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 .
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.
Claim 9, 12-13,15-16 are also 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 9 recites the limitation "m" in formula (2). There is insufficient antecedent basis for this limitation in the claim because claim 9 does not define m in formula (2).
Claims 12 is indefinite under 35 U.S.C. 112(b) because it attempts to recite a use “for use in an optical material” without any active, positive steps delineating how this use is actually practiced. See MPEP 2173.05(q).
Claims 13 is indefinite under 35 U.S.C. 112(b) because it attempts to recite a use “for use in a low dielectric material” without any active, positive steps delineating how this use is actually practiced. See MPEP 2173.05(q).
Claims 15 is indefinite under 35 U.S.C. 112(b) because it attempts to recite a use “a method for using as an optical material” without any active, positive steps delineating how this use is actually practiced. See MPEP 2173.05(q).
Claims 16 is indefinite under 35 U.S.C. 112(b) because it attempts to recite a use “a method for using in a low dielectric material” without any active, positive steps delineating how this use is actually practiced. See MPEP 2173.05(q).
The term “low” in claims 13 and 16 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The dielectric constant of the material is rendered indefinite by use of the term “low.”
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.
Claims 1, 4-8, 10-12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui 20170073474A1 US in view of Suwa US 20190375896.
Regarding claims 1, 4, and 14, Matsui teaches a curable polysilsesquioxane composition (Abstract). Matsui teaches the composition comprises a polysilsesquioxane (Abstract). Matsui teaches the polylsilsequioxane also has units of RSiO3/2 where R is CHR1X0-D- (Paragraph [0053]). Matsui teaches X0 is a halogen (Paragraph [0035]).
Matsui teaches R1 is an alkyl group having 1-6 carbon atoms (Paragraph [0029]). This reads on the claimed 3-10 alkyl group. Matsui also teaches D is a divalent hydrocarbon group (Paragraph [0036]). The CH reads on the claimed “methyl group.” Matsui teaches that D is:
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(Paragraph [0045]). . It would have been obvious to select the D group as
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because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This reads on the limitations of the claimed “aryl group.”
Matsui also teaches the composition comprises an antioxidant including a phosphorous-based antioxidant (Paragraph [0117]). Matsui teaches the phosphorous based antioxidant can be a oxaphosphaphenanthrene oxide (Paragraph [0118]). However, Matsui is silent on the phosphorous based antioxidant being a phosphine, a phosphinate, a phosphate, or a phosphonate. Matsui teaches the composition is used in optical devices (Abstract).
Suwa teaches a curable composition which comprises a silsequioxane compound (Abstract). Suwa teaches the composition is used in optical materials (Paragraph [0003]). Suwa also teaches the composition comprises a phosphorous based antioxidant (Paragraph [0185]). Suwa teaches the phosphorous based antioxidant can be oxaphosphaphenanthrene oxides or a phosphite (Paragraph [0185]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Matsui and Suwa to use a phosphite as the phosphorous based antioxidant, because this represents a suitable phosphorous based antioxidant identified by Suwa as being suitable for use in applications similar to Matsui. Suwa also lists oxaphosphaphenanthrene oxides in parallel with phosphite as a phosphorous based antioxidant and Matsui teaches the phosphorous based antioxidant can be a oxaphosphaphenanthrene oxide. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
This reads on the claimed “phosphite.”
Regarding claim 5, Matsui teaches the polylsilsequioxane also has units of RSiO3/2 where R is CHR1X0-D- (Paragraph [0053]). Matsui teaches R1 is an alkyl group having 1-6 carbon atoms (Paragraph [0029]). The CH group reads on the claimed methyl. Matsui teaches the D group is
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(Paragraph [0045]). This reads on the claimed aryl group.
Regarding claim 6, Matsui teaches the polylsilsequioxane also has units of RSiO3/2 where R is CHR1X0-D- (Paragraph [0053]). Matsui teaches X0 is a halogen (Paragraph [0035]).
Matsui teaches R1 is an alkyl group having 1-6 carbon atoms (Paragraph [0029]). This reads on the claimed alkyl group having 3-10 carbon atoms. Matsui teaches the D group is
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(Paragraph [0045]). This reads on the claimed aryl group where the aryl group is a C6 carbon. This structure also reads on the claimed “vinyl structure containing group” where the vinyl containing group is a vinyl group.
