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. This is the second request to do so.
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 anticipated by Goldberg 2999845 as evidenced by Hucks 2005/0131197.
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 isopropylidene; J2 and K2 and are zero in formula (3-1).
The 0.001%-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 or extremely low amounts of these impurities. Hucks 2005/0131197 can be cited (paragraph 7) to explain that polycarbonate forming reactions lead 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.
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.
The “Q” value of applicant’s claim 5 is merely a measure of melt flow rate. Given Goldberg’s 1,700 molecular weight of his example 1 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.
Claim 4 rejected under 35 U.S.C. 103 as being unpatentable over Goldberg 2999845 as evidenced by Hucks 2005/0131197.
Goldberg applies as explained above.
The cited example’s Mw is estimated to be 1,700g/mol based on its intrinsic viscosity of 0.06 in dioxane. This Mw is believed to contain less than the 10 polycarbonate repeat units required by the claim.
However, higher intrinsic viscosities are disclosed (eg 0.3 of example 2).
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 0.3 intrinsic viscosity polycarbonate is ~16,800g/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 within the claimed range.
Claims 1-8 rejected under 35 U.S.C. 103 as being unpatentable over Goldberg 2999845 in view of Hucks 2005/0131197
Goldberg applies as explained above.
The above rejections rely on the inherency of the 0.001-30% low molecular weight impurities.
Hucks (paragraph 7) explains that polycarbonate forming reactions by 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 0.001-30% of these impurities is wide enough to encompass any plausible amount of these residual monomers remaining after Goldberg’s polymerization. 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 Goldberg’s process results/renders obvious the claimed amount of low molecular weight impurities.
Claims 1-8 rejected under 35 U.S.C. 103 as being unpatentable over Hiiro 6407193 in view of Hucks 2005/0131197.
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.
Applicant’s claimed 0.001-30% of low MW impurities is wide enough to encompass any plausible amount of residual monomers remaining after Hiiro’s polymerization. Hucks 2005/0131197 can be cited (paragraph 7) to explain that polycarbonate forming reactions lead 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.
There is no reason to believe Hiiro contains excessively large amounts of these impurities or extremely low amounts of low MW impurities (ie below 0.001%) – especially in view of the fact Hiiri’s polymerization process mirrors that of applicant.
Also note that applicant’s table 4 admits commercial IupilonS3000 polycarbonate inherently has 0.15% of these low molecular weight impurities.
For these reasons, it is believed that Hiiro’s process results/renders obvious the claimed amount of low molecular weight impurities.
In regards to applicant’s dependent claims:
9,9-bis(4-hydroxyphenyl)fluorene can be used (col 6 line 28) in lieu of bisphenol A – meeting applicant’s claim 2.
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 within claim 4’s ranges.
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 1-8 rejected under 35 U.S.C. 103 as being unpatentable over Hiiro 6407193 in view of view of Hucks 2005/0131197 in further view of Ideta 2020/0407499.
Hiiro/Hucks apply 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 in view of Hucks 2005/0131197 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 0.001-30% low MW impurities limitation appears to encompass the standard amount of such impurities in common polycarbonate forming reactions. Applicant’s claimed 0.001-30% is wide enough to encompass any plausible amount of residual monomers remaining after Hiiro’s polymerization. Hucks 2005/0131197 can be cited (paragraph 7) to explain that polycarbonate forming reactions lead 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.
There is no reason to believe Hiiro contains excessively large amounts of these impurities or extremely low amounts of low MW impurities (ie below 0.001%) – especially in view of the fact Hiiri’s polymerization process mirrors that of applicant.
Also note that applicant’s table 4 admits commercial IupilonS3000 polycarbonate inherently has 0.15% of these low molecular weight impurities.
For these reasons, it is believed that Hiiro’s process results/renders obvious the claimed amount of low molecular weight 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiiro 6407193 or Hiiro 6103837 or Goldberg 2999845 in view of Ishikawa 2020/0362104.
Hiiro/Hiiro/Goldberg apply as explained above.
Hiiro, Hiiro and Goldberg do not report the presence of any low MW compound in their polycarbonate-siloxanes.
However, Hiiro’193 (col 10 line 57), Hiiro ‘837 (col 8 line 59) and Goldberg (col 5 line 54) suggest stabilizers, antioxidants etc.
Antioxidant stabilizers such as Irgafos 168 are well known for polycarbonate-siloxanes. Ishikawa (paragraph 204; tables) demonstrate the use of 0.1% Irgafos 168 in polycarbonate-siloxanes. Irgafos 168 inherently has a MW of 647g/mol.
It would have been obvious to add 0.1% Irgafos 168 to any of the primary reference’s polycarbonate-siloxanes as the called for stabilizer for its expected benefit.
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.
Applicant's arguments filed 6/22/26 have been fully considered but they are not persuasive.
Applicant fails to provide any meaningful response to the rejections based on Goldberg. The position of the office is that such polycarbonate forming reactions are expected to result in small amounts of unreacted monomers. These unreacted monomers qualify as applicant’s low MW compounds having a MW below 1,000. Applicant does not deny that small amounts of unreacted monomer would be present for Goldberg.
Applicant argues that Hiiro ‘193 teaches away from having small amounts of low Mw compounds because Hiiro desires an average Mw of 10,000-300,000 for the intended polycarbonate-siloxane.
This is not convincing. The 10,000-300,000 value is an average Mw. It does not prohibit small amounts of unreacted monomer be present. Small amounts of unreacted monomer would not significantly affect the 10,000-300,000 average from a mathematical standpoint.
This interpretation of Hiiro is in agreement with Hucks, who produces polycarbonates of up 28,000g/mol average Mw (paragraph 95), despite containing hundreds of ppm of unreacted bisphenol, diphenyl carbonate etc (table 1).
Hiiro ‘193’s polymerization appears to coincide closely with applicant’s process. Applicant provides no explanation how/why Hiiro would have zero low Mw unreacted monomer, yet applicant’s process somehow does result in unreacted (or short oligomerized) monomer.
Applicant’s arguments directed to Hiiro ‘837 are unconvincing for the same reasons.
Applicant argues that the provisional obviousness double patenting is inappropriate because no claim of the copending application requires both siloxane unit and the carbonate unit.
This is not true. The copending application’s current claim 5 requires “C” units which correspond to applicant’s carbonate units. This claim currently depends on claim 2 which itself requires the siloxane units. Therefore, copending application’s claim 5 does require both of applicant’s units.
Original claim 2 required “Y” be a “polycarbonate” which could not be rejected over the art of record. In the latest response, claim 2 was been amended to require “Y” be a merely a fluorene ring instead of the previously required “polycarbonate” which can be rejected over the art of record. This change required the new rejection (or more accurately adding claim 2 to the previous rejection).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 7/15/26
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