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 Objections
Claim 1 objected to because of the following informalities: Claim 1, line 29 (line 3 on page 3) has a “.” at the end which should be changed to a --,-- which is a clear typographical error. Appropriate correction is required and is respectfully requested.
Information Disclosure Statement
The information disclosure statement filed 12/15/2026 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. It has been placed in the application file, but the information referred to therein has not been considered.
The IDS of 12/15/2023 includes Foreign Patent Documents JP 2017186479 and JP 6323086. While translations of these documents are present, a copy of the cited foreign patent document has not been provided.
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 5 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 5 recites “The curable composition of claim 1, wherein…(iv) chemical structure (IV), when present, has the following chemical structure: (ViMe2SiO1/2)e(PhMeSiO2/2)f; (v) chemical structure (V), when present, has the following chemical structure: (HMeSiO1/2)2(PhPhSiO2/2)…” There is insufficient antecedent basis for both “chemical structure (IV)” and “chemical structure (V).” Claim 1, on which claim 5 depends, does not recite either “chemical structure (IV)” or “chemical structure (V).” Rather, claim 3 recites chemical structure (V) and claim 2 recites chemical structure (IV). The limitations “iv) chemical structure (IV), when present, has the following chemical structure: (ViMe2SiO1/2)e(PhMeSiO2/2)f; (v) chemical structure (V), when present, has the following chemical structure: (HMeSiO1/2)2(PhPhSiO2/2)” can be deleted from claim 5 and then limitations (iv) and (v) of claim 5 can be added in new dependent claims, or claim 3 can be amended to be depend from claim 2, and claim 5 can be amended to depend from claim 3.
Allowable Subject Matter
Claims 1-4 and 6-10 are allowed.
Claim 5 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.
The following is an examiner’s statement of reasons for allowance: The primary reason for allowance of claims 1-4 and 6-10 is the recitation in claim 1 of a curable composition comprising: (a) 15 to 73 weight-percent of a vinyl functional M-capped aryl silsesquioxane resin having a weight-average molecular weight in a range of 700 to 1900 Daltons, and having the average chemical structure (I):
PNG
media_image1.png
52
559
media_image1.png
Greyscale
wherein, at least one R is a terminal alkenyl group with one to 8 carbon atoms, subscript x is independently in each occurrence selected from a value in a range of zero to 2, subscript a is a value in a range of 0.15 to 0.35 and subscript b is a value in a range of 0.65 to 0.85, subscript z is in a range of zero to 0.10 and the sum of subscripts a, b and z is 1.0; (b) 0.5 to 5 weight-percent of a vinyl functional disiloxane having a weight-average molecular weight in a range of 250-500 Daltons, and having the chemical structure (II):
PNG
media_image2.png
35
448
media_image2.png
Greyscale
wherein at least one R is a terminal alkenyl group with 1 to 8 carbon atoms; (c) 2 to 25 wt% of a silicon-hydride functional M-capped silsesquioxane resin having a weight-average molecular weight in a range of 500 to 1200 Daltons and having the average chemical structure of (III):
PNG
media_image3.png
39
561
media_image3.png
Greyscale
wherein subscript x is independently in each occurrence selected from a value in a range of zero to 2, subscript c has a value in a range of 0.5 to 0.7 and subscript d has a value in a range of 0.3 to 0.5, subscript z is in a range of zero to 0.10, and where the sum of subscripts c, d and z is 1.0; (d) 1 to 10 weight parts per million weight parts of platinum from a platinum hydrosilylation catalyst based on weight of curable composition; wherein: R is, subject to requirements stated above, independently in each occurrence selected from a group consisting of alkyl groups with from 1 to 8 carbon atoms and terminal alkenyl groups with from 1 to 8 carbon atoms; R' is independently in each occurrence selected from aryl groups; R" is independently in each occurrence selected from alkyl groups with from 1 to 8 carbon atoms; Z is independently in each occurrence selected from a group consisting of hydrogen and alkyl groups and R groups; subscripts a-d and z refer to the mole ratios of the corresponding siloxane unit in the molecule containing the siloxane unit; the sum of the concentration of (a) and (b) is at least 35 weight-percent; weight-percent values are relative to weight of curable composition; and the curable composition is free of acetylenic alcohol hydrosilylation inhibitors.
The closest prior art references are the following: (1) Nakanishi (US 7,863,392; (2) Matsuo (JP 2017-186479); (3) and Laine (US 2006/0122351). As Matsuo is not in English, citations are to the attached translation.
Nakanishi teaches a curable siloxane resin composition (abstract) and gives examples of a vinyl siloxane having the structural formula (ViMe2SiO1/2)0.25(PhSiO3/2)0.75 (col. 14, ln. 15-45), which corresponds to the (a) vinyl functional M-capped aryl silsesquioxane of instant claim 1, and (HMe2SiO1/2)0.6(PhSiO3/2)0.4 (col. 15, ln. 40-50), which corresponds to the (a) silicon hydride functional M-capped silsesquioxane of instant claim 1, used with a platinum catalyst (Table 1).
Nakanishi fails to teach the presence of a vinyl functional disiloxane in 0.5-5 wt% as required by claim 1.
Matsuo teaches a composition comprising: (A) a reaction product of a SiH group containing silsesquioxane and an organosiloxane having two alkenyl groups, (B) a siloxane chain with SiH groups, and (C) a Pt catalyst (¶19).
Matsuo fails to teach a composition of two silsesquioxane compounds together in the presence of a vinyl containing disiloxane.
Laine teaches polymers containing silsesquioxane cages (abstract) which include the reaction of silicon hydride silsesquioxanes with alkenyl containing silsesquioxanes (¶ 152-153).
Laine fails to teach a composition containing two silsesquioxane compounds together in the presence of a vinyl containing disiloxane as required by instant claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K. BOYLE/Primary Examiner, Art Unit 1766
Prosecution Insights