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 17 is objected to because of the following informalities: claim 17 recites “the polysiloxane material comprises less than 5 0.5 mol-% silanol groups (Si-OH)”. According to the specification, it should be --the polysiloxane material comprises less than 5-0.5 mol-% silanol groups (Si-OH)--. Appropriate correction is required.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are: the specification recites “the polysiloxane material comprises MC from 0.005 to 20 mol-% (mol MC / mol Si in the material), optionally 0.01 to 10 mol-%, 0.01 to 3 mol-%, 0.02 to 1.5 mol-%, 0.15 to 10 mol-% or 0.15 to 3 mol-%” [P4 spec.]; “[T]he most effective MC amount within the indicated range of 0.005 to 20 mol-% can be determined by the skilled person” [P17 spec.]. MC is an alkali or earth alkali metal ion, and only exists in the structures of Q1, Q2, and Q3 as R1 (see the definition of R1 on page 2 of spec.). The maximum amount of R1 is 3 mole per mole of Si atom in the structure of Q1. Therefore, the polysiloxane can comprise at most 3 mol MC/mol Si. The recited range of MC from 0.005 to 20 mol MC/mol Si is misleading.
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 17-44 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 17 recites “wherein the polysiloxane material comprises MC from 0.005 to 20 mol MC/mol Si in the polysiloxane material (mol-%)”, which renders the claim indefinite. MC is an alkali or earth alkali metal ion, and only exists in the structures of Q1, Q2, and Q3 as R1 (see the definition of R1 in claim 17). The maximum amount of R1 is 3 mole per mole of Si atom in the structure of Q1. Therefore, the polysiloxane can comprise at most 3 mol MC/mol Si. The claimed range of MC from 0.005 to 20 mol MC/mol Si is misleading.
Claims 18-44 are rejected likewise as depending on claim 17.
Allowable Subject Matter
Claims 17-44 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 following is a statement of reasons for the indication of allowable subject matter:
Independent claim 17 is directed to a polymeric liquid polysiloxane material comprising: (i) non-organofunctional Q-type siloxane moieties selected from the group consisting of the recited Q1, Q2, Q3 and Q4, and wherein the polysiloxane material comprises MC from 0.005 to 20 mol MC/mol Si in the polysiloxane material (mol-%); the polysiloxane material has a viscosity in the range of 2 to 100'000 cP; ; and the degree of polymerization of the Q-type alkoxy-terminated moieties DPQ-type is in the range of 1.3 to 2.7.
There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Koebel et al (US 20230097589 A1). Koebel teaches a polymeric liquid polysiloxane material comprising: (i) non-organofunctional Q-type siloxane moieties selected from the group consisting of the recited Q1, Q2, Q3 and Q4, and wherein the degree of polymerization of the Q-type moieties DPQ-type is in the range of 1.3 to 2.7; the material has a viscosity in the range of 10 to 100′000 cP; the material comprises more than 0.25 mol-% silanol groups (Si-OH) [claim 1].
However, the prior art does not teach wherein the polysiloxane material comprises MC from 0.005 to 20 mol MC/mol Si in the polysiloxane material (mol-%).
Independent claims 29, 31, 32, 35, 37, 38, 39, 41, 42, 43 and 44 require all the limitations of claim 17.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. 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.
/JIANGTIAN XU/Primary Examiner, Art Unit 1762
Prosecution Insights