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 6 is 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 6 recites b is 10 or more but depends from claim 1 which states that b is 2-200. Since claim 6 recites a range that is open ended, claim 6 is indefinite because it is unclear whether it is meant to be limited by the range of claim 1. It is suggested that the range of claim 6 be amended to recite a range of 10-200.
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.
Claim(s) 1-5, 7-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (US 2018/0230305).
Okamoto teaches a polycarbonate-polyorganosiloxane copolymer (abstract) which can be used to form a composition that includes an additive including a release agent (¶ 164) including esters including pentaerythritol monostearate (¶ 175) in an amount of 0.01-3 parts by mass (¶ 176).
Okamoto teaches the polycarbonate-polyorganosiloxane copolymer can be derived from a polysiloxane such as
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74
336
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(¶77) where R3-R6 can be a C1-C6 alkyl group (¶ 63) and where Sasaki teaches polydimethylsiloxane (¶ 79, 211, 222) which has R3-R6 as methyl groups. These meet the claimed R1-R4 of formula (1). Okamoto teaches n is the average chain length and which Okamoto teaches is 20-500, preferably 30-150 (¶19, 55, 63) which meets the claimed ‘a’ of formula (1) in claim 1 and claim 5. The ethylene group -(CH2)2- adjacent to the silicon atom meets the claimed R6 of Formula (1) of claim 1. The structure in Okamoto meets claimed formula (1) when u is 1, z is 0, R8 is a methyl group (CH2), and b is 2. The structure of Okamoto also meets formula (1-1) of claim 7 when z1 is 0, R7 is a methylene group, b1 is 2, and R5 is an ethylene group.
Okamoto teaches the polycarbonate-polyorganosiloxane copolymer can be derived from a polysiloxane such as
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80
638
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(¶ 77) where R3-R6 can be a C1-C6 alkyl group (¶ 63) and where Sasaki teaches polydimethylsiloxane (¶ 79, 211, 222) which has R3-R6 as methyl groups. These meet the claimed R1-R4 of formula (1). Okamoto teaches n is the average chain length and which Okamoto teaches is 20-500, preferably 30-150 (¶19, 55, 63) which meets the claimed ‘a’ of formula (1) in claim 1 and claim 5. The methylethylene group -(CHMeCH2)- adjacent to the silicon atom meets the claimed R6 of Formula (1) of claim 1 and claim 10. The structure in Okamoto meets claimed formula (1) when u is 1, z is 0, R8 is a -CMe2Ph- group and a Ph-OH group and b is 2. The structure of Okamoto also meets formula (1-1) of claim 7. Okamoto teaches examples of linking groups to the siloxane groups include (CH2)c where c is 1-6 (¶68) which meets the ‘trimethylene’ of claim 9.
Okamoto teaches the polycarbonate-polyorganosiloxane has a viscosity molecular weight of 10,000-25,000 (¶102) and that the amount of polyorganosilane in the copolymer is 2-15 mass% (¶101). This gives an amount of polycarbonate of 85-98 mass% and corresponds to a molecular weight of 8,500-24,500. When the monomeric unit is derived from bisphenol A (¶ 96, 100), the corresponding monomeric unit of the polycarbonate has a molecular weight of about 254, giving about 33-96 repeat units. This range meets ‘y’ of formula (1) in claim 1.
Okamoto teaches the polycarbonate can be derived from bisphenol A (¶ 96, 100) which meets structure (111) of claim 2 when X is a C3 alkylene group, claim 3, and formula (a-v) of claim 4.
Okamoto does not provide an explicit example using the above polyorganosiloxane in a copolymer. However, it would have been obvious to one of ordinary skill in the art to use the above polyorganosiloxane because Sasaki teaches it is a suitable polyorganosiloxane (¶62) and because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Okamoto teaches examples having a bending modulus of 2620, 2600, 2670 MPa (Table 2) which meets the claimed tensile modulus of elasticity of claim 13. Okamoto teaches examples having a bending strength of 92, 90, 93 MPa (Table 2) which meets the claimed tensile yield strength of claim 14.
Okamoto does not explicitly recite the polysiloxane/polycarbonate is formed in a melt polymerization method. However, claims 19-20 is recited in the product-by-process format by use of the language, “obtained by a melt polymerization method…” and “obtained by using” Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Okamoto teaches forming molded bodies (¶ 32, 130) which meets claim 20.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 6 recite the value of b is 10 or more. The prior art fails to teach the structural features recited in claims 6 and therefore no prior art rejections are presented over this claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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