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 .
The status of the parent application must be updated at the beginning of the specification.
The abstract of the disclosure is objected to because its formulas are illegible. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claims 1,6 and 7 objected to because of the following informalities: The formulas of claims 1,6 and 7 are illegible.
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 2 and 4 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 2’s “Y is said to have a polycarbonate constituent, yet claim 1’s definition of “Y” does not permit carbonate groups in “Y”.
Claim 4’s single unit of a carbonate structure would not qualify as a “polycarbonate”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Claim 1 already defines “low molecular weight to be 1,000 or less. The only method applicant’s specification provides for measuring this low molecular weight component is by GPC (paragraph 83 of spec). It is not seen what hypothetical subject matter could possibly fall within the bounds of claim 1, but not claim 3. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1 and 3-8 rejected under 35 U.S.C. 102(a)(1) as being anticipate by Goldberg 2999845.
Goldberg exemplifies (#1) 0.2 mol bisphenol A, 0.1 mol dimethldichlorosilane and phosgene. The bisphenol A and dimethyldichlorosilane would form applicant’s (1-1) units, with the remaining BPA reacting with phosgene to produce applicant’s (3-1) units according to:
CH3 CH3 O
I I II
Cl -Si-Cl + HO-Ph-C-Ph-OH + Cl-C-Cl
I I
CH3 CH3
↓
CH3 CH3 O CH3
I I II I
-{Si-O -Ph-C-Ph-}n-{OCO-Ph-C-Ph}n -
I I I
CH3 CH3 CH3
There will be equal amounts of (3-1) and (1-1) units because there was twice as many moles of BPA than dimethyldichlorosilane used. The first half react with the silane, the second half with the phosgene. This meets applicant’s 30:70 to 99.9:0.1 ratio.
The dimethoxydimethylsilane results in R1=R2= methyl of applicant’s formula (1-1). J1=K1 = zero in (1-1).
The bisphenol A ensures R3=R4=R5=R6=R7=R8=R9=R10= hydrogen and X is isopropylidene in formula (1-1). R13=R14=R15=R16=R17=R18=R19=R20= hydrogen and Y is isopropylidine; J2 and K2 and are zero in formula (3-1).
The <30% low MW impurities limitation appears to encompass the standard amount of such impurities in common polycarbonate forming reactions. Goldberg does not indicate large amounts of impurities are present. There is no reason to believe Goldberg contains large amounts of these impurities.
In regards to applicant’s dependent claims:
Goldberg does not report Mw, but does give the intrinsic viscosity as 0.06 in dioxane for the cited example. The Mw can be estimated from the Mark-Houwink equation:
Ƞ = 0.0003MW.71 (see the Ahmed article in Pakistan J. Sci.)
The molecular weight for a 0.06 intrinsic viscosity polycarbonate is ~1,700g/mol.
Given the molecular weight of the two repeat units are 285g/mol and 254g/mol, the number of repeating units (1-1) and (3-1) must be each well below the 1,000 maximum of applicant’s claim 4.
The “Q” value of applicant’s claim 5 is merely a measure of melt flow rate. Given Goldberg’s 1,700 molecular weight is well below applicant’s examples (ie ~15,000-63,000 table 1), Goldberg’s “Q” flow rate would be much higher than applicant’s minimum of claim 5.
Applicant’s claims 6 and 7 simply define the structures of impurities that need not be present. There is no reason to believe Goldberg contains significant amounts of these impurities.
Claim 8’s pyrolysis value is not reported by Goldberg. Given Goldberg’s structure mirrors that of applicant, the same pyrolysis value is expected.
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.
Claims 1 and 3-8 rejected under 35 U.S.C. 103 as being unpatentable over Hiiro 6407193.
