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 A
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 1-18 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.
Applicants characterize the filler component (D) as “functional” without indicating what is the intended meaning of this term. It is appreciated, for instance, that at least several metal(loid) oxide fillers are contemplated and these may be thought of as inherently “functional” insofar as they contain a significant concentration of metal(loid)-OH groups. There are, at the same time, a number of possibilities such as the metal fine powders for which there are no obvious functional (groups). It is also possible that the functionality is provided by a treating agent that is reacted with the filler to impart compatibility/for coupling purposes. It will be necessary that Applicant clarify in what sense that the filler is “functional”.
As an aside, the Specification characterizes the filler as organic in some parts of the disclosure and inorganic elsewhere. While there are mentioned some fillers that would indeed be regarded as organic, acrylonitrile/butadiene rubber particles for instance, the majority of the fillers mentioned are inorganic in nature and, therefore, the Examiner might surmise that Applicant had meant to recite inorganic filler. (To be clear, this doesn’t constitute a basis for rejection. Rather, the Examiner merely means to bring this to Applicants’ attention for further consideration.)
Allowable Subject Matter
Claims 1-18 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.
The prior art contains a number of disclosures teachings organosiloxane compositions in possession of hot melt characteristics that contain an alkenyl-functional silicone resin, organohydrogensiloxane, hydrosilylation catalyst, and a filler. Each of these has, however, one or more shortcomings where meeting each of the limitations of the prior art is concerned. The most common deficiency of the references is a failure to teach a resin containing a corresponding fraction of D (R2SiO2/2) repeat units. In most instances, the references taught resins completely devoid of D units, such as MViTQ resins and, on the occasion that a MDT resin was taught, the D units contained alkenyl substituents, which claim 1 expressly excludes. Others also failed to teach an amount of filler consistent with that claimed. Among the references teachings most similar to that which is claimed, but not representing an obstacle to patentability include U.S. Patent Application Publication Nos. 2022/0032469, 2019/0169398, 2018/0105692, 2022/0169894, 2017/0355804, and 20140175488.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 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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September 4, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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