DETAILED ACTION
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 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.
2. Claims 2-7, 10 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.
3. Claims 2-7 refer to component (a), component (b) and component (c), which do not have prepositions “the’ or “said” in front of those, and it is not clear if said components are the same or different from those previously cited in claim 1.
Claim 10 refers to “one or more cure inhibitors”. However, there is a lack of antecedent basis for said limitation, since claims 8 and 9 refer to “a cure inhibitor”, i.e. only one cure inhibitor.
Claim 3 which is dependent on claim 2, refers to a weight average molecular weight (Mw) of the component (a) being 300-3,000 Da. However, there is a lack of antecedent basis for said limitation since the range of Mw in claim 2 is 3,000-50,000. Further, it is not clear if the component a) having Mw of 300-3,000 is used in addition to the component a) having Mw of 3,000-50,000, or not.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
4. Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3, which is dependent on claim 2, refers to a weight average molecular weight of the component (a) being 300-3,000 Da, which range is totally different from the range of 3,000-50,000 of claim 2. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Objections
5. Claims 6, 10-11 objected to because of the following. Claims 6, 10-11 recite a Markush-type listing of ingredients. When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper (see MPEP 2173.05(h)). Appropriate correction is required.
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.
6. Claims 1, 4-14 are rejected under 35 U.S.C. 103 as unpatentable over Telgenhoff et al (WO 2020/131365) in view of Ziche et al (US 2010/0305229) and/or Kim et al (US 4,026,845), as evidenced by, or in further view of Grande et al, Polymer,53,2012,3135-3142, submitted in IDS on 01/18/2024).
7. Telgenhoff et al discloses a silicone composition for making functionalized polyorganosiloxane comprising:
A) a boron-containing Lewis acid catalyst, specifically tris(pentafluorophenyl)borane ([0012], as to instant claims 5-6);
B) an organosilicon compound having at least one, or 1-4 ([0013]), silicon- bonded alkoxy group of formula -OR2, wherein R2 is a monovalent hydrocarbon group of 1-6 carbon atoms, wherein said organosilicon compounds include organosiloxane polymers of the formula A ([0016]):
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Or of the following formula B ([0018]):
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Wherein m is 1-20 and r is 1-20;
even more specifically a commercial product DOWSIL US-CF-2403 ([0018]);
C) an organohydrogensiloxane having at least one 1 silicon bonded hydrogen atoms per molecule (Abstract), having the following formula C:
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Wherein g=2, or (g+j) have a value sufficient to provide the polyorganohydrogen siloxane with at least 1% silicon bonded hydrogen atoms ([0019]-[0020]), including commercial product DOWSIL 6-3570 ([0022]);
D) a neutralizing agent to neutralize the starting material after the product forms ([0027]), i.e an inhibitor, comprising triphenyl amine (which corresponds to cure inhibitor of instant claims 8-10);
wherein the products of said composition are functionalized polyorganosiloxane and a by-product comprising HR2 (abstract), i.e. an alkane having 1-6 carbon atoms.
8. As to instant claim 14, the method for making the polyorganosiloxane comprises combining the above components A)-D), followed by heating at a temperature of 5-70⁰C ([0009]), further followed by recovering the product ([0011]).
9. Though Telgenhoff et al does not explicitly recite the polyorganosiloxane product as a foam, since:
i) the by-product in said reaction is a low alkane HR2 having 1-4 carbon atoms, which is gaseous and will intrinsically and necessarily, at least partially, act as a blowing agent;
ii) as further confirmed by instant specification, the low alkanes produced as by-products in said reactions of =Si-H with RO-Si= function as chemical blowing agents to create foam as the composition cures (see p. 9, lines 18-25 of instant specification):
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iii) Grande et al discloses the reaction of alkoxysilanes with hydrosilanes catalyzed by B(C6F5)3, wherein Grande et al explicitly teaches that said reaction produces alkane bi-products used as in-situ blowing agents, simultaneously producing silicone foams while curing (Section 1, pp. 3135-3136), wherein the produced silicone foams are having density of less than 0.46 g/cc, and as low as 0.11 g/cc (Table 1);
therefore, the low alkane HR2 having 1-4 carbon atoms as the bi-product formed during the production of the polyorganosiloxane of Telgenhoff et al will intrinsically and necessarily, at least partially, act as the blowing agent, and the produced polyorganosiloxane will at least partially be foamed as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10. Further, based on the teachings of Grande et al that such reaction produces silicone foams having density of less than 0.46 g/cc, and as low as 0.11 g/cc (Table 1), it would have been obvious to a one of ordinary skill in the art to combine the teachings of Grande et al and Telgenhoff et al, and to choose and use, or obvious to try to use, the component B) in the composition of Telgenhoff et al comprising alkoxy groups with 1-4 carbon atoms, which produce methane, ethane, propane or butane as the bi-products and which alkanes are gaseous and thus will intrinsically and necessarily be acting as the blowing agent, so to form the polyorganosiloxane of Telgenhoff et al at least partially as a foam having density of less than 0.46 g/cc, as taught by Grande et al, or at least less than 0.8 g/cc, as required by instant claims 12-13, given such is desired and since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
11. As to instant claims 3-4, the component B) of the composition of Telgenhoff et al is a commercial product DOWSIL US-CF-2403, which is the same product disclosed and exemplified in instant specification as having Mw of 1,000 (see p. 18, lines 12-15 of instant specification); therefore, the component B) of the composition of Telgenhoff et al will intrinsically and necessarily have Mw of 1,000 and further alkoxy group content of at least 2%wt as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
