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, and the claims dependent therefrom, are objected to because moieties R5s, different permutations of Y1 and R8 are defined using structural representations that appear to indicate that different variables may appear at specified locations within the structure. For example, R5s is depicted as including structures that contain at one site “Y3/R8”. Applicant should replace these designations with two structures, one of which contains Y3 and the other R8 at that same site.
Where the molecular weight of L’ is defined in claims 1 and 6, “40’000” and “30’000” , should be replaced with “40,000” and “30,000” respectively.
The word “ultraviolet” is misspelled in line 3 of claim 8.
Claim 8 is awkwardly written in that it says the formulation “comprises” at least one of 8a, 8b, and 8c but these outline structural conditions that must be met, and not components of a formulation per se. Therefore, it is recommended that Applicant instead say that the formulation “satisfies at least one of the conditions…”.
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 1, and the claims dependent therefrom, 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.
Page 3 of claim 1 initially mandates that at least one of D or T units must be present in the liquid polysiloxane material but it is the Examiner’s belief that the later definitions of DPQ-type, DPT-type, and DPD-type at page 15 are suggestive that both are included in the structure of the polymer. Given the definitions of DPQ-type, DPT-type, and DPD-type set forth in paragraphs [0128-0129] of the associated pre-grant publication, it is the Examiner’s understanding that the liquid polysiloxane material is one that contains each of Q, T, and D units because there would be no peaks reflective of the presence of these units in the 29Si NMR spectrum if they were absent (and, thus, the magnitude of DPQ-type, DPT-type, and/or DPD-type would be zero). For instance, if a 29Si NMR spectrum featured no peaks assignable to a D unit, then each of AD0, AD1, and AD2 would equal zero, and DPD-type would equal zero. That each of these has a non-zero value is suggestive that the resins contain at least nominal amounts of each. Accordingly, these two passages within claim 1 are in conflict with one another. Another limitation of instant claim 1 corroborating the required presence of D units is, “the atomic ratio of D-species to Q-species in the material is in the range of 0.01:1 to 0.5:1;”
Among the myriad variables disclosed in claim 1 is a variable L that represents a structural attribute within the residues exemplary of R3. In the passage bridging pages 4 and 5 of the claims, L is defined as connoting one of three different structural moieties including L’ which is, itself, a variable. The problem is, that the formula indicating the makeup of L’ includes residues L such that L may be a structural moiety that contains residues L. How can L be defined in such a manner that it comprises itself?
The limitation, “the total content of di-organofunctional D-type siloxane moieties (iii) in the polysiloxane material does not exceed 50 mol-%” at the bottom of page 15 of claim 1 is in direct conflict with the limitation, “the atomic ratio of D-species to Q-species in the material is in the range of 0.01:1 to 0.5:1;” at the top of page 16 of claim 1. If the total number of units D can represent no more than 50% of the total number of units Q, than it will constitute no more than 33.3 mol% of the total (and this excludes the mol contribution of the T units).
The exact meaning of “Q3s,d” in claim 2 is not understood. The Examiner understands “r” and “s” to be opposite sterochemical orientations at the same silicon atom but what then is “d” intended to connote?
Allowable Subject Matter
Claims 1-28 would be allowable if rewritten or amended 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.
The concepts DPQ-type, DPT-type, and DPD-type appear only to be addressed in commonly assigned/invented disclosures available in the patent literature. Thus, much of the Examiner’s search effort focused on identifying references that disclosed a similar synthetic approach involving monomers/oligomers that would provide the required organic substituents R2 and R5, and in the presence of an equilibration/rearrangement catalyst such as one of those delineated on pages 58 and 59 of the instant Specification. The employment of similar equilibration polymerization conditions in terms of time and temperature was also sought.
The most salient disclosures were ones naming common inventors. WO 2021/115646 teaches liquid polysiloxanes containing the same units Q and overlapping embodiments of units T where R5 represents moieties -L-Z and Z is NH2, or an epoxide/cyclohexene oxide ring. (They correlate with claimed R5 where R5 is R5U and R5U is one of these same groups. However, it is, to reiterate, the Examiner’s assessment that the claimed liquid polysiloxane must also contain D units and, while the prior art polysiloxane may also contain D units, one of the substituents attached to the silicon atom of the D unit is other than R5. The polymers of WO 2019/234062 are patentably distinguishable for a similar reason. Another reason why this disclosure doesn’t constitute a basis for rejection is that it defines the polymer in terms of a DPcore and a DPshell, instead of DPQ-type, DPT-type, and DPD-type. Whereas DPcore would be essentially the same parameter as DPQ-type, insofar as the core is comprised entirely of Q units, the shell is made up of both D and T units and there is no way to isolate the values of DPT-type, and DPD-type. JP 4947855 is of interest because it discloses the preparation of polymers by equilibration polymerizing a polydiorganosiloxane (supplies D units) and an alkylpolysilicate (furnishes Q units) in the presence. It is further contemplated that trialkoxysilanes bearing organofunctional groups may contribute to the polymer structure. However, the trialkoxysilanes mentioned would not provide units R5U or R5S. Further, the reaction is not carried out under non-hydrolytic conditions hence it could not be reasoned that the polymerization products would necessarily conform with the values of DPQ-type, DPT-type, and DPD-type.
U.S. 12,668,666 and U.S. 12,398,240 do not constitute a basis for a non-statutory double patenting rejection, nor do WO 2021/116334 WO 2021/116035 represent a foundation for a prior art rejection at least because, as before, the substitution pattern on the D units is completely different.
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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July 22, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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