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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-3) and species i (claim 2) in the reply filed on 8/19/2026 is acknowledged.
Group II-IV (claims 4-16) and species ii (claim 3) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/19/2026.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minemura et al (US 20110086227 A1).
Regarding claim 1, Minemura teaches a monovalent phenol containing a polysiloxane group represented by general formula (4)
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wherein R1 represents an alkylene group having 1 to 20 carbon atoms. R2 to R6 represent a hydrogen atom, an alkyl group having 1 to 10 carbon atoms, an aryl group having 6 to 12 carbon atoms or an alkenyl group having 2 to 10 carbon atoms. R7 and R8 represent a group selected from the group consisting of hydrogen, fluorine, chlorine, bromine, iodine, an alkyl group having 1 to 10 carbon atoms (preferably having 1 to 4 carbon atoms), an aryl group having 6 to 12 carbon atoms, an alkenyl group having 2 to 10 carbon atoms, an alkoxy group having 1 to 5 carbon atoms or an aralkyl group having 7 to 17 carbon atoms (preferably having 7 carbon atom). a is an integer from 1 to 1000 [0043, 0027-0029, 0031].
A specific example of formula (4) is
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(“a” is 10 on average)
[0159], which reads on the claimed chemical formula 1-1 wherein, from left to right of chemical formula 1-1, R1=C4H9, R2=CH3, a=10+1 on average, b=0, c=1, R2=CH3, R3=C3H6, R4=H, R1=CH3.
Since “a” is 10 on average, a compound represented by Chemical Formula 24 with a=9 and/or even a=8 are expected to be present, which meets the claimed range of a=1-10.
Regarding claim 2, the recited “wherein the hydroxylphenyl-terminated polysiloxane of chemical formula 1-1 is a reaction product of a polysiloxane of the following chemical formula 3-1 and a compound of the following chemical formula 4” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through this process is a polysiloxane represented by the claimed formula 1-1. Since the same product was disclosed by the prior art, claim 2 does not gain patentable weight.
Nevertheless, Minemura teaches that the monovalent phenol containing a polysiloxane group represented by the above general formula (4) can be produced by addition reaction of monovalent phenol having an unsaturated group with polysiloxane having a Si-H group at one end [0044]. The monovalent phenol having an unsaturated group corresponds to the claimed Chemical formula 4; the polysiloxane having a Si-H group at one end corresponds to the claimed Chemical formula 3-1.
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.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