12. As to instant claim 11, the composition further comprises activated alumina ([0026]).
13. Telgenhoff et al does not teach the composition further comprising a surfactant, such as a fluorosurfactant.
14. However,
1) Ziche et al discloses silicone foams made of oranopolysiloxane containing alkoxy-siloxy unit (Abstract), wherein Ziche et al teaches that it is advantageous to add foam stabilizers, such as fluorine surfactants, to the foamable mixtures for making foams, and further cell regulators, flame retardants ([0079], [0080], as to instant claims 1, 7, 11).
2) Kim et al discloses adding a fluorinated surfactant to a silicone foam composition to decrease density of the cured foam (Abstract).
15. Since addition of fluorosurfactants to compositions for making silicone foams stabilizes the produced foam and decreases the density of said foam, as taught by Ziche et al and Kim et al , therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kim et al, Ziche et al and Telgenhoff et al, and to include, or obvious to try to include a fluorinated surfactant into the composition for making organopolysiloxane foam of Telgenhoff et al, so to further stabilize the foam and further reduce the density of said foam, as taught by Ziche et al and Kim et al, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
16. Claims 1-14 are rejected under 35 U.S.C. 103 as unpatentable over Telgenhoff et al (WO 2020/131365) in view of Ziche et al (US 2010/0305229) and/or Kim et al (US 4,026,845), as evidenced by, or in view of Grande et al, Polymer,53, 2012, 3135-3142, submitted in IDS on 01/18/2024), in further view of Fulton (US 3,607,801).
17. The discussion with respect to Telgenhoff et al (WO 2020/131365) in view of Ziche et al (US 2010/0305229) and/or Kim et al (US 4,026,845), as evidenced by, or in view of Grande et al, Polymer,53, 2012, 3135-3142, submitted in IDS on 01/18/2024), set forth in paragraphs 6-15 above, is incorporated here by reference.
18. Though Telgenhoff et al discloses the use of commercial product DOWSIL US-CF-2403 having Mw of 1,000 as the alkoxy-functional siloxane component B), Telgenhoff et al does not disclose the use of alkoxy-functional siloxane having Mw of 3,000-50,000.
19. However, Fulton discloses a cured siloxane polymer, including a foam (col. 4, lines 56-60), made of polyalkoxysilyl diorganosiloxanes (Abstract, col. 2, lines 50-60), wherein the used alkoxy-polysiloxanes include a combination of an alkoxy-siloxane having a molecular weight of 700-2,500 and further an alkoxy-siloxane having a molecular weight of 20,000-60,000 (col. 3, lines 50-60), wherein the relative proportion of each of the alkoxy-siloxanes depends on the desired modulus of the final product (col. 3, lines 45-50).
20. Since not only low molecular weight, but further a relatively high molecular weight alkoxy-siloxanes are taught in the art as being used for making cured silicone foams, as shown by Fulton, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Fulton and Telgenhoff et al, and to use, or obvious to try to use, at least partially an alkoxy-siloxane having molecular weight of 20,000-60,000 of Fulton in addition to the commercial product DOWSIL US-CF-2403, as the component A) in the composition of Telgenhoff et al, so to at least partially alter the modulus of the cured product and obtain a desired level of modulus of the produced cured silicone foam of Telgenhoff et al, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
21. Claims 1-14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,398,241 in view of Ziche et al (US 2010/0305229), Kim et al (US 4,026,845), Fulton (US 3,607,801), as evidenced by, or in view of Grande et al, Polymer,53, 2012, 3135-3142, submitted in IDS on 01/18/2024). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
22. US patent 12,398,241 claims a composition comprising:
A) a fluorinated triarylborane Lewis acid selected from the group consisting of:
A1) tris(3,5-bis(trifluoromethyl)phenyl)borane;
A2) bis(3,5-bis(trifluoromethyl)phenyl)(4-trifluoromethylphenyl)borane)
A3) bis(3,5-bis(trifluoromethyl)phenyl)(2,4,6-trifluorophenyl)borane;
A4) bis(3,5-bis(trifluoromethyl)phenyl)(2,6-difluorophenyl)borane;
A5) bis(3,5-bis(trifluoromethyl)phenyl)(2,5- bis(trifluoromethyl)phenyl)borane;
A6) (3,5-bis(trifluoromethyl)phenyl)bis(2,5- bis(trifluoromethyl)phenyl)borane;
A7) bis(3,5-bis(trifluoromethyl)phenyl)(2,3,5,6-tetrafluoro-4- trifluoromethylphenyl)borane; and
A8) a combination of two or more of Al) to A7);
B) a hydrocarbonoxy-functional organosilicon compound having an average, per molecule of at least 1 silicon-bonded group of the formula -OR2, wherein each R2 is an independently selected monovalent hydrocarbon group of 1 to 6 carbon atoms; and
C) a silyl hydride having at least 1 silicon-bonded hydrogen atom per molecule.
