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 .
It is noted that the examiner assigned to the application has changed.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 11-14 in the reply filed on July 14, 2026 is acknowledged. Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 11 is objected to because of the following informalities:
Claim 11 contains the limitation “alkenyl groups in C2-C12.” For the utmost clarity that the alkenyl group is a part of the C2-C12 group, the examiner suggests replacing this limitation with “C2-C12 alkenyl groups.”
Appropriate correction is required.
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 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Oxman (US 5,145,886, Cite No. 1 on 10/24/2024 IDS).
Regarding claim 11, Oxman teaches a composition capable of undergoing hydrosilylation comprising compounds of formulae (1) and (2) below:
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and a platinum (II) β-diketonate complex catalyst (col. 2, line 67 through col. 3, line 15). Oxman exemplifies x is 35 and y is 130 (col. 10, lines 25-45). Oxman’s composition is capable of curing to high molecular weight compounds in a process that comprises exposure to ultraviolet or visible radiation (col. 1, lines 60-68). As the platinum (II) β-diketonate complex catalyst, Oxman teaches a complex of the formula shown below (col. 3, lines 55-67):
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where R1 and R2 independently represent hydrogen, an alkyl group, or an aryl group and R3, R4, R5, and R6 independently represent an alkyl group, preferably having 1-10 carbon atoms, an aryl group, or an alkoxy group (col. 4, lines 1-9). Specific examples suggested by Oxman include Pt(II) bis(2,4-pentanedionate), Pt(II) bis(2,4-hexanedionate), and Pt(II) bis(2,4-heptanedionate) (col. 2, lines 54-60).
Oxman’s composition is a silicone composition cross-linkable by irradiation (ultraviolet or visible radiation). Oxman’s compound of formula (2) reads on (a) an organopolysiloxane having, per molecule, two alkenyl groups in C2 bound to silicon. Oxman’s compound of formula (1) where x is 35 reads on (b) an organopolysiloxane having, per molecule, 35 SiH units. Oxman’s platinum (II) β-diketonate complex catalyst is a catalytically effective quantity of a hydrosilylation catalyst.
Oxman lacks sufficient specificity for anticipation because Oxman does not specify Pt(octane-2,4-dione)2 as the hydrosilylation catalyst.
However, Oxman teaches catalysts of the formula
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where R1 and R2 can be hydrogen and R3, R4, R5, and R6 independently represent alkyl groups having 1-10 carbon atoms. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any combination or R1, R2, R3, R4, R5, and R6 taught by Oxman, including a compound where R1 and R2 are hydrogen, R5 and R4 are methyl and R3 and R6 are butyl groups. This combination of R1, R2, R3, R4, R5, and R6 reads on Pt(octane-2,4-dione)2. This particular combination of substituents would have been particularly obvious given Oxman’s disclosure of Pt(II) bis(2,4-pentanedionate), Pt(II) bis(2,4-hexanedionate), and Pt(II) bis(2,4-heptanedionate). Given these three catalysts, it would have been obvious to consider Pt(II) bis(2,4-octanedionate) because octane follows pentane, hexane, and heptane in a series of increasing alkyl chain lengths that fall within the alkyl chain lengths taught by Oxman.
Regarding claim 13, Oxman teaches the silