DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claims 1-18 are pending.
Election/Restrictions
Applicant’s election, without traverse, of Group I, and the species of claim 3, corresponding to claims 1-3, 8-11, in the reply filed on 05/26/26 is acknowledged.
Claim(s) 4-7 (non-elected species) and 12-18 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/26/26.
Examiner’s Note
It is noted that “resinous” has a controlling definition in the present specification.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 11 is/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 pre-AIA the applicant regards as the invention.
Claim 11 recites an organopolysiloxane comprising “solely” epoxy group containing polysiloxane, alkenyl cyclic polysiloxane “and/or” and M and Q based polysiloxane. It is unclear what “solely” means in this context since on the one hand it appears to limit the types of groups in the polysiloxane to only those being claimed, but then also refers to non-group related aspects, like “cyclic.” Also, it is unclear if the “solely” only applies to the epoxy option (not the other two) and if so, it would still be unclear how that is compatible with the “and/or” later recited.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-3, 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamakawa (EP 2452994) in view of Khanarian (U.S. 2008/0090986) in view of BYK-333 NPL document (2012) as evidenced by Patternable solution process for fabrication of flexible polymer solar cells using PDMS (2011).
Regarding claims 1-3, 8-11, Yamakawa discloses a curable silicone composition with a resinous (branched/crosslinked) alkenyl and aryl containing polysiloxane corresponding to the A ingredient ([0012]-[0013]), a resinous hydrogen polysiloxane corresponding to the B ingredient at an amount overlapping claim 8 ([0035]-[0040]), a platinum based catalyst corresponding to the D ingredient with an amount overlapping claim 9 ([0044]), as well as a straight chain hydro polysiloxane as in claim 2 ([0020], [0032]), with a H/Vi ratio overlapping claim 10 ([0050]), and multiple ingredients as in claim 11 ([0014]-[0018], the MQ resin may be mixed with the resinous alkenyl resin discussed above, also see [0022] for a different MQ resin that also satisfies claim 11).
Yamakawa does not disclose the claimed C ingredient however, Khanarian is also directed to platinum catalyzed silicone encapsulant compositions (see abstract, [0026]) and discloses that surfactants were a known additive that may be added to such compositions ([0124], with surfactants inherently improving surface tension) with the BYK NPL document further disclosing that BYK-333 was a known surfactant additive for reducing surface tension of coatings (as in Khanarian) and further improves wetting, avoids cratering as well as provides anti-blocking with an amount overlapping claim 7 (see pages 1-2, and the claimed amount would also be obvious to adjust to control the degree of the above benefits imparted to the coating), such that use of BYK-333 would have been obvious in Yamakawa based on Khanarian suggesting that surfactants are generally beneficial to encapsulant compositions for controlling surface tension (an inherent property of a surfactant), thus leading one of ordinary skill in the art to look for good surfactants, and with the BYK-333 surfactant in particular then being further obvious based the BYK document providing specific additional benefits of that surfactant in terms of wetting, cratering, and anti-blocking (as well as surface tension improvement).
As evidenced by the Patternable…NPL document, BYK-333 corresponds to claim 3 (FIG 1a). Furthermore, although the evidentiary reference discloses polyoxyethylene and polyoxypropylene repeating units in the side chain (within the scope of claim 3), if arguendo, only polyoxypropylene repeating units were disclosed this would still render obvious the claimed polyoxyethylene repeating units based on the prima facie obviousness of polyoxyethylene and polyoxypropylene as homologs. See MPEP 2144.09 II. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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