The component B) the organosilicon compound an organosiloxane oligomer or polymer:
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The component C) is an organohydrogensiloxane of the formula:
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Further claimed a method comprising combining the above components and forming a a reaction product and HR2 bi-product.
23. Though US patent 12,398,241 does not recite said product as a foam,
i) the by-product in said reaction is a low alkane HR2 having 1-4 carbon atoms, which is gaseous and will intrinsically and necessarily, at least partially, act as a blowing agent;
ii) Grande et al discloses the reaction of alkoxysilanes with hydrosilanes catalyzed by B(C6F5)3, wherein Grande et al explicitly teaches that said reaction produces alkane bi-products used as in-situ blowing agents, simultaneously producing silicone foams while curing (Section 1, pp. 3135-3136), wherein the produced silicone foams are having density of less than 0.46 g/cc, and as low as 0.11 g/cc (Table 1);
therefore, the low alkane HR2 having 1-4 carbon atoms as the bi-product formed during the production of the polyorganosiloxane of US patent 12,398,241 will intrinsically and necessarily, at least partially, act as the blowing agent, and the produced polyorganosiloxane will at least partially be foamed as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
24. Though US patent 12,398,241 does not recite does not recite the composition further comprising a fluorosurfactant,
1) Ziche et al discloses silicone foams made of oranopolysiloxane containing alkoxy-siloxy unit (Abstract), wherein Ziche et al teaches that it is advantageous to add foam stabilizers, such as fluorine surfactants, to the foamable mixtures for making foams, and further cell regulators, flame retardants ([0079], [0080], as to instant claims 1, 7, 11).
2) Kim et al discloses adding a fluorinated surfactant to a silicone foam composition to decrease density of the cured foam (Abstract).
25. Since addition of fluorosurfactants to compositions for making silicone foams stabilizes the produced foam and decreases the density of said foam, as taught by Ziche et al and Kim et al , therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kim et al, Ziche et al and US patent 12,398,241, and to include, or obvious to try to include a fluorinated surfactant into the composition for making organopolysiloxane foam, so to further stabilize the foam and further reduce the density of said foam, as taught by Ziche et al and Kim et al, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
26. Though US patent 12,398,241 does not recite does not claim molecular weight of the component B),
Fulton discloses a cured siloxane polymer, including a foam (col. 4, lines 56-60), made of polyalkoxysilyl diorganosiloxanes (Abstract, col. 2, lines 50-60), wherein the used alkoxy-polysiloxanes include a combination of an alkoxy-siloxane having a molecular weight of 700-2,500 and further an alkoxy-siloxane having a molecular weight of 20,000-60,000 (col. 3, lines 50-60), wherein the relative proportion of each of the alkoxy-siloxanes depends on the desired modulus of the product (col. 3, lines 45-50).
27. Since both a low molecular weight and a relatively high molecular weight alkoxy-siloxanes are taught in the art as being used for making cured siliconecompositions, as shown by Fulton, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Fulton and US patent 12,398,241, and to use, or obvious to try to use, at least partially an alkoxy-siloxane having molecular weight of 20,000-60,000 and an alkoxy-siloxane having molecular weight of 700-2,500 of Fulton, as the component B) in the composition of US patent 12,398,241, so to at least partially alter the modulus of the cured product and obtain a desired level of modulus of the produced cured silicone product of US patent 12,398,241, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
28. Therefore, the limitations claimed in instant invention are obvious variants of the limitations claimed in U.S. Patent No. 12,398,241 in view of Ziche et al, Kim et al, Fulton, as evidenced by, or in view of Grande et al.
29. Claims 1-14 are directed to an invention not patentably distinct from claims 1-13 of U.S. Patent No. 12,398,241 in view of Ziche et al (US 2010/0305229), Kim et al (US 4,026,845), Fulton (US 3,607,801), as evidenced by, or in view of Grande et al, Polymer,53, 2012, 3135-3142, submitted in IDS on 01/18/2024).
Specifically, see the discussion in paragraphs 21-28 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). Commonly assigned US 12,398,241, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
30. Claims 1-14 are rejected under 35 U.S.C. 103(a) as being obvious over U.S. Patent No. 12,398,241 in view of Ziche et al (US 2010/0305229), Kim et al (US 4,026,845), Fulton (US 3,607,801), as evidenced by, or in view of Grande et al, Polymer,53, 2012, 3135-3142, submitted in IDS on 01/18/2024).
Specifically, see the discussion in paragraphs 21-28 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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