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 1-3 and 5-9 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 1 recites that components (A) and (B) “comprises only” certain compounds. See MPEP 2111.03. “Comprising” (and consequently “comprises”) are open-ended terms which do not exclude additional unrecited elements. “comprises only” appears to be an attempt to exclude additional unrecited elements. This is properly done by using “consisting of”, as discussed in MPEP 2111.03(II). The examiner recommends that applicant amend “comprises only” to “consisting of” if they are intending to exclude additional compounds from components (A) and (B) of the claimed composition.
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 1-2, 5-6, and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mochizuki (WO 2020/111141 A1).
An English-language equivalent of Mochizuki, U.S. PG Pub. No. 2021/0277241, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language equivalent.
In paragraph 2 Mochizuki discloses a curable polyorganosiloxane composition and cured product thereof. In paragraphs 81-83 Mochizuki discloses that the composition comprises a catalyst which can be a UV-activating platinum catalyst, meeting the limitations of component (C) of claim 1 and indicating that the composition is UV-curable, as recited in claim 1. In paragraphs 9-12 Mochizuki discloses that the composition further comprises an alkenyl group-containing polyorganosiloxane having one or more alkenyl groups bonded to silicon atoms in a molecule, and a polyorganohydrogensiloxane having two or more hydrogen atoms bonded to silicon atoms in a molecule. In paragraphs 24 and 26-27 Mochizuki discloses that the polyorganosiloxane comprises a polyorganosiloxane having an alkenyl group at both ends of the molecular chain, as recited for component (A) of claim 1. In paragraph 109 Mochizuki discloses that this can have a vinyl group amount of 0.060 mmol/g, within the range recited for the alkenyl group content of component (A) of claims 1-2. In paragraphs 68-75 Mochizuki discloses that the polyorganohydrogensiloxane comprises a polyorganohydrogensiloxane having three or more hydrogen atoms bonded to silicon atoms and which can have both SiO4/2 units (“Q units”) and [(R52HSiO1/2] units, where the R5 group can be an alkyl group having 1 to 6 carbon atoms, corresponding to the Rc1 group of claim 1. While Mochizuki discloses that the composition also comprises additional polyorganosiloxanes and polyorganohydrogensiloxanes, these do not violate the “comprises only” language of claim 1 even if it were interpreted as “consists of”, since the broader claim uses open-ended “comprising” language and is therefore open to components other than the recited components (A), (B), and (C). Claims 1-2 are therefore anticipated by Mochizuki.
In paragraph 76 Mochizuki discloses that the polyorganohydrogensiloxane can have 8 (CH3)2HSiO1/2 units and 4 SiO4/2 units, or 10 (CH3)2HSiO1/2 units and 5 SiO4/2 units, within the range recited in claim 5 and meeting the claim for the case where Rc1 is a methyl group.
In paragraph 82 Mochizuki discloses that the platinum catalyst can comprise a cyclopentadienyl ligand, meeting the limitations of the cyclic diene of in claim 6.
In paragraphs 2 and 93 Mochizuki discloses a cured product prepared by curing the polyorganosiloxane composition and having various favorable properties. While Mochizuki does not specifically disclose that the cured product is useful as a sealant, since the composition of Mochizuki meets the compositional limitations of the claims, it will be capable of performing the intended uses recited in claims 8-9. It is noted that Mochizuki does disclose broadly in paragraph 3 that cured polyorganosiloxane compositions are widely known as a “covering material” in electronic and optical fields.
In light of the above, claims 1-2, 5-6, and 8-9 are anticipated by Mochizuki.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki.
The discussion of Mochizuki in paragraph 6 above is incorporated here by reference. Mochizuki discloses a composition meeting the limitations of claim 1, but does not disclose a composition split into a first agent comprising the polyorganosiloxane (A) and platinum catalyst (C) and a second agent comprising the polyorganohydrogensiloxane (B).
Case law holds that the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). It therefore would have been obvious to one of ordinary skill in the art to form the composition of Mochizuki by first combining the polyorganosiloxane and the platinum catalyst, meeting the limitations of claim 7. Claim 7 is therefore rendered obvious by Mochizuki.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki in view of Mochizuki ‘614 (U.S. PG Pub. No. 2017/0283614).
The discussions of Mochizuki in paragraphs 6 and 10 above are incorporated here by reference. Mochizuki discloses a composition meeting the limitations of claim 1 and comprising a polyorganohydrogensiloxane containing at least three hydrogen atoms bonded to silicon atoms in the molecule, but Mochizuki does not specifically disclose the content of hydrogen atoms bonded to silicon atoms in terms of mmol/g.
In paragraph 22 Mochizuki ‘614 discloses a polyorganosiloxane composition for molding, comprising a polyorganosiloxane having two or more alkenyl groups, and a polyorganohydrogensiloxane having a content of silicon-bonded hydrogen atoms of 5.0 to 11.0 mmol/g, overlapping the range recited in claim 3. See MPEP 2144.05(I): “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 would have been obvious to one of ordinary skill in the art to prepare the polyorganohydrogensiloxane of Mochizuki do have the silicon-bonded hydrogen atom content taught by Mochizuki ‘614, since Mochizuki ‘614 teaches that it is a suitable silicon-bonded hydrogen atom content for use in a similar curable polyorganosiloxane composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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, PREM SINGH can be reached at 571-272-6381. 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.
/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
Prosecution Insights