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 .
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 1-20 are pending. Applicant’s previous election of Group I, and the following species (from Fig. 5, see interview summary), claims 1-5 and 17-20 still applies and claims 6 (non-elected species of FIG. 18) and 7-16 remain withdrawn.
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Response to Amendment
Applicant’s amendment of 04/10/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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) 1-5 and 17-20 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 1 recites a formula without defining the diagonal line or any of the R groups such that the scope of the formula is vague. Dependent claims 17-19 define some of these aspects, but none of the dependent claims resolve all the undefined aspects of the formula.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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) 1-5 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirokami (U.S. 2015/0274759) in view of Dual-Cross-Linked Supramolecular Polysiloxanes for Mechanically Tunable, Damage-Healable and Oil-Repellent Polymeric Coatings (2019, hereinafter NPL 1) in view of Adhesion Behavior of Catechol-Incorporated Silicone Elastomer on Metal Surface (2020, hereinafter NPL 2).
Regarding claims 1-5 and 17-20, Hirokami discloses an adhesive composition formed from a catechol bearing silane monomer, which may be a catechol methyl dialkoxysilane compound (when R6 and R7 are methyl, and n is 2) that may be cured along with another polymerizable monomer ([0018]-[0026], [0042]). Such a catechol methyl dialkoxysilane compound would form linear (D) units upon condensation of the two alkoxy groups, as in claim 2. The catechol group may be bonded to the methyl dialkoxysilane portion via a urea substituted hydrocarbon group, as in claims 4 and 5 and 18-20, ([0009]) with the formulae in [0026] showing that the hydrocarbon group may have the “separating” group (i.e., “selected from ether, thioether, carbonyl, thiocarbonyl, amino, urethane, and urea”) between CH2 hydrocarbon segments that have “s” and “m” number of repeating units, that overlap the hydrocarbon groups on either side of the elected urea bond ((CH2)3 and (CH2)2, respectively). The polymerization method exemplified in Hirokami would result in a random (as in claim 17) arrangement of the repeating units (see examples 1-3, [0055]) such that the random polymerization process would have been obvious because it is exemplified as suitable by Hirokami.
Hirokami does not disclose that the urea group is formed of a primary amine (instead exemplifying a secondary amine, i.e., N(CH3)(C=O)N(H) vs N(H)(C=O)N(H), [0033], but also generally calling for urea groups, [0009]). However, NPL 1 is also directed to adhesives based on catechol groups bonded to linear siloxane polymers via urea bonds, and discloses that such catechol groups may also be bonded via urea bonds formed from primary amine groups (see abstract, FIG. 1), thus forming N(H)(C=O)N(H) urea bonds as in the elected species. Thus, it would have been obvious to have formed the generic urea group of Hirokami from a primary amine and isocyanate, as taught by NPL1 because NPL1 shows that such a type of urea bond achieves the function of attaching the catechol group to the polysiloxane polymer for an adhesive composition, as sought by Hirokami. The resulting catechol methyl dialkoxysilane compound of modified Hirokami would thus have a catechol group bound to a (CH2)2 group (when s is 2), bound to a N(H)(C=O)N(H) group, bound to a (CH2)3 group (when m is 3), bound to a methyl dialkoxysilane, which corresponds to the elected catechol monomer (and forms the adhesive repeating unit in present FIG. 5 when the alkoxy groups are condensed to form Si-O-Si bonds).
Hirokami discloses that the above catechol monomer may be combined with other polymerizable monomers but does not disclose the claimed dimethylsiloxane comonomer. However, NPL2 is also directed to catechol/siloxane based adhesives and discloses that the catechol side groups provide the adhesion properties while linear PDMS repeating units (i.e., D units as in claim 2) can be included to provide a flexible structure, as well as electrical insulation, transparency, chemical inertness, and biocompatibility (see abstract, 2444, and Scheme 1) such that it would have been obvious to have included PDMS forming monomers along with the catechol bearing silane monomers of modified Hirokami (i.e., catechol urea methyl dialkoxysilanes) so that the PDMS forming monomers can impart flexiblity, as well as electrical insulation, transparency, chemical inertness, and biocompatibility. NPL2 also shows a random copolymerization based on the irregular distribution of catechol groups on the PDMS backbone in FIG. 1. Based on the above recognized properties of the respective monomers (i.e., PDMS for flexibility vs catechol urea methyl dialkoxysilanes for adhesion) it would have been obvious to have adjusted the relative amount of such monomer/repeating units based on the desired optimized degree of flexibility vs adhesion, as in claim 3.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Hirokami does not disclose copolymerizing the catechol containing monomer with the polymerizable monomer. This is not true. Hirokami discloses that the adhesive composition may include a polymerizable monomer that polymerizes to form siloxane bonds ([0042]) and shows in the examples that the siloxane polymerizable catechol monomer may be combined with another siloxane polymerizable monomer, thereby resulting in both of the monomers polymerizing to form siloxane bonds with each other in a random manner as in the present application (the alkoxy groups indicated in these monomers hydrolyze and condense to form siloxane bonds upon exposure to ambient moisture at room temperature). Hirokami may not explicitly use the term “copolymer” but such a copolymer will inherently result in the combination of monomers and polymerization conditions disclosed by Hirokami.
Applicant argues that the other references also fail to teach the claimed random copolymer but this is moot in light of the primary reference already teaching this aspect (also, NPL2 does in fact disclose a random linear copolymer with catechol groups and PDMS repeating units, though this is not necessary in view of the above teachings from the primary reference).
Conclusion
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 extension fee 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 date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
Prosecution Insights