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 .
Preliminary amendment filed 3/21/2024 is made of record. Claim 4 is amended and claims 1-4 are currently pending in the application.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-3, drawn to hydroxyalkyl group-containing polysiloxane.
Group II, claim(s) 4, drawn to method for preparing hydroxyalkyl group-containing polysiloxane.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of hydroxyalkyl group-containing polysiloxane of formula:
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wherein each R1 is independently a group selected from monovalent hydrocarbon group of 1 to 20 carbon atoms and groups of formula (2) to (5) (wherein Y is a divalent hydrocarbon group of 3 to 20 carbon atoms, Y' is a divalent hydrocarbon group of 2 to 19 carbon atoms, and an asterisk * indicates a point of attachment directly to a silicon atom on a separate hydroxyalkyl group-containing polysiloxane molecule); letting n2 be the number of groups of formula (2), n3 be the number of groups of formula (3), n4 be the number of groups of formula (4) and n5 be the number of groups of formula (5), n2 > 0, n3 ≥ 0, n4 ≥ 0, n5 ≥ 0, n2+n3+n4+n5 ≥ 1 and 0.97 < n2/(n2+n3+n4+n5) ≤ 1.0; k, p, q and r are each numbers such that k > 0, p ≥ 0, q ≥ 0 and r ≥ 0, with the proviso that k+p+q ≥ 2; and the respective siloxane units shown in parentheses above are bonded in any order], this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Yu et al CN 112795307 A). See paragraph 14 below.
During a telephone conversation with Gerald Murphy on 7/27/2026 a provisional election was made with traverse to prosecute the invention of group I, claims 1-3. Affirmation of this election must be made by applicant in replying to this Office action. Claim 4 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
The abstract of the disclosure is objected to because abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. In the present instance, abstract includes more than one paragraph. Correction and/or clarification are required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
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 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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu et al (CN 112795307 A).
It is noted that CN 112795307 A is in Chinese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Yu e al disclose carbon alcohol terminated polydimethylsiloxane (abstract). The carbon alcohol terminated polydimethylsiloxane is represented by formula:
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(paragraph 0014 of original Chinese document). See example 2, wherein R = -(CH2)6CH2OH, n = 15, m = 6) (paragraph 045) which reads on hydroxyalkyl group-containing polysiloxane of formula 1 in present claim 1, wherein in (R13SiO1/2)k, two of the R1 = CH3 (i.e., monovalent hydrocarbon having 1 carbon atom), one of the R1 is -CH2-CH2-Y-OH and Y = divalent hydrocarbon group having 5 carbon atoms, and k > 0; in (R12SiO2/2)p R1 = CH3 and is a monovalent hydrocarbon group having 1 carbon atom, p = 14 (i.e., p > 0), q and r = 0 (as in present claim 1; r = 0 as in present claims 2 and 3) and n2 = 2, n2+n3+n4+n5 > 1, ratio of n2/n2+n3+n4+n5 = 1.0, and k+p+q > 2; and in (R2SiO2/2)p, each R2 is CH3 and is a monovalent hydrocarbon group having 1 carbon atom.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Burns et al (US 5,290,901).
Burns et al disclose carbinol-functional organosiloxane resins (abstract) represented by formula: (SiO2)w(RSiO3/2)x(R2SiO)y(R3SiO1/2)z{O1/2SiR2(CR12)bOH}a wherein each R is independently selected from a group consisting of alkyls comprising 1 to 20 carbon atoms, b = 3, 4 or 5, a > 0 (i.e., reads on n2 > 0 in present claim 1) and represents proportion of silanol substituted with carbinol functional silyl, w + x + y + z = 100, w < 100 and w + x > 0 (col. 2, lines 26-61) which reads on polysiloxane of formula 1 in present claim 1 wherein in organosiloxane, of Burns et al, (SiO2) reads on (SiO4/2) in present claim 1, (RSiO3/2) reads on (R1SiO3/2) in present claim 1, (R2SiO) reads on (R12SiO2/2) in present claim 1, (R3SiO1/2) reads on (R13SiO1/2) in present claim 1, and {O1/2SiR2(CR12)bOH}a reads on R1 being -CH2-CH2-Y-OH wherein Y is a divalent hydrocarbon group of 3 carbon atoms in present claim 1. It is noted that of the formulas 2 to 5, R1 is only of formula 2 in Burns et al, a > 0 (i.e., reads on n2 > 0, n3 ≥ 0, n4 ≥ 0, n5 ≥ 0, n2 + n3 + n4 + n5 = ≥ 1 and n2/( n2 + n3 + n4 + n5) falls within the range of 0.97 and 1.0).
Burns et al fail to disclose hydroxyalkyl group-containing polysiloxane of present claims.
However, given that w + x + y + z = 100, w < 100 and w + x > 0 in the carbinol-functional organosiloxane resins, of Burns et al, and is open to x, y, and z being of any value between 0 to 100, it would have been obvious to one skilled in art prior to the filing of present application to prepare the carbinol-functional organosiloxane resins with z > 0 (i.e., reads on k > 0 as in present claim 1), y ≥ 0 (i.e., reads on p ≥ 0 in present claim 1), x ≥ 0 (i.e., reads on q ≥ 0), and w ≥ 0 (i.e., reads on r ≥ 0 in present claim 1, and r = 0 in present claim 2 and 3) absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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