Hiiro teaches (col 7 line 28-31) the reaction product of diol/silicon compound/dicarbonate in molar ratios of 1/0.4-2/0.4-2 to make polycarbonate-siloxanes. Bisphenol A is a preferred diol (col 6 line 26) and qualifies as applicant’s aromatic diol. Dimethoxydimethylsilane (col 5 line 43) is a preferred silicon compound and qualifies as applicant’s dialkyldialkoxy silane. Diphenylcarbonate (col 7 line 23) is the preferred carbonate and coincidentally is applicant’s preferred carbonate. Transesterification catalysts are included such as those based on alkali and alkali earth metals (col 9 line 29-34).
Bisphenol A and dimethoxydimethylsilane would form applicant’s (1-1) and (3-1) units with some of the BPA reacting with the silane and some of the BPA reacting with the diphenylcarbonate according to:
CH3 CH3 O
I I II
CH3O -Si-OCH3 + HO-Ph-C-Ph-OH + PhOCOPh
I I
CH3 CH3
↓
CH3 CH3 O CH3
I I II I
-{Si-O -Ph-C-Ph-}n-{OCO-Ph-C-Ph}m -
I I I
CH3 CH3 CH3
The dimethoxydimethylsilane results in R1=R2= methyl of applicant’s formula (1-1). J1=K1 = zero in (1-1).
The bisphenol A ensures R3=R4=R5=R6=R7=R8=R9=R10= hydrogen and X is isopropylidene in formula (1-1). R13=R14=R15=R16=R17=R18=R19=R20= hydrogen and Y is isopropylidine; J2 and K2 and are zero in formula (3-1).
Hiiro does not report the mol% of siloxane in the final polycarbonate-siloxane copolymer.
Because the molar ratio of silicon compound to diphenylcarbonate may be as a high as 2:0.4, it would appear unavoidable that at least 30mol% of the resulting polymer would be the siloxane unit (3-1) at such high ratios. These ratios at the higher end of Hiiro’s range render obvious applicant’s 30:70 to 99.9:0.1 range.
The <30% low MW impurities limitation appears to encompass the standard amount of such impurities in common polycarbonate forming reactions. Hiiro does not indicate large amounts of impurities are present. There is no reason to believe Hiiri contains large amounts of these impurities – especially in view of the fact Hiiri’s polymerization process mirrors that of applicant.
In regards to applicant’s dependent claims:
The Mw of the polycarbonate-siloxane can be ~40,000-63,000 (table 1). Given the molecular weight of the two repeat units are 285g/mol and 254g/mol, the number of repeating units (1-1) and (3-1) must be each well below the 1,000 maximum of applicant’s claim 4.
The “Q” value of applicant’s claim 5 is merely a measure of melt flow rate. Given Hiiro’s ~40,000-63,000 molecular weights (table 1) correspond closely to applicant’s examples (ie ~15,000-63,000 table 1) the same “Q” flow rates would be expected.
Applicant’s claims 6 and 7 simply define the structures of impurities that need not be present. There is no reason to believe Hiiro contains significant amounts of these impurities – especially in view of the fact Hiiro’s polymerization process mirrors that of applicant.
Claim 8’s pyrolysis value is not reported by Hiiro. Given Hiiro’s polymerization process mirrors that of applicant, the same pyrolysis value is expected.
Claims 1 and 3-8 rejected under 35 U.S.C. 103 as being unpatentable over Hiiro 6407193 in view of Ideta 2020/0407499.
Hiiro applies as explained above.
Hiiro’s disclosure appears to include high siloxane content final polymers. Hiiro does not explain the advantages of high siloxane content in polycarbonate-siloxanes.
Ideta produces polycarbonate-siloxane polymers with high siloxane content (see table 1-1). Ideta explains (paragraph 55) that higher siloxane contents provide flexibility which is reason to select the higher amounts of siloxane suggested by Hiiro.
Claims 1 and 3-8 rejected under 35 U.S.C. 103 as being unpatentable over Hiiro 6103837 as evidenced by Jung 8088849.
Hiiro exemplifies (#14) a polycarbonate-siloxane derived from dimethoxydimethylsilane and Panlite L125W polycarbonate. Panlite L1250W is a bisphenol A based polycarbonate (see col 6 line 14-16 of Jung 8088849).
