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 .
Election/Restrictions
Applicant's election with traverse of group I in the reply filed on 03/01/2026 is acknowledged. The traversal is on the ground(s) that Ogawa discloses a siloxane based polymer architecture bearing acryloxy functionality within the polymer and in many embodiments multiple curing mechanisms with crosslinkers/catalysts. This is not found persuasive because “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Ogawa does meet the common feature of claim 1 as set forth below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected groups, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/01/2026.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/691,858 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding claims 1-11, the copending claims disclose the same curable organopolysiloxane composition as presently claimed except that the copending claims further recite organopolysiloxane resin containing a siloxane unit expressed by M unit and Q unit. However, in light of the open language of the present claims, i.e. comprising, it is clear that the present claims are open to the inclusion of additional ingredients including organopolysiloxane resin containing a siloxane unit expressed by M unit and Q unit as disclosed in the copending claims. As set forth in MPEP 2144.05, in the case where the claimed range “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, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 2 and 4 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.
Claim 2 recites “the mass ratio of an organopolysiloxane resin component to the sum of the mass of component a and B2 is in range of 0 to 0.1.” It is not clear If organopolysiloxane resin refers to component A, B2 or an additional resin. For, examination purpose, the examiner interprets the organopolysiloxane resin as a component B2.
Claim 4 recites “may”. The phrase "may" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogawa et al. (WO 2019/084397). It is noted that when utilizing (WO 2019/084397), the disclosures of the reference are based on (US 2020/0347230) which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to (WO 2019/084397)) are found in (US 2020/0347230).
Regarding claims 1, 3 and 5, Ogawa discloses a curable polyorganosiloxane composition (abstract) comprising 50.9 to 62.8 wt% of siloxane based polymer containing a chain organopolysiloxane with two or more alkenyl groups in each molecule, i.e. component A, (0019, 0021, 0026, 0037, table 3), 1 to 50 wt% of acrylate monomer such as 2 ethylhexyl acrylate or isononyl acrylate, i.e. radical reactive component of monofunctional or polyfunctional vinyl monomer B1 (0099, table 3) and 0.1 to 10 wt% of a radical polymerization photoinitiator (0075, 0077, table 3). Given that Ogawa is silent regarding B2, B2 in Ogawa is considered to be 0 and therefore the sum of component A and component B2 is 50.9 to 62.8 wt%.
Regarding claim 2, Ogawa discloses the curable organopolysiloxane composition of claim 1, wherein the sum of component A and component B2 is 50.9 to 62.8 wt% and given that B2 is 0, the mass ratio of B2 to the sum of the mass of components A and B2 is also 0.
Regarding claim 4, Ogawa discloses the curable organopolysiloxane composition of claim 1 wherein given that the component B is B1 in claim 1, B2 is optional and not required by the prior art.
Regarding claim 6, Ogawa discloses the curable organopolysiloxane composition of claim 1 wherein given that Ogawa discloses identical composition as claimed in present claim, it is clear that the curable composition of Ogawa would inherently have the same properties as presently claimed.
Regarding claims 7-8, Ogawa discloses the curable organopolysiloxane composition of claim 1 wherein the composition may appropriately select an organic solvent from 0.001 to 90 wt% and the examples do not disclose solvent, i.e. low solvent type or solvent-free, (0105, table 3).
Regarding claim 9, Ogawa discloses the curable organopolysiloxane composition of claim 1 wherein the viscosity is 5500 to 14500 cP, i.e. 5500 to 14500 mPa, (table 4). Alternatively, given that Ogawa discloses identical composition as claimed in present claim, it is clear that the curable composition of Ogawa would inherently have the same properties as presently claimed.
Regarding claim 10, Ogawa discloses the curable organopolysiloxane composition of claim 1 wherein the initiator is a photoradical polymerization initiator and is photo curable by ultraviolate light, i.e. irradiation with a high energy beam, (0066).
Regarding claim 11, Ogawa discloses the curable organopolysiloxane composition of claim 1 wherein the initiator is ultraviolet heat radical polymerization initiator and is heat curable, i.e. thermal initiator, (0066).
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (WO 2019/084397) in view of Kobayashi et al. (US 5789485).
Regarding claim 4, Ogawa discloses the curable organopolysiloxane composition of claim 1 but fails to disclose B2.
Kobayashi discloses curable silicon composition comprising organopolysiloxane having at least two alkenyl groups per molecule (col. 1, lines 39-44) and 1 to 150 weight parts of component B having the same compound (col. 1, lines 44-45, col. 3, lines 15-20) as claimed in present claim to obtain oil resistant and wear resistant coatings (col. 1, lines 5-8, col. 7, lines 25-50).
It would be obvious to one of ordinary skill in the art to use the specific component B of Kobayashi in the composition of Ogawa to obtain oil resistant and wear resistant coatings.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787