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
Claims 1-3 of M. Kawakami et al., US 18/696,729 (Sep. 8, 2022) are pending. Claims 1 and 2 are in condition for allowance. Claim 3 is rejected.
Claim Rejections - 35 USC § 102 (AIA )
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
§ 102(a)(1) Rejection over T. Honma et al., JP 2015160811 (2012) (“Honma”)
Claim 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by T. Honma et al., JP 2015160811 (2012) (“Honma”). An English-language machine translation (Google Translate) is attached.
Honma discloses that specific examples of cyclic silazane compounds represented by the above general formula (2) produced include certain ‘silylmethyl-1-aza-2-silacyclopentanes’ that anticipates claim 3. Honma at pages 8-10, [0016]. For example, Honma discloses the following two compounds: 2,2-diethoxy-1-methyldimethoxysilylmethyl-1-aza-2-silacyclopentane, Honma at page 8, line 24; and 2,2-dimethoxy-1-trimethoxysilylmethyl-1-aza-2-silacyclopentane, Honma at page 9, line 5. These two cited Honma compounds have the following structures.
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Each of these compounds clearly meets the structural limitations of claim 3.
Subject Matter Free of the Art of Record
Claims 1 and 2 are free of the art of record. Claims 1 and 2 are directed to synthesizing a cyclic silazane compound of formula (2), where the claim 1 limitation of “an equivalent or more” of the basic compound:
Claim 1 . . . in the presence of an equivalent or more amount of a basic compound selected from organometallic compounds and organometallic amide compounds . . .
patentably distinguishes over the prior art. The instant specification teaches that in the claimed intramolecular cyclization, an alcohol is released (at least when claim 1 variable m is 1 or more). Specification at page 6, lines 26-27. The specification teaches that if alcohol is not removed, it reacts with product (2) to reform starting material (1). Specification at pages 6-7, [0017]. The specification teaches however, that if claimed starting Compound (1) is subjected to intramolecular cyclization in the presence of a basic compound whereby the alcohol resulting from Compound (1) is converted to a metal alkoxide (R1O-) to inhibit the reverse reaction from Compound (2) to Compound (1), then the equilibrium is biased toward the formation of Compound (2), ensuring that Compound (2) is obtained. Specification at page 7, [0017].
Closest Art of Record: S. Li et al, CN 110862408 (2020) (“Li”)
The closest art of record is S. Li et al, CN 110862408 (2020) (“Li”). Li discloses method for synthesizing N-alkylazinesicyclopentane and an N-alkylazinesicyclopentane using aminotrialkoxysilane as raw material. Li at page 3, [0004]-[0006]. Li teaches that the synthesis involves reacting 100 parts by mass of aminotrialkoxysilane and 1-3 parts by mass of catalyst in a reaction vessel, stirring is started, the reaction system is kept under negative pressure, and the temperature of the reaction vessel is kept at 130-150 °C. Li at page 3, [0008]. Li teaches removing the methanol under high temperature and strong alkaline conditions. Li at page 4, [0020]; Id. at page 4, [0027]-[0029]. Thus, presumably, Li allows the formed methanol to distill out (under the negative pressure) during the reaction.
Li teaches a strong basic catalyst, one of sodium methoxide, potassium methoxide, magnesium methoxide, sodium amino, potassium amino, and magnesium amino. Li at page 3, [0011]-[0012]. In working Example 1, Li teaches the following procedure:
Example 1:
[0038] 100g of n-butylaminopropyltrimethoxysilane and 1g of sodium methoxide were added to a reaction vessel, and stirring was started. The reaction system was kept under negative pressure of -0.095MPa and the temperature of the reaction vessel was kept at 130-150 °C for total reflux reaction;
[0039] After the reaction was carried out for 3-5 hours, when the top temperature tended to stabilize, 85.1g of N-n-butyl-aza-2,2-dimethoxysilane was obtained.
Li at page 5, [0037-[0039].
Li Example 1 is summarized as follows.
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Differences between Li and Claims 1 and 2
Li Example 1 meets every chemical structure limitation of claims 1 and 2 and Li’s sodium methoxide is, per claim 1, “basic compound selected from organometallic compounds and organometallic amide compounds”.
Li differs in that Li does not teach or suggest the claim 1 limitation of “an equivalent or more” of the basic compound.
Claim 1 . . . in the presence of an equivalent or more amount of a basic compound selected from organometallic compounds and organometallic amide compounds . . .
Rather, Li teaches 1-3 parts by mass of a strongly basis catalyst per 100 parts of aminotrialkoxysilane. Li at page 3, [0008].
Claims 1 and 2 Art Not Obvious in view of Li
Claims 1 and 2 are not obvious over Li because one of ordinary skill is not motivated by Li, or Li in view of secondary art, to employ per claim 1 “an equivalent or more amount of a basic compound” with respect to the starting claim 1 compound of formula (1):
Claim 1 . . . in the presence of an equivalent or more amount of a basic compound selected from organometallic compounds and organometallic amide compounds . . .
Absent the teachings of the instant specification, neither Li nor secondary art of record teaches a reason to do so. It is noted that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP § 2144.05(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Here, however, Li teaches the basic compound as a “catalyst”, and neither Li nor secondary art teaches a reason to increase the concentration of Li’s strongly basic catalyst to “an equivalent or more” so as to arrive at the instantly claimed invention.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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