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 .
Status of Claims
Claims 1 – 22 are pending.
Claims 3 – 5, 11, 15 and 21 are objected.
Claims 1, 2, 6 – 10, 12 - 14, 16 – 20 and 22 are rejected.
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.
Claims 11, 13 and 14 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 11 recites the limitation "the molar ratio…" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the molar ratio…" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the ratio" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 6 – 10, 12, 13, 14, 16 – 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis et al. (US 9,249,165).
The rejected claims cover, inter alia, a process for the synthesis of alkenylhalosilanes, comprising:(1) forming a slurry of a copper-activated silicon sourced from at least one of fresh silicon, cyclone fines, cyclone fine dust, silicon ultrafines, spent contact mass or mixtures thereof, from the Direct Synthesis of organohalosilanes in a thermally stable solvent; (2) agitating the slurry; (3) reacting the agitated slurry with at least one unsaturated aliphatic or unsaturated cycloaliphatic organohalide of the formula R1X, and optionally at least one organohalosilane or hydrogen halide in the presence of an additive exhibiting Lewis base properties, the additive effective to inhibit polymerization of the alkenylhalosilane, said reaction conducted for a reaction time, a reaction temperature, and a reaction pressure effective to produce the alkenylhalosilanes, said alkenylhalosilanes having the formulae, R1SiHX2, R12SiHX, R13SiX, R1SiX3, and R12SiX2 or mixtures thereof, wherein R1 is an unsaturated aliphatic or cycloalkenyl group, and X is a halogen; and (4) recovering the alkenylhalosilanes from the slurry.
Dependent claim 2 further limits R1. Dependent claims 6 and 7 further limit the additive. Dependent claims 8 and 9 further limit the solvent. Dependent claim 10 further limit R1 and the organohalosilanes. Dependent claim 12 further limits the additive dosing. Regarding clams 13 and 14 further limit the ratio of additive to Lewis acid formed in the slurry. Dependent clams 16 and 17 further limit the reaction temperature. Dependent claim 18 further limits the reaction pressure. Dependent claim 19 further limits the reaction time. Dependent claim 20 further limits the process by recovering the solvent for reuse. Dependent claim 22 further limits the process by including a foam control agent.
However, Lewis discloses slurry phase direct synthesis of organohalosilanes form cyclone fines. Lewis discloses a process comprises the following steps: (1) forming a slurry of cyclone fines, ultra fines and/or spent contact mass in a thermally stable liquid in a continuously agitated three-phase catalytic reactor, (2) providing an organohalide to react with the said fines and spent contact mass, (3) introducing specific additives and optional hydrogen halide to enhance selectivity to R1 SiHX2, R12SiHX, R¹3SiX and R12SiX₂ and obviate extensive chemical transformation of the thermally stable liquid, (4) reacting said organohalide of formula R¹X and slurry for a time and at a temperature to effectuate conversion of the silicon contained in the fines and contact mass to organohalosilane monomers or mixtures thereof, (5) recovering said monomers or mixtures thereof, (6) separating the solid reaction residue from the liquid and recovering the liquid for reuse in step (1) and passivating the solid for disposal or copper recovery. (col. 6, ln 15- 30). In Lewis the contents of the reaction mixture are agitated to maintain a well-mixed slurry of the cyclone fines, ultrafines or spent mass and gaseous organohalide in the solvent. (col. 13, ln 39 0 41). The additives of Lewis are for inhibiting or controlling undesirable reactions caused by the presence of Lewis acids, such as AlCl3, TiCl4 and FeCl3 and of free copper in cyclone fines, ultrafines and spent mass. (col. 10, ln 55 – 65).
Regarding claim 2, the general formula R1X, represents the organohalide used to react with the copper-activated silicon of Lewis. R1 can be an unsaturated aliphatic or aromatic hydrocarbon radical and X is a halogen atom. Examples of R1 are groups such as vinyl, allyl and phenyl. Suitable examples of organohalides are methyl chloride, methyl bromide, ethyl chloride, vinyl chloride and chlorobenzene. (col. 8, ln 20 – 29).
Regarding claim 6, organosiloxanes with trialkylsilyl end groups, particularly hexaalkyldisiloxanes, are effective additives that permit stable slurry-phase Direct Synthesis of organohalosilanes from cyclone fines, ultrafines and spent masses. (col. 11, ln 29 – 31).
Regarding claim 7, usage of the hexaalkyldisiloxanes, for example, hexamethyldisiloxane, can be based on the aluminum content of the silicon-containing solids to be reacted. (col. 11, ln 36 – 37).
Regarding claims 8 and 9, Lewis discloses solvent for the direct synthesis can be linear or branched paraffins. (col. 8, ln 58 &64-65).
Regarding claim 12, Lewis discloses that the additives are charged initially and dosed continuously or intermittently, thereafter, during the course of the reaction. (col. 12, ln 36 – 38).
Regarding claims 16 and 17, the reaction is generally conducted at temperatures above about 180° C. Reaction of allyl chloride with the cyclone fines, ultrafines or spent masses is preferably done at 200-280° C. (col. 13, ln 22 – 23 & ln 31 – 32).
Regarding claim 18, the reaction is conducted at atmospheric pressure and pressures up to about 10 atmospheres are generally employed. (col. 18, ln 35-36).
Regarding clam 19, the reaction times ranges from 0.1 to 100 hours. (col. 13, ln 37 – 38).
Regarding claim 20, the of Lewis includes recovering the liquid for reuse in step (1). (col. 6, ln 29). It is disclosed that used solvents can be treated for removal of solids, metal salts, disilanes and other accumulated impurities prior to recycle and reuse in the slurry reactor. (col. 10, ln 35 – 37).
Regarding claim 22, Lewis discloses the use of foam control agents to negate or control foaming in the slurry phase of direct synthesis of the organohalosilanes. (col. 13, ln 54 – 65).
The difference between Lewis and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Lewis teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
Regarding clams 13 and 14 further limit the ratio of additive to Lewis acid formed in the slurry, the Examiner turns to the teaching of Lewis. According to the teaching of Lewis the additives are for inhibiting or controlling undesirable reactions caused by the presence of Lewis acids, such as AlCl3, TiCl4 and FeCl3 and of free copper in cyclone fines, ultrafines and spent mass. (col. 10, ln 55 – 65). An additive in use by Lewis to solve this problem is hexamethyldisiloxane. There is teaching that the effective molar ratio usage of hexamethyldisiloxane to aluminum (the metal part of the problem Lewis acid AlCl3), is I the broad range of 0.5 to 10, and preferably 1 to 5. These ranges ither lie within or overlap with the claimed molar ratio of additive set out in claims 13 and 14. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)).
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. GB 618,608 (British Thomson-Houston Company Limited, 1949) discloses improvements in and relating to the preparation of alkenyl-substituted chlorosilanes. GB 1,137,290 (Dow Corning Corporation, 1968) discloses the preparation of organosilicon chlorides. Rochow (Journal of the American Chemical Society, 1945) discloses the process for the direct synthesis of organosilicon compounds.
Allowable Subject Matter
Claims 3 – 5, 11, 15 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art of record teaches or suggest the process wherein the additive used in the slurry portion of the reaction process are sulfur containing additives selected from the group consisting of polymerization inhibiting thiols and mercaptans, thioethers, thioesters, disulfides, thioketones, thioamides, thioimidazoles and mixtures thereof.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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