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
EXAMINER’S COMMENT
Insertion of continuing data of PCT and Japanese Foreign Priority document at beginning of the specification is suggested.
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.
Claims 3 and 4 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “c is a number of not smaller than 0” and “d is a number of not smaller than 0” and thus the recited c and d being 0 of claims 3 and 4, respectively, improperly broaden scope of claim 1.
Claim Rejections - 35 USC § 102 and 35 USC § 104
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.
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.
Claims 3 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herzig et al. (US 5,693,734).
Although the recited c and d being 0 of claims 3 and 4 would improperly broaden scope of claim 1 as discussed above, this rejection is added in case applicant amends claim 1 including the recited c and d being 0.
Herzig et al. teach organosilicon compounds containing furanyl groups in abstract and lines 20-48 of col. 3.
Thus, the instant invention lacks novelty.
Claims 1 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Alt et al. ((CA 2303999 A1, March 25, 1999) published as WO 99/14269), or further in view of Herzig et al. (US 5,693,734).
The examiner points out disclosure of WO.
Alt et al. teach an organopolysiloxane comprising units 1-4 in line 27 of page 3 to line 14 of page 4 which would meet the recited Chemical formula 1 of the instant claim 1 except the recited furanyl group. Alt et al. teach that R2 of the units 1-4 includes the furanyl group in line 18 of page 5.
Organosilicon compounds containing furanyl groups are known in the art.
Herzig et al. teach organosilicon compounds containing furanyl groups in abstract and lines 20-48 of col. 3.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain an organopolysiloxane comprising units 1-4 with R2 being the furanyl group in Alt et al. since Alt et al. teach the furanyl group as one of R2 and since organosilicon compounds containing furanyl groups are known as taught by Herzig et al. absent showing otherwise.
See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding claims 3 and 4, Alt et al. teach units 3 and 4 including 0% by weight at pages 3 and 4 and thus the instant claims 3 and 4 would have been obvious.
In the case where the claimed ranges “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, 919F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
The existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would have not been obvious. In re Peterson, 315 F.3d at 1330 (Fed. Cir. 2003). MPEP 2144.05.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Alt et al. ((CA 2303999 A1, March 25, 1999) published as WO 99/14269), or further in view of Herzig et al. (US 5,693,734) as applied to claims 1 and 3-4 above, and further in view of WO 2015/098072 A1 (July 2, 2015) and/or Machine translated JP 4394238 B2 (Jan. 6, 2010).
Regarding the recited number average molecular weight of claim 2, Alt et al. teach an organopolysiloxane which would comprising many repeating units 1-4 yielding a high molecular weight inherently.
Organopolysiloxanes having various number average molecular weights are known in the art.
WO teaches an organopolysiloxane having the number average molecular weight of 250-100,000 in [0036].
Machine translated JP teaches an organopolysiloxane having the number average molecular weight of 1,000-10,000 in [0019].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain organopolysiloxanes having the instant number average molecular weights in Alt et al. with the disclosure of WO and/or JP since the rganopolysiloxanes having various number average molecular weights are known in the art as taught by WO and JP absent showing otherwise.
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Alt et al. ((CA 2303999 A1, March 25, 1999) published as WO 99/14269), or further in view of Herzig et al. (US 5,693,734) as applied to claims 1 and 3-4 above, and further in view of Falk et al. ((CA 02629520 A1, May 31, 2007) published as WO 99/14269)).
Regarding claims 5-8 reciting utilization of an iridium complex and a hydro teach and equate gen acceptor over examples of Herzig et al. teaching a platinum complex, Falk et al. teach and equate catalyst complexes of iridium and platinum in line 7 of page 26. Falk et al. further teach utilization of a quenching agent such as 1,5-hexadine in claims 31-32 which would meet the recited hydrogen acceptor of claims 5 and 8.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known iridium complex and quenching agent such as 1,5-hexadine taught by Falk et sl. In obtaining organopolysiloxane of Alt et al. with the disclosure of Herzig et al. and Falk et a. since Herzig et al. teach utilization of the platinum complex and since Falk et al. teach and equate catalyst complexes of iridium and platinum and utilization of quenching agent such as 1,5-hexadine absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
CLAIM OBJECTION
Claims 6 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims since the recited ligands would not be obvious.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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