CH3 or C2H5, R2 is CH3 or C2H5, R1 and R2 may be the same or different, R3, R4, and R5 are independently selected from OSi(CH3)3, OCH3, OC2H5, or C1-C3 alkyl groups, R3, R4, and R5 may be the same or different, and X is Cl, Br, or I (translated [0019], [0026]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 5, Han teaches a siloxane quaternary ammonium salt monomer containing double bonds that has the structure (translation [0069])
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(untranslated [0067]), wherein the siloxane quaternary ammonium salt monomer containing double bonds is methacryloyloxyethyltrimethylammonium chloride (translation [0027]). Han teaches that the siloxane quaternary ammonium salt monomer containing double bonds has the structure shown in the formula (translation [0024])
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(untranslated [0021]), wherein A is O or NH, a = 2-5, b = 2-4, c = 2-5, R1 is CH3 or C2H5, R2 is CH3 or C2H5, R1 and R2 may be the same or different, R3, R4, and R5 are independently selected from OSi(CH3)3, OCH3, OC2H5, or C1-C3 alkyl groups, R3, R4, and R5 may be the same or different, and X is Cl, Br, or I (translated [0019], [0026]). Based on Han’s
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, the Office interprets Han’s OSi(CH3)3 for Han’s R4 in Han’s
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to be Si(CH3)3. Han’s teachings therefore suggest modifying Han’s formula
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to have 5
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groups and be terminated by the
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group, and to use an NH to substitute for the single-bonded O in the ester group of Han’s formula, which suggests wherein in formula (1) E0 is a monovalent radical of
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in which RN1 is hydrogen as claimed.
Han does not teach a specific embodiment wherein in formula (1) E0 is a monovalent radical of
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in which RN1 is hydrogen or a C1-C6 alkyl. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to modify Han’s formula
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to have 5
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groups and be terminated by the
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group, and to use an NH to substitute for the single-bonded O in the ester group of Han’s formula. The proposed modification would read on wherein in formula (1) E0 is a monovalent radical of
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in which RN1 is hydrogen as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because Han teaches a siloxane quaternary ammonium salt monomer containing double bonds that has the structure (translation [0069])
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(untranslated [0067]), that the siloxane quaternary ammonium salt monomer containing double bonds is methacryloyloxyethyltrimethylammonium chloride (translation [0027]), and that the siloxane quaternary ammonium salt monomer containing double bonds has the structure shown in the formula (translation [0024])
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(untranslated [0021]), wherein A is O or NH, a = 2-5, b = 2-4, c = 2-5, R1 is CH3 or C2H5, R2 is CH3 or C2H5, R1 and R2 may be the same or different, R3, R4, and R5 are independently selected from OSi(CH3)3, OCH3, OC2H5, or C1-C3 alkyl groups, R3, R4, and R5 may be the same or different, and X is Cl, Br, or I (translated [0019], [0026]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Allowable Subject Matter
Claim 6 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.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 6, Han et al. (CN 107880213 A, machine translation in English or untranslated patent used for citation as indicated) renders obvious the polysiloxane vinylic monomer of claim 3 as explained above.
Han does not teach that in formula (1) E0 is a monovalent radical of
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. Although Han teaches that the siloxane quaternary ammonium salt monomer containing double bonds has the structure (translation [0069])
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(untranslated [0067]), that the siloxane quaternary ammonium salt monomer containing double bonds is methacryloyloxyethyltrimethylammonium chloride (translation [0027]), that the siloxane quaternary ammonium salt monomer containing double bonds has the structure shown in the formula (translation [0024])
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(untranslated [0021]), wherein A is O or NH, a = 2-5, b = 2-4, c = 2-5, R1 is CH3 or C2H5, R2 is CH3 or C2H5, R1 and R2 may be the same or different, R3, R4, and R5 are independently selected from OSi(CH3)3, OCH3, OC2H5, or C1-C3 alkyl groups, R3, R4, and R5 may be the same or different, and X is Cl, Br, or I (translated [0019], [0026]), which does not reads on wherein in formula (1) E0 is a monovalent radical of
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. The prior art of record do not teach or suggest the polysiloxane vinylic monomer of claim 3 wherein in formula (1) E0 is a monovalent radical of
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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