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 .
Election/Restrictions
Applicant's election with traverse of clams 1-4 in the reply filed on 08/07/2025 is acknowledged. The traversal is on the ground(s) that the groups have unity of invention because EP03739741 does not disclose a shell consisting of a functionalized polyorganosiloxane as claimed and that the size of the particles is not within the claimed range of 50-150 nm. This is not found persuasive because EP03739741 discloses surface modified polymethylsilsquioxane spherical particles having functional groups in the form of alkenyl, phenyl, epoxy, acryloxy and amino bonded to the surface thereof by reacting the polymethylsilsquioxane spherical particles with an organotrialkoxysilane (thereby forming a shell) in amounts of approximately 10-20 parts by weight (Tables 1 and 2) which result in it being less than 25% of the particle diameter. CN108892750 with a particle diameter of 110 nm.
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement filed 11/15/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. A copy of foreign reference #8 has not been provided.
It has been placed in the application file, but the information referred to therein has not been considered.
Claim Interpretation
With respect to the limitation “functionalized”, the Examiner notes the special definition of the term in the specification at page 4, lines 24-32. The term is therefore being interpreted under the definition provided by Applicant (see MPEP 2111 IV).
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (EP 0373941) in view of Li et al. (CN108892750), both cited in the IDS filed on 11/15/2023.
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).
Regarding claim 1, Shimizu et al. teaches surface modified polymethylsilsquioxane spherical particles having functional groups in the form of alkenyl, phenyl, epoxy, acryloxy and amino bonded to the surface thereof. (Abstract). The surface modification of the particles is the result of reacting an organotrialkoxysilane in the presence of the polymethylsilsquioxane spherical particles (see page 3, lines 40-55 and Examples 1-8) which would therefore result in a core/shell structure as presently claimed wherein the polymethylsilsquioxane spherical particles are the core and the organotrialkoxysilane forms the shell which is a different material from the core, as claimed.
With respect to the limitation “functionalized”, Shimizu et al. discloses that the content of the functional groups on the surface of the organotrialkoxysilane spherical particles should fall in the range of 0.05 to 0.15 mol per mol of polymethylsilsquioxane (i.e. 5-15% mol) which can be optimized based on cost or imparted functionality to the surface of the particles (page 3, lines 29-36). The amount by weight of the shell/coating relative to the polymethylsilsquioxane spherical particles is in the range of 10-20 parts by weight (Table 1-2, where “parts” refers to parts by weight, page 5, lines 21-24), which therefore overlaps with the presently claimed range for the weight percent of the shell relative to the core. Since the relative amount of coating material is within the range presently claimed, the coating would account for less than 25 percent of the particle diameter. Alternatively, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II). One of ordinary skill in the art would have found it obvious to optimize the thickness of the coating by adjusting the relative amount of the organotrialkoxysilane based on the considerations in page 3, lines 29-36 relative to cost and amount of functionalities.
Shimizu et al. does not disclose a particle diameter in the range of 50-150 nanometers as claimed but does teach a diameter in the range of 0.2 to 5.0 micrometers (i.e. 200 to 1500 nm). (page 3, lines 8-10).
Li et al. teaches core/shell polymethylsilsquioxane/hydroxy acrylate composite particles including hydroxyl functional monomer in the outer shell layer. (page 2, first paragraph, Abstract). Li et al. teaches that the particles are known to be used in coating compositions and paints (page 21, last paragraph) and that the particle diameter lies in the range of 100-150 nm (page 22, Summary of the invention, first paragraph).
It would have been obvious to one of ordinary skill in the art to select the diameter of the particles of Shimizu et al. to fall in the range of 100 to 150 nm as disclosed in Li et al., overlapping with the presently claimed range.
One of ordinary skill in the art would have found it obvious to select a diameter in the range of 100 to 150 nm in view of the teaching in Li et al. that diameters in that range are known in the art to be used in coating and paint composition. One of ordinary skill in the art would therefore have a reasonable expectation of success that particles of Shimizu et al. having the same diameters would be suitable for use in the application disclosed in in Li et al. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claim 2, the particles of Shimizu et al. are dispersed in an aqueous phase. (Abstract).
Regarding claim 3, Shimizu et al. discloses that the spherical particles are made of polymethylsilsquioxane (Abstract) and the surface modying material includes ethyltrimethoxysilane, propyltrimethoxysilane, vinylpropyltrimethoxysilane, 3,3,3-trifluopropyltriethoxysilane, 3-chloropropyltriisopropoxysilane, gamma-aminopropyltriethoxysilane, phenyltributoxysilane, acryloxypropyletrimethoxysilane and gamma-glycidoxypropyltrimethoxysilane (page 4, lines 4-12) as well as the general formula R1Si(OR2)3 which are materials having a formula which would satisfy the formula of claim 3, since the formula disclosed in Shimizu et al. overlap with the materials in Table 1 of the present specification (e.g. methyltrimethoxysilane is encompassed by the formula above where R1 = methyl and R2 is methoxy).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (EP 0373941) in view of Li et al. (CN108892750), both cited in the IDS filed on 11/15/2023, further in view of Inokuchi et al. (U.S. Pat. No. 5,538,793).
Shimizu in view of Li et al. is relied upon as described in the rejection of claim 1, above.
Shimizu in view of Li et al. does not disclose the use of an anionic surfactant.
Inokuchi et al. teaches silicone particles which are coated with a polyorganosilsequioxane resin material by reacting silicone particles in the presence of an organotrialkoxysilane in an aqueous medium (Abstract), similar to the reaction mechanism in Shimizu et al. Inokuchi et al. further teaches including anionic surface-active agents to improve the stability of the aqueous dispersion including the silicone particles to enhance uniformity of the coating. (col. 7, lines 54-67).
It would have been obvious to one of ordinary skill in the art to include an anionic surface active agent in the aqueous medium disclosed in Shimizu et al.
One of ordinary skill in the art would have found it obvious to include an anionic surface active agent in order to improve the stability of the polymethylsilsquioxane particles disclosed in Shimizu et al. as well as enhance the uniformity of the coating with the organotrialkoxysilane coating material.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Inokuchi et al. (U.S. Pat. No. 5,538,793).
Regarding claim 1, Inokuchi et al. teaches a silicone rubber particle having improved flowability and dispersibility wherein the particles include a polyorganosilsequioxane resin coating on the surface thereof. (Abstract). The silicone rubber particles have a diameter in the range of 0.1 to 100 micrometesr (i.e. 100 nm to 100 micrometers) and the coating accounts for 1-500 parts by weight per 100 parts by weight of the uncoated silicone rubber particles (i.e 1-500% by weight), overlapping with the presently claimed range. (col. 2, lines 13-21). Since the relative amount of coating material is within the range presently claimed, the coating would account for less than 25 percent of the particle diameter. Alternatively, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II). One of ordinary skill in the art would have found it obvious to optimize the thickness of the coating by adjusting the relative amount of the organotrialkoxysilane based on the considerations on considerations of cost and overall size considerations.
With respect to the core, the silicone rubber meets the limitation of a polymethylsilsquioxane as shown by the formula in col. 2, lines 51-61) and the shell is made by hydrolysis of trialkoxysilane based compounds which includes functional groups such as vinyl, halogen, epoxy, amino, mercapto, (meth)acryloyl. (col. 2, lines 39-50, col. 6, line 56 – col. 7, line 8) wherein at least 50% by mole of the R groups are methyl groups (i.e. not substituted) which means that they may be functionalized at a rate of 50 mol% or less, which meets the definition of “functionalized” as claimed. Examples of trialkoxysilanes is disclosed in col. 8, lines 33-62) The core and shell are therefore different in composition and the shell “consists” of the trialkoxysilane based compounds only.
Regarding claim 2 and 4, Inokuchi et al. discloses an aqueous dispersion of the coated silicone rubber particles mixed with an anionic surface active agent. (col. 7, lines 54-67).
Regarding claim 3, Inokuchi et al. teaches that the coating materials include trialkoxy silanes such as methyl trimethoxysilane which is the same material used in the present invention for forming the shell composition s in Table 1 of the present specification. It would therefore possess the same average chemical formula as presently claimed (i.e. where a and b = 0). The OZ group being inherent to the trialkoxysilane reactant and resin in view of the similar production modes and reactants used.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Inokuchi et al. (U.S. Pat. No. 5,538,793) in view of Horstman et al. (U.S. App. Pub. No. 2015/0045486).
Inokuchi et al. is relied upon as described in the rejection of claim 1, above.
In addition to the rejection of claim 3 over Inokuchi et al. above, the claim is further rejected in view of the teachings of Horstman et al. as described below with respect to the presence of functional “OZ” groups in the formula of claim 3.
Horstman et al. teaches curable linear-organosiloxane block copolymer. (Abstract). Horstman et al. teaches that it is known in the art that organosiloxane resins made with high amounts of RSiO3/2 units (i.e. trialkoxy silane derived units) inherently have a certain concentration of Si-OZ where Z may be hydrogen, alkyl or a hydrolysable group. (par. [0213]). The content of these Z groups in the range of 5-50 mol% which is variable based on the mode of preparation and treatment of the resin. (par. [0213]).
It would have been obvious to one of ordinary skill in the art to optimize the content of the OZ groups on the surface of the resin material based on the teachings of Horstman et al.
One of ordinary skill in the art would have found it obvious to optimize the content of the OZ groups in view of the desired content of functional groups on the surface of the resin material as well as by adjusting the mode of preparation and any additional treatments of the coated silicone rubber particles as disclosed in Horstman et al. which teaches that a suitable content lies in the range of 5-50 mol% which overlaps with the presently claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 09/25/2025