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 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 9-12, 17-18, and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiza et al. GB2174400. Hiza teaches epoxy resin compositions having application as potting materials among other things (abstract, page 5, lines 10-12). The so-called epoxy resin, also aptly characterized as an epoxy group-terminated polydiorganosiloxane, is obtained by the sequential reaction of first an organopolysiloxane bearing at least two hydroxyl groups and a diisocyanate followed by the reaction of this resulting intermediate with a compound featuring both an epoxide and a hydroxyl group. Applicants are directed to Example 1 where 535.1 g of a diorganopolysiloxane bearing hydroxyalkyl groups at both ends (hydroxy number = 62)- the language of Example 1 says “organopolysiloxane containing hydroxyl groups but the formula at the top of page 2 makes clear that the hydroxyl groups are, more precisely, carbinol groups not attached directly to the terminal silicon atoms is reacted with isophorone diisocyanate in the presence of DBTDL to yield a product with residual isocyanate. Thereafter, the intermediate obtained from the aforementioned reaction is combined with glycidol and reacted until no isocyanate group remained.
Whereas the number-average molecular weight was not expressly indicated, it can be calculated by the formula:
56,100 x f/hydroxy number
where f is the number of functional groups, two in this instance, in the polymer thus the molecular weight of the organopolysiloxane employed in Example 1 is
56,100 x 2/62 ≈ 1809
thus satisfying claim 10.
From this, the number of moles of the siloxane starting material may be calculated:
535.1/1809 ≈ 0.3.
Isophorone isocyanate weighs 222.28 so the number of moles of it would be:
134.4/222.28 ≈ 0.6
making the ratio of NCO groups to OH groups (NCO to OH ratio), since both the hydroxyl- and isocyanate-containing compounds have two apiece, equal to 0.6/0.3 = 2. Finally, the degree of polymerization of the siloxane compound used to make the epoxy resin is about 1809/74.1, where 74.1 is the molecular weight of a dimethylsiloxane repeat unit, or approximately 24. More accurate it would be between 21 and 22 when the weight contribution of the terminal groups is taken into account, thus anticipating the range for the variable “n”. The variable “m” would inherently be 1 given that a 2:1 ratio of the isocyanate to hydroxy-terminated polysiloxane was used.
The molecular weight of the final, epoxy-modified product is approximately the combined weight of the polysiloxane plus two equivalents of diisophorone diisocyanate plus two equivalents of glycidol or 1809 + (222.28)(2) + (92.09)(2) = 2437.74. Insofar as there are two epoxy groups in the siloxane-based epoxy resin, the epoxy equivalent weight (claims 11 and 12) is 2437.74/2 ≈ 1218.
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 13-16, 19-20, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hiza et al. GB2174400 in view of Inoue et al., U.S. Patent # 4,695,617 and Asai, U.S. Patent # 5,171,482.
Inoue teaches organopolysiloxane compositions having utility as insulating materials around contact points in electronic devices (column 1, lines 7-10). In the background section, they discuss various problems associated with curing packages evolving condensation by-products. Of these, the ones that evolve alcohols are not so prone to corroding the metal surfaces of the electronic device but, nevertheless, they are generally in possession of volatile low molecular weight organosiloxane fractions that, upon being evaporated from the potting composition, decompose on the surfaces of contact points leaving behind SiO2, and insulator, on these surfaces. The invention thus requires that the base organopolysiloxanes used in the composition that represents the invention by Inoue et al. are ones containing less than 0.3% by weight, or 3,000 ppm or less, of “low molecular organopolysiloxanes” having a vapor pressure of 0.01 mmHg or higher at 20° C (paragraph bridging columns 1 and 2).
Inoue is not forthcoming as to what organosilicon compounds are to be removed expressing them only in terms of their vapor pressure at close to ambient temperature. In column 1 of Asai, the same phenomena of siloxane potting materials causing contact faults when significant quantities of oligomers are present is described. The organosiloxanes considered to be problematic according to these passages are those having a degree of polymerization of between 2 and 25, which the skilled artisan would of course recognize are encompassing of D4, D5, and D6 cyclosiloxanes. Indeed, Asai mentions the oligomer by-products originating from the equilibration reactions from which the base polymers are derived and one of ordinary skill is quite familiar with cyclosiloxanes being a by-product of equilibration reactions.
Accordingly, one of ordinary skill practicing the invention of Hiza would absolutely be motivated to limit the amount of D4, D5, and D6 cyclosiloxane compounds present in the hydroxy-functional polydiorganosiloxane from which the epoxy resin is formed so that, when used for potting materials, the electronic devices won’t suffer contact faults due to the evaporation of these and their subsequent degradation on contact surfaces thus causing the electronic device to stop working/work unreliably.
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 9-11 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15 and 16 respectively of copending Application No. 18/875,251 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The instant- and copending claims are related in that the latter recites a composition that includes the polyorganosiloxane of the former with the exact same structural limitations being attached. Framed through the lens of restriction practice, these would be linked as combination/subcombination and one of the criteria of a restriction among these is that the combination does not have to require the particulars of the subcombination. However, to reiterate, the polysiloxane component of the co-pending claims is exactly the same as that defined in instant claim 9, hence they are not patentably distinct. Claims 10, 11, and 13 further limit claim 9 in exactly the same manner as claims 14, 15, and 16 are further limiting of copending claim 13.
Claims 9-11 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, and 14-16 of copending Application No. 19/129,963 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The instant- and copending claims are related in that the latter recites a composition that includes the polyorganosiloxane of the former with the exact same structural limitations being attached except that the variable “m” can be 1 to 10, as opposed to 1-2. Still, 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) Framed through the lens of restriction practice, these would be linked as combination/subcombination and one of the criteria of a restriction among these is that the combination does not have to require the particulars of the subcombination. However, to reiterate, the polysiloxane component of the co-pending claims is essentially the same as that defined in instant claim 9, hence they are not patentably distinct. Claims 10, 11, and 13 further limit claim 9 in exactly the same manner as claims 14, 15, and 16 are further limiting of copending claim 13.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
As an aside, the Examiner is in general agreement with the ISA and JPO as to the unpatentability of the claims of the instant application over the teachings of a different combination of three references but felt that the rejection outlined herein was even stronger, and particularly the rationale behind the 103 rejection.
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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September 27, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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