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 .
DETAILED ACTION
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 17-32 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.
The recited “the formula (Ia) in lines 2 and 4-5, “the formula (Ib)” in lines 3 and 5 and “the formula (Ia1)” of claim 1 lacks antecedent bases and they should be “a formula (Ia)”, and “a formula (Ib)’ and “a formula (Ia1)”, respectively.
The recited “the formula (Ic)” in line 2 of claim 19 should be “a formula (Ic)”.
Other claims depending on the indefinite claim 17 would be also indefinite.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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.
Claims 17, 20-25, 27-29 and 31-32 are rejected under 35 U.S.C. 102(a)91) as being anticipated by WO 2020/109347 A1 (June 4, 2020).
WO teaches a generic acrylic polymerized polysiloxane in [0008-0009] and [0026].
WO teaches an acrylic polymerized polysiloxane D obtained from 17 g of methyltrimethoxysilane, 29.7 g of phenyltrimethoxysilane, 30.8 g of tris-(3-trimethoxy-silylpropyl)isocyanurate and 43.4 g of 3-(methacryloyloxy)propyltrimethoxysilane in [0121] which would meet the recited copolymer of a polysiloxane Pab comprising the recited repeating unit of a formula (Ia) and a formula (Ib) of claim 1.
WO teaches a film obtained from a composition comprising an acrylic polymerized polysiloxane, a photoacid generator and solvent with heating in [0131-0132] and [0010-0012].
Thus, the instant claims 17, 20-25, 28-29, 32 lack novelty.
The [0131] further teaches negative photosensitivity meeting claim 27.
Regarding claim 30, WO teaches a film thickness of 0.1 to 100 µm in [0042].
Regarding claim 31, WO teaches a transmittance of 99% or more in [0134].
Claims 17-25 and 27-32 rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/109347 A1 (June 4, 2020).
Regarding a mixture of polysiloxanes of claims 18-19, the recited polysiloxane Pa comprising a repeating unit represented by the formula (Ia) would encompass a polysiloxane copolymer comprising the formula (Ia) and the formula (Ib). Also, the recited polysiloxane Pb comprising a repeating unit represented by the formula (Ib) would encompass a polysiloxane copolymer comprising the formula (Ia) and the formula (Ib).
The transitional term “comprising” is an “open” term, in the sense that it leaves the claim open for the inclusion of unspecified ingredients, “even in major amounts.” Ex parte Davis and Tuukkanen, 80 USPQ 448, 450 (BPAI 1948). MPEP 2111.03.
See also North Am. Vaccine, Inc. v. American Cyanamide Co., 7 F.3d 1571, 1585 (Fed. Cir. 1993). Because the term “comprising” is one of enlargement, it can cause a claim to be broader than the invention. See In re Fenton, 451 F.2d 640, 642 (CCPA 1971).
WO teaches utilization of a mixture of copolymers in [0020].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize a mixture of the polysiloxane copolymers in WO since WO teaches utilization of a mixture of copolymers such as polysiloxane B of [0119] and polysiloxane D of [0121] and since the instantly recited polysiloxane Pa and polysiloxane Pb would encompass copolymers absent showing otherwise.
Regarding claim 30, WO teaches a film thickness of 0.1 to 100 µm in [0042].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to obtain a film having a thickness of 10 µm to 100 µm in WO absent showing otherwise. Further, utilization of other amounts of components of claims 20-23 would have been obvious.
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). In re Woodruff, 919F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
The existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d at 1330 (Fed. Cir. 2003). MPEP 2144.05.
EXAMINER’S COMMENT
Claim 26 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 and if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Although utilization of a crosslinking agent to improve mechanical and physical properties of a cured polymeric composition such as olysiloxane is known as taught by [0143] of US 2019/0077061 A1, there are no specific motivation to choose the instant a compound containing two or more(meth)acryloyloxy groups of the claim 26.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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