Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objection
2. Objection is made to claims 1 -15, because within the definition of R2,within claims 1 and 11, the significance of using semi-colons to separate some groups, as opposed to the use of commas to separate other groups, is unclear.
Indefiniteness Rejection
3. 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.
4. Claims 3, 4, and 9 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.
Firstly, with respect to claim 3, within line 4, it is unclear how to interpret the use of “and/or” within the grouping of chain extenders; it is unclear if the language pertains to the two species immediately before and after the language of if it pertains to all species after the language.
Secondly, with respect to claim 4, it is unclear what amount constitutes “minimum residual” in connection with diacetamidosilane chain extender; the examiner has reviewed the specification and finds no guidance to address this issue. Furthermore, the use of “can” within the last line renders the claim indefinite, because the language denoted by “can” fails to constitute a definitive limitation.
Thirdly, regarding claim 9, the phrase "such as" (line 6) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Fourthly, with respect claim 9, applicants have referred to cure catalyst (d); however, within claim 1, (d) is specified as a moisture scavenger.
Fifthly, with respect to claim 9, the use of the language, “if required”, after adhesion promoter renders the claim indefinite, because it is interpreted as not mandating the presence of the adhesion promoter; however, claim 1 mandates its presence.
Sixthly, with respect to claim 9, the language, “the other optional additional ingredients”, lacks antecedence; it is unclear what constitutes these ingredients.
Allowable Subject Matter
5. Claims 1, 2, 5-8, and 10-15 would be allowable once the objection to claims 1 and 11 are addressed.
6. Claims 3, 4, and 9 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.
7. The prior art of record fails to disclose the claimed one-component translucent RTV silicone composition, wherein the claimed chain extended alkoxy end-capped polydiorganosiloxane (a) is produced according to the reaction sequence set forth within claims 1 and 11.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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