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:
The term “upto” in reference to given value for a property or component is taken to mean “up to”, otherwise stated as “less than or equal to”.
The phrase “two or more organopolysiloxane which is the same or different of general formula (I)” is taken to mean “two or more organopolysiloxanes which are the same as or are different from general formula (I)”.
The neutralization step of the method is signified with the “iii)” step marker, this should instead be signified by “v)”.
Appropriate correction is required.
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 1 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 1 is rendered indefinite for the following reasons:
It is unclear what is meant by “or its mixture” in the sentence “a starting organopolysiloxane comprising two or more organopolysiloxane which is the same or different of general formula (I) or its mixture” is in reference to and what optional mixtures are claimed;
It is unclear what the phrases “is same or different” with respect to the substituent groups “R” and “R1” and the value “x” means. The claim does not clearly distinguish what the substituents and the value “x” are similar to or different from and in what way they may differ.
In claim 6, the phrase “the starting polyorganosiloxane” lacks antecedent basis. For examination purposes, this is taken to mean “the organopolysiloxane”, which has antecedent basis in claim 1.
Claim 8 uses the term "preferably", this renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are a mandatory part of the claimed invention or merely optional. See MPEP § 2173.05(d).
Claims 2-5 and 7 are rejected as depending on claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 20180244850 A1 as cited below; USPAT 9765189 B2) in view of Paul (US 20070276087 A1).
Regarding claim 1-5, 7 and 8, Kobayashi teaches process of producing a high-viscosity emulsion or organopolysiloxanes (paragraph [0001]; example 2) comprising:
1) providing a formulation comprising:
(a) a starting organopolysiloxane comprising a first organopolysiloxane according to the claimed general formula (I):
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Where R is methyl, R1 is a hydroxy group and x is 2;
And a second organopolysiloxane that is different from the formula above. The organopolysiloxanes each have a content of cyclosiloxanes equal to or less than 50 ppm.
(b) water;
(c) polyoxyethylene tridecyl ether as a non-ionic emulsifier (also known as trideceth, which the examiner notes is exemplified in the instant specification and has an HLB of between 10 and 19 according to instant specification page 18, lines 7-23).
(d) sodium dodecylbenzene sulfonate as a neutralized anionic emulsifier (which can also be a salt of triethanolamine as TEA- dodecylbenzene sulfonate (paragraph [0039]) which is the exemplified neutralized anionic emulsifier in the instant specification and is expected to have an HLB value in the claimed range).
2) the formulation is homogenized (emulsified) [more preferably] below 15°C (paragraph [0072]);
3) an acid catalyst (component D) is added;
4) polymerization is carried out at a temperature of 10°C;
5) the formulation is then neutralized with triethanolamine.
The emulsion median diameter is 180 nm, and the cyclosiloxane content (D4) content is 1,000 ppm (Table 1, example 2).
Kobayashi teaches that the acid catalyst (D) and an anionic emulsifier/surfactant (B) are interchangeable if the anionic emulsifier has a catalytic function to it (i.e. is an acid), further disclosing that dodecylbenzene sulfonic acid, which is the exemplified anionic emulsifier of the instant specification, is an anionic emulsifier (paragraphs [0039] and [0053]). Kobayashi further teaches that the steps of cooling and adding the acid catalyst are intended to increase viscosity and polymer formation, additionally decreasing the formation of cyclosiloxanes (paragraphs [0070-0072]), this is similar to instant specification page 12, lines 28-32.
The examiner notes that the method steps iii) and iv) of the instant claims which are the cooling of the formulation and the addition of the anionic emulsifier, respectively, are not claimed to be in sequential order and are thus not interpreted as such. Nevertheless, case law holds it that to rearrange process steps known in the art is prima facie obvious in the absence of new or unexpected results (See MPEP § 2144.04 (IV)(C), In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946)).
Kobayashi is silent as to what pH the emulsion is neutralized to, the viscosity of the emulsion after polymerization without being a 15 wt.% solution of toluene, and the use of two linear organopolysiloxane compounds of general formula (I) in the emulsion.
Paul teaches a manufacturing process for stable emulsions comprising organopolysiloxanes of the following formula (I):
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Where R may be monovalent hydrocarbon radicals like methyl groups, R1 may be hydroxy or alkoxy groups, and x is 1-100. Paul further teaches that the emulsion may comprise a mixture of two different organopolysiloxanes of the above formula where either organopolysiloxane may be hydroxy or alkoxy terminated (paragraphs [0031-0035]). Paul further teaches that these emulsions are neutralized to a pH of 6-8 using triethanolamine (paragraph [0017]; Example 1). Paul teaches that the appropriate viscosity of a high-viscosity emulsion without the addition of toluene is at least 20,000 cp (equivalent to the same amount in mPa·s) (paragraph [0014]).
A person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to combine prior art elements according to known methods to apply the teachings of Kobayashi and Paul to the method of Kobayashi by using dodecylbenzene sulfonic acid (anionic emulsifier) as an acid catalyst and two or more different organopolysiloxanes of general formula (I) and then neutralize the emulsion to a pH of between 6 and 8 in the pursuit of yielding a high-viscosity emulsion with a viscosity of 20,000 mPa·s or more and the results would have been predictable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOLTON JONES whose telephone number is (571)272-9802. The examiner can normally be reached Generally Monday-Friday 8:00 am - 5:00 pm EST.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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