The dimethoxydimethylsilane will insert itself within the polycarbonate chain
according to:
CH3 CH3 O
I I II
CH3O -Si-OCH3 + HO-{Ph-C-Ph-OCO}x-H
I I
CH3 CH3
↓
CH3 CH3 O CH3
I I II I
-{Si-O -Ph-C-Ph-}n-{OCO-Ph-C-Ph}m -
I I I
CH3 CH3 CH3
The dimethoxydimethylsilane results in R1=R2= methyl of applicant’s formula (1-1). J1=K1 = zero in (1-1).
The bisphenol A ensures R3=R4=R5=R6=R7=R8=R9=R10= hydrogen and X is isopropylidene in formula (1-1). R13=R14=R15=R16=R17=R18=R19=R20= hydrogen and Y is isopropylidine; J2 and K2 and are zero in formula (3-1).
There is 3.1% Si atoms in the final polycarbonate-siloxane (table 1).
The molecular weight of the two repeat units are 285g/mol and 254g/mol and the molecular weight of a Si atom is 28. The weight of the Si would be:
28 x n
0.031 = ----------------------------
(285 x n) + (254 x m)
The n/m ratio must be 0.42/1 meaning there are 0.42 “siloxane units” (1-1) per “polycarbonate” unit (3-1). This means 0.42/(0.42 + 1) or 29.6% of the polycarbonate-siloxane is (1-1) siloxane units. This is just below applicant’s 30% minimum.
However, Hiiro (col 9 line 33-45) explains that the siloxane unit provides fire retardance.
It would have been obvious to marginally increase the amount of siloxane unit to increase flame retardancy. Furthermore, the mere close proximity itself renders obvious the 30% limitation (see MPEP 2144.05; Titanium Metals v Banner 227USPQ 773).
The <30% low MW impurities limitation appears to encompass the standard amount of such impurities in common polycarbonate forming reactions. Hiiro does not indicate large amounts of impurities are present. There is no reason to believe Hiiri contains large amounts of these impurities.
In regards to applicant’s dependent claims:
The Mw of the cited example’s polycarbonate-siloxane is 58,000 (table 1). Given the molecular weight of the two repeat units are 285g/mol and 254g/mol, the number of repeating units (1-1) and (3-1) must be each well below the 1,000 maximum of applicant’s claim 4.
The “Q” value of applicant’s claim 5 is merely a measure of melt flow rate. Given Hiiro’s 58,000 molecular weights (table 1) falls within applicant’s examples (ie ~15,000-63,000 table 1) the same “Q” flow rates would be expected.
Applicant’s claims 6 and 7 simply define the structures of impurities that need not be present. There is no reason to believe Hiiro contains significant amounts of these impurities.
Claim 8’s pyrolysis value is not reported by Hiiro. Given Hiiro’s polymer structure mirrors that of applicant, the same pyrolysis value is expected.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiiro 6407193 or Hiiro 6103837 or Goldberg 2999845 in view of Hucks 2005/0131197.
Hiiro/Hiiro/Goldberg apply as explained above.
The above rejections rely on the inherency of <30% low molecular weight impurities.
Hucks (paragraph 7) explains that polycarbonate forming reactions by transesterification leads to products with residual monomers. Hucks (table 1) measures these residual impurities to be 100ppm+ after steps are taken to lessen the amount of these impurities.
Applicant’s claimed 0.01-30% of these impurities is wide enough to encompass any plausible amount of these residual monomers remaining after the primary reference’s polymerizations. Also note that applicant table 4 admits commercial IupilonS3000 poycarbonate inherently has 0.15% of these low molecular weight impurities.
For these reasons, it is believed that the primary reference’s procesess result/render obvious the claimed amount of low molecular weight impurities.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims1 and 3-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of copending Application No. 18-027164 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims polycarbonate-siloxane having the same units (eg claim 2,4 of copending application). The molar ratio may be wide (eg claim 3,5 of the copending application). There is a low amount of low MW impurities (claim 10 of copending application). The instant claims are broader in the sense that the copending application’s “A” units are not required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 2/9/26