Regarding claim 7, Matsui teaches the composition comprises a polylsilsequioxane with units RSiO3/2 where R is CHR1X0-D- and R2SiO3/2 (Paragraph [0054]). Matsui teaches X0 is a halogen (Paragraph [0035]).
Matsui teaches R2 is a 10 carbon alkyl group (Paragraph [0048]). It would have been obvious for R2 to be a 10 carbon alkyl group because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Matsui teaches R1 is a C6 alkyl group (Paragraph [0028]). It would have been obvious for R1 to be a C6 alkyl group because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Matsui teaches that the D group is
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(Paragraph [0045]). It would have been obvious for the D group to be
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because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Therefore Matsui teaches all carbon containing repeat units of the polysilsequioxane except for group D are C1-C10 alkyl groups. Group D contains 7 carbons. While R1 and R2 comprise 6 and 10 carbons respectively. This overlaps with the claimed range of 3% by mass or more of alkyl group containing carbons.
Regarding claim 8, Matsui teaches the composition comprises a polylsilsequioxane with only units RSiO3/2 where R is CHR1X0-D- (Paragraph [0053]). It would have been obvious to select RSiO3/2 as the only repeat units of the polylsilsequioxane because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Matsui teaches RSiO3/2 reads on the limitations of claim 6. The limitations of claim 6 read on the claimed formula (1’). This reads on the polylsilsequioxane comprising 100% of the units of the claimed formula (1’). This overlaps with the claimed range of 40% or more.
Regarding claim 10, Claim 10 references an optional component of claim 1. Therefore, Matsui reads on the limitations of claim 10.
Regarding claim 11, Matsui references including a phenol based antioxidant (Paragraph [0117]). In Matsui, phenol based antioxidants and phosphorous based antioxidants are recited in parallel as equally suited alternatives. (Paragraph [0117]). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use both the phenol based antioxidant and the phosphorous based antioxidant in the composition of Matsui.
However, Matsui is silent on the phenol based antioxidant being a hindered phenol based antioxidant. However, Suwa teaches a phenol based antioxidant can be 2,6-di-t-butyl-p-cresol (Paragraph [0186]). This is a hindered phenol.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Matsui and Suwa to use the 2,6,di-t-butyl-p-cresol as the hindered phenol antioxidant, because this represents a suitable hindered phenol antioxidant identified by Suwa as being suitable for use in applications similar to Matsui. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
Regarding claims 12 and 15, Matsui teaches the resulting composition is used in an optical material (Paragraph [0016]). This reads on the limitations of claim 12 and 15. (Paragraph [0016]).
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui 20170073474A1 US in view of Suwa US 20190375896 in further view of Naeve, N., (Low-Loss Materials Key for High-Frequency Applications, retrieved from: https://www.qnityelectronics.com/blogs/low-loss-materials-key-for-high-frequency-applications.html, 11/24/2020, retrieved on 8/20/2026).
Regarding claims 13 and 16, Matsui teaches the material can be used in a semiconductor or chip application (Paragraph [0147]). It is advantageous for materials used in semiconductors to have a low dielectric constant because these materials do not break down readily in intense electric fields (Naeve, Page 1). Therefore it would have been obvious for the material of Matsui to have a low dielectric constant. For the advantage of not breaking down in the intense electric field environment of a semiconductor. This reads on the claimed “method for making a low dielectric constant material.”
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Xu US 20190185709A1.
Regarding claims 1 and 9, Xu teaches a composition comprising a block copolymer comprising polydisiloxane and polysilsesquioxane blocks (Abstract). This reads on the claimed polysilsesquioxane. Xu teaches the polysilsequioxane blocks can be poly(methylphenylsilsesquioxane) (Paragraph [0019]). This reads on the limitation of claim 1 where R1 is a methyl group and R1 is a phenyl group. This reads on the claimed C1 alkyl group and aryl group.
The polydisiloxane block has the structure of
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(Abstract). Xu teaches R1 and R2 are each methyl groups (Paragraph [0022]). This reads on the claimed formula (2) where R2 and R3 are two C1-C10 alkyl groups.
Xu also teaches the composition comprises a catalyst triphenylphosphine (Paragraph [0029]). This reads on the claimed “phosphine compound.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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/LILY K SLOAN/Examiner, Art Unit 1762
/MARK KOPEC/Primary Examiner, Art Unit 1762
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