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 .
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 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claim 1, in the reply filed on 5/8/26 is acknowledged.
Claims 2-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2/8/26.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujii et al. (US 2014/0179879, “Fujii”) in view of Laine et al. (US 2006/0122351, “Laine”).
Regarding claim 1, Fujii teaches a liquid resin that may be oligomeric ([0121]) and may be vinyl functionalized (e.g., [0119] – [0121], [0009] – [0017], and see) and has an octa-silsesquioxane structure similar to that of Formula 1 (see formula 2, reproduced below, [0015]). Fujii teaches that a cage octa-silsesquioxane may react with an alkenyl group-containing polysiloxane ([0018]) in order to provide functionalization and that the polysiloxane may be of a form reading on the claimed R unit (see [0051], wherein the polysiloxane may have repeated SiO units and terminal alkenyl groups, e.g., [0053], [0054]). Therefore, the resulting octa-silsesquioxane would have a structure reading on that of Formula 1.
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Further, in the same field of endeavor of cage silsesquioxane structures (e.g., [0005] – [0011]), Laine teaches that it is known to include functional groups having extended siloxane portions reacted to silicon atoms in a cage silsesquioxane so as to limit steric hindrances within the resinous silsesquioxanes (see Laine, [0010] and see functionalizing agents [0051], [0052]) and therefore, to the extent that this feature is not specifically described by Fujii, it would have been obvious to the ordinarily skilled artisan at the time of filing to have included a longer siloxane chain in the functionalizing agent of Fujii as taught by Laine in order to improve properties, including transparency, in the resin (see Laine, [0010]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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