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 .
Claim Objections
Claims 11, 19, and the claims dependent therefrom are objected to because, whereas component (A) of both the composition and the method is characterized as “organyloxy-terminated”, this description is inapplicable where R2 is a hydrogen atom.
The article “the” in line 1 of claim 19 should be replaced with “a” given that claim 19 is an independent claim.
The word “method” is misspelled in claim 21
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 and 27 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.
Given that claims 17 and 27 employ the language “further comprises”, it might be speculated that Applicant intended that organopolysiloxanes of formula (I) represent an additional required material distinct from the organopolysiloxane of formula (IV) in claims 11 and 19. If true, than Applicant should assign to the former a label other than “(A)”. If, on the other hand, Applicant is disclosing a different formula for component (A), one that is broader in scope than the formula disclosed in claims 11 and 19, than claims 17 and 27 would be deemed not-further limiting of claims 11 and 17 respectively. That these claims can be reasonably construed in a plurality of ways makes them subject to rejection under 35 USC 112(b).
Given the context afforded by the Specification, it would appear that both formulae (I) and (IV) are supposed to be different representations of the same component, with different scope attached to each. The Examiner suggests that Applicant should strongly consider amending claims 11/19 and 17/27 so that it is formula (I) recited in claims 11 and 19 and formula (IV) recited in claims 17 and 27.
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.
Claims 13, 18, 23 are 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. Concerning claims 13 and 23, 1,2-bis(trimethoxysilyl)ethane and 1,2-bis(triethoxysilyl)ethane do not comply with the structural limitations of formula (II) thus making these claims not further limiting of claims 11 and 19 respectively. As for claim 18, to refer to the composition as a molding in no way further limits the makeup of the composition. Moreover, the Examiner will note that molded articles, where obtained from a crosslinkable composition, are generally crosslinked, not crosslinkable, products. It is suggested that Applicant consider re-defining the invention of claim 18 as a molding obtained/derived from the crosslinkable composition of claim 11.
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 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.
Claims 11-15, 17-25, and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schindler et al., WO 2019/114987. To the extent that it evolved from a National stage application of the aforementioned international disclosure, U.S. Patent Application Publication No. 2021/0122920 is believed to have an identical disclosure and is used as a faithful translation of the WIPO document into the English language. All citation of teaching location will be those for the U.S. publication.
Applicant is directed to Example 1 where there is disclosed a composition comprising (i) PDMS terminated with dimethoxyvinyl groups reading on claim 1 where R is methyl, R1 is vinyl, R2 is methyl, “h” is zero, and where the viscosity is consistent with a polydimethylsiloxane having between 30 and 5,000 repeat units, (2), 6 parts of vinyltrimethoxysilane correlated with claimed component (B), and 9 parts of aminoethylaminopropyltrimethoxysilane correlated with claimed component (C) such that the ratio of vinyltrimethoxysilane-to- aminoethylaminopropyltrimethoxysilane is 1:1.5. See the attached evidentiary technical disclosure from Gelest where there is presented a graph of polydimethylsiloxane viscosity against molecular weight. At 100,000 sCt, which is approximately equal to 100,000 mPa.s since the density of PDMS is near 1.0, the graph shows the molecular weight to be somewhat more than 100,000 amu. Given that a repeat unit, Me2SiO2/2, weighs about 74.1, it can be confirmed by calculation that the degree of polymerization represented by “g” in formula (IV) of claim 1 would be between 1500 and 2,000.
As an aside, even if the methyltrimethoxysilane portion of the phosphonic acid mixture were considered to contribute to the total amount of compounds corresponding to (B), the ratio limitation would still be satisfied.
As for claim 17, elastic moldings are among the articles of commerce that may be produced from the prior art composition according to [0180].
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.
Claims 16 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Schindler et al., WO 2019/114987.
Whereas the weight ratio of the materials correlated with claimed components (B) and (C) is 1.5, claims 16 and 26 require that they be added in amounts satisfying a ratio range of between 1:1.6 and 1:2.6. However, the ratio of the amount of vinyltrimethoxysilane and amino-functional alkoxysilane may vary between 2:1 and 1:2 according to [0073] and, thus, there is overlap in the claimed- and prior art ranges defining relative quantities of these. 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).
It will be further noted that there is currently no evidence on the record demonstrating a weight ratio of (B) to (C) of 1.6 to be especially critical wherein values below result in one or more inferior properties. Indeed, the only comparative example is one for which the claimed weight ratio is 1:1.33 with those of the inventive trials being 1:2.1 (examples 1 and 3).
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 17, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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