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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of Group IV, claims 14-16 in the reply filed on 05/22/2026 is acknowledged. Accordingly, claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 14-16 are currently under examination on the merits.
Claim Objections
Claims 14-16 are objected to because of the following informalities: “(i.e. SiH group)”, “i.e. SiH group” and “(obtained by mixing in an oxygen free-atmosphere)” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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.
Claim 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bilgrien et al (US 5,364,922, of record, ‘922 hereafter).
Regarding claim 14, ‘922 discloses a method of preparing a platinum catalyst mixture comprising mixing a platinum/alkenyl-containing organosiloxane complex with an organosilicon compound having at least one silicon-bonded hydrogen atom (organohydrogensiloxane); wherein the mixing step is performed in anaerobic condition, and the platinum/alkenyl-containing organosiloxane complex and the organohydrogen-silicone are mixed with a molar excess of the SiH group in the organohydrogensiloxane relative to the alkenyl group in the complex (C5/L13-L33, C7/L41-C8/L39).
Claim 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikeno et al (JPH09-143373, of record, ‘373 hereafter).
Regarding claim 16, ‘373 discloses a method of preparing a platinum catalyst mixture comprising the step of mixing a platinum/alkenyl-containing organosiloxane complex with an organosilicon compound having at least one silicon-bonded hydrogen atom, which includes an organohydrogensiloxane oligomer having at least two hydrogen atoms bonded to silicon atoms which adjoin each other via an oxygen atom to form a siloxane bond ([0006]-[0020], HMe2SiOSiMe2H), per molecule to form a reaction mixture; wherein the platinum/alkenyl-containing organosiloxane complex and the organohydrogen-silicone are mixed with a molar excess of the SiH group in the organohydrogensiloxane relative to the alkenyl group in the complex, while they are kept in contact with water and/or oxygen ([0021]-[0023], Example 1. [0041]-[0042], no special inert gas protection is mentioned, thus the mixing is performed in an air atmosphere which contains water and oxygen).
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 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:
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 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ikeno et al (JPH09-143373, of record, ‘373 hereafter) in view of Bilgrien et al (US 5,364,922, of record, ‘922 hereafter).
Regarding claims 14-15, ‘373 discloses a method of preparing a platinum catalyst mixture comprising the step of mixing a platinum/alkenyl-containing organosiloxane complex with an organosilicon compound having at least one silicon-bonded hydrogen atom, which includes an organohydrogensiloxane oligomer having at least two hydrogen atoms bonded to silicon atoms which adjoin each other via an oxygen atom to form a siloxane bond ([0006]-[0020], HMe2SiOSiMe2H), per molecule to form a reaction mixture; wherein the platinum/alkenyl-containing organosiloxane complex and the organosilicon compound having at least one silicon-bonded hydrogen atom per molecule are mixed in such a mixing ratio as to provide a molar excess of the SiH group in the organosilicon compound relative to the alkenyl group in the complex ([0021]-[0023], Example 1. [0041]-[0042]. ‘373 does not specifically set forth that the mixing is performed in an oxygen free atmosphere, then further mixing in contact with water and/or oxygen; however, in the same field of endeavor, ‘922 discloses a method of preparing a platinum catalyst mixture comprising platinum/alkenyl-containing organosiloxane complex with an organosilicon compound having at least one silicon-bonded hydrogen atom, wherein the mixing step is performed in anaerobic condition thus render the mixture having desired storage stability (C5/L13-L33, C7/L41-C8/L39). In light of these teachings, one of ordinary skill in the art would have been motivated to prepare the mixture in anaerobic condition, in order to render the mixture having desired storage stability. ‘373 also discloses that the mixture can be cured by further mixing in contact with water and/or oxygen (C13/L59-C14/L5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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