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 .
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 3 and 6 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 3 provides a definition for the variable R’. There is insufficient antecedent basis for R’ in the claim. This variable is not present in chemical structure (I) nor does it appear in claim 1 from which claim 3 depends.
Claim 6 provides definitions for the variables m and n. There is insufficient antecedent basis for these variables in the claim. The variables are not presented elsewhere in claim 6, nor are they present elsewhere in the chain of dependency for the claim.
Allowable Subject Matter
Claims 1, 2, 4, 5, and 7-10 are allowed. The following is an examiner’s statement of reasons for allowance:
The closest prior art is attributed to Lim et al. (US 2021/0139703). Lim teaches a composition comprising the following components:
(a) a polysiloxane having at least one alkenyl functional group and at least one alkoxy functional group;
(b) a mercapto-functional polysiloxane with at least one mercapto functionality;
(c) a silane crosslinker with at least two alkoxy groups per molecule;
(d) a photoinitiator; and
(e) a combination of zirconium tetraalkoxylate and alkylacetoacetate at a mole ratio in a range of 1:1 to 1:4 (Abstract).
Lim’s (d) and (e) read on the claimed (d) and (e). Embodiments of the silane crosslinker (c) include methyltrimethoxysilane (p. 3, [0033]) which reads on the claimed (f).
The mercapto-functional polysiloxane is comparable to the claimed (c). Lim does not expressly teach including this component in an amount sufficient to provide 0.3 to 0.4 moles of mercapto groups per mole of alkenyl groups in the composition.
Lim’s polysiloxane (a) is similar to the claimed (a) and (b). However, Lim requires the presence of both alkenyl and alkoxy functional groups in the same polymer. The claimed component (a) requires alkoxy functional groups and excludes alkenyl groups. The claimed component (b) requires at least one alkenyl group and excludes alkoxy groups. Although it possesses similar functionality, Lim’s polysiloxane (a) therefore falls outside the scope of both the claimed (a) and (b).
A thorough search of the remaining prior art revealed no other reference or combination of references which would fairly teach, suggest, or otherwise motivate one of ordinary skill in the art to arrive at the claimed composition. Claims 1, 2, 4, 5, and 7-10 are therefore allowed.
Claims 3 and 6 would be similarly allowable if the issues arising under 35 U.S.C. 112(b) are resolved.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S JONES JR whose telephone number is (571)270-7733. The examiner can normally be reached 9 AM - 5 PM Pacific.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Mallari can be reached at (571)272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights