Examiner Zimmer has assumed responsibility for the prosecution of this case from Examiner Empie.
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 .
Election/Restrictions
The restriction requirement has been withdrawn as there was believed to be no burden in search claims 1 to 15, and claim 16, together.
Claim Objections
Claim 1 and the claims dependent therefrom are objected to because R5 is defined as being encompassing of an oxygen atom but R5 is monovalent and only a single bond is drawn between the variable X and R5 thus leaving one valency of the oxygen atom undefined.
It is suggested that Applicant remove mention of “a polydiorganosiloxane” and “a polydimethylsiloxane (PDMS)” insofar as the latter is a species of the former genus and a “polydiorganosiloxane” is, in turn” a species of polyorganosiloxane.
The Examiner presumes that the variable “A” in claim 4 does not actually constitute an ester, amine, glycol, etc. but rather a divalent residue/moiety containing one of these groups, as in an ester-containing moiety, an amine-containing moiety, a glycol-containing moiety, etc. Not only would the silicon-A bond be hydrolysable, which is ostensibly undesirable, were A to represent, for instance, an amine but also the actual connectivity of these groups to the silicon group would not be clear and there are maybe even enablement issues present if “A” were to actually denote these groups specifically. How, for instance, would one prepare a compound containing a group Si-A where A was an imide or sulfide group?
There should be a space between “R7” and “and” four lines from the bottom in claim 7.
Claim 8 is objected to because it curiously recites a Markush group but where three alternatives are mentioned after the conjunction “and”. It is surmised that Applicant may have intended to then indicate that alkoxy groups are a preferred embodiment of R1 and methoxy and ethoxy groups are most preferred but, of course, the disclosure of a broader group followed by a narrow group is grounds for a rejection under 35 U.S.C. 112(b). Accordingly, the Examiner strongly encourages Applicant to simply remove “,alkoxy groups, a methoxy or ethoxy group” from the description of R1.
It is further recommended that the first incidence of the word “or” in the description of R4 (line 5) be deleted.
In claim 9, it is suggested that the first- and second incidences of the word “or” in the description of R4 (line 2) be deleted.
In claim 10, it is recommended that the first incidence of the word “or” in the description of R4 (as in “or an ethyl” in line 2) be deleted.
In claim 11, it is suggested that the first incidence of the word “or” in the description of R6, R7, and R8 (as in “or C1 to C20 alkyl in line 2) be deleted.
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 4 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.
In claim 4, Applicant employs Markush language to define Ra, Rd, Rf, Rh, and Ri but ends the list of suitable alternatives with “or”, as opposed to “and” casting doubt on the intended scope of these aspects. When Rc is defined, several alternatives are listed NOT as a Markush group but, nevertheless, using “and” to relate the last stated permutation to the others thereby creating questions as to whether or not Rc represents all of the groups from “alkyl” through “heteroalicyclic” simultaneously. Of course, the list is followed by the phrase “or a combination thereof” which connotes the opposite.
As for claim 6, it is not evident what would be included within the scope of “a derivative of” the siloxane-alkylene shown.
Allowable Subject Matter
Claims 1-16 are allowable over the prior art.
In general, silane compounds featuring a silicon atom bonded directly to a heterocyclic group are rare. In fact, the Examiner only encountered a couple of examples of a silane compound anticipatory of claimed component (B), and then only in the context of it being a co-monomer in the preparation of a polysiloxane. See Di Giorgio, U.S. Patent # 2,640,818, Frisch et al., U.S. Patent # 2,845,435, Friedrich, AU 2003/231719 at page 14. Most often, heterocyclic groups are bonded to a silicon atom of a silane compound via a linking group and, then, usually via a heteroatom, as opposed to a carbon atom vicinal to a heteroatom.
As an aside, the Examiner is cognizant of the fact that formula (I) is encompassing of silanes where the heteroatom X is not part of a heterocyclic ring but a structure search only yielded examples of a structurally compliant compound where the heteroatom was part of a ring and the Examiner could conceive of no other silane compounds containing a silicon atom bonded to an sp2 hybridized carbon and said carbon being, in turn, attached to a heteroatom, nor a synthetic approach by which a non-cyclic congener might be prepared.
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.
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, Heidi Kelley can be reached at 571-270-1831. 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.
January 19, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765