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 Interpretation
It is the position of the Office that claims 23 and 24 are restrictable on an a priori basis because they effectively are directed to an independent method and a product of said independent method respectively. That is, there is nothing mandating that the silicone polymer of claim 23 be prepared according to the same approach as is outlined in claim 13. Moreoever, the polymer of claim 23 is not patently distinguishable from any other polycondensate of a trialkoxysilane. Because the Examiner did not find there to be any particular burden in establishing the unpatentability of the claims 23 and 24 independently of claim 13, no restriction requirement is formulated herein. (There are quite literally hundreds, and probably thousands, of disclosures anticipatory of claims 23 and 24.)
Claim Rejections - 35 USC § 102
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.
Claims 23 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shigaki et al., U.S. Patent # 9,337,052.
See the abstract, the synthetic examples, and column 24, lines 26+ where resist underlayer films derived from the polycondensation products of the synthetic examples are described.
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.
Claims 13, 15-17, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al., JP 2007-254176.
Kondo is directed to a continuous method of preparing silicone/silsesquioxane resin particles of a specified particle size. The intended novelty of the method appears to be associated with the employment of an apparatus with a certain configuration of its constituent parts including two feed lines P1 and P2 through which are fed (i) a mixture of an alkoxysilane adhering to the formula RSi(OR’)3, solvent, and water in a first feed line and (ii) an aqueous base catalyst solution in a second feed line. The feed lines empty into a merging pipe and continue on to a static mixer where homogeneous blends of the alkoxysilane and catalyst are formed or, in the language of the reference, the fluid feeds are merged (paragraph bridging pages 3 and 4 of the translated document). Opposite the static mixer inlet is an outlet leading to another feed line carrying the reaction mixture. This part of the apparatus includes a “T” joint where there is introduced a so-called dividing/resolving agent, which is nothing more than an inert gas that serves to break up the continuous flow of reaction mixture into smaller aliquiots having a volume on the order of nanoliters to microliters. See page 5 under the heading, “splitting agent introduction process.” The portioned reaction mixture then flows into a tube microreactor of designated length and diameter so that the residence time in the reaction is on the order of hours. At the bottom of page 5 of the translation, it is stated that the tube diameter may range between tens of microns and several mm consistent with the requirements of claim 13. Whereas the Examiner appreciates that the claims mandate reaction tube diameters only on the millimeter scale, the courts have held that, 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).
Claim 17 is rejected because it is further limiting of an aspect of the invention that did not represent the Examiner’s foundation for rejection. That is to say, claim 16 contemplates the use of either an acid or a base as a catalyst and the Examiner’s rejection is predicated on Kondo having taught ammonia/water solutions as a catalyst. Claim 17 does not stipulate that the catalyst be one of the name acid catalysts but, rather, simply states that, in the event that an acid catalyst is provided, it should be one of those outlined in that claim.
Concerning claim 22, there is no guidance given on relative quantities of organic solvent and alkoxysilane reactant in weight contribution terms. At the same time, the solvent-to-silane volume ratio in the prior art examples is 100:20 where the density of ethanol is 0.789 g/ml and that of the silane is 0.955 g/ml. Thus, if we were to presume that the solvent is comprised entirely of ethanol, the relative masses of these would be 100(0.789) = 78.9 g to 20(0.955) = 19.1 g, or a mass ratio of about 4.1. The Examiner concedes that the silane reaction mixture is one comprising both ethanol and water, and therefore, the mass ratio of ethanol-to-methyltrimethoxysilane in the examples would be less than 4.1 but it may still be verified that the ratio of ethanol-to-methyltrimethoxysilane would be overlapping with that required by the claims for various blends of water/ethanol embraced by the reference.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al., JP 2007-254176 in view of Ogihara et al., U.S. Patent Application Publication No. 2005/0165197.
Kondo makes a general allusion to basic catalysts and only exemplifies aqueous ammonia solutions but one of ordinary skill will recognize that the base catalyst is not so confined. Ogihara is salient because it too endeavors to produce polysiloxane particles by the hydrolysis/condensation of alkoxysilanes and lists among the various catalysts outlined in [0054] ammonia and quaternary ammonium catalysts such as choline, which is known by the skilled artisan as a common name for hydroxyethyltrimethylammonium hydroxide. This reference illustrates the art-recognized equivalency between ammonia and hydroxyethyltrimethylammonium hydroxide in the context of condensation catalysts for polymerizing alkoxysilanes.
Allowable Subject Matter
Claim 14 is 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.
Kondo does not contemplate a catalyst removal step. Apparently, the resinous particles precipitate from the solvent/water mixture enabling the particles to simply be isolated by filtration or centrifuging but there is nothing mentioned about taking measures to remove residual base that may be entrapped in the particles. An attached Dow Corning Brochure entitled Silicone Chemistry Overview indicates that it is paramount that hydrolysis/condensation catalysts be removed from a silicone polymer product because they can promote later depolymerization. Also, Kato et al., WO 2021/182239 teaches passing a silicone polymer solution through a cation exchange resin, albeit not in the context of a continuous process but the Examiner believes one of ordinary skill would be capable of modifying the apparatus of Kondo to include an exchange resin-filled column at some point beyond the tube reactor. However, it appears that the mixture advancing out of the tube microreactor is one comprising a liquid phase of organic solvent/water and a solid phase of silicone resin particulates and, therefore, it is perceived that one could not use a bed of cation exchange resin to remove residual catalyst because the resin particles would become trapped in the bed of resin.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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June 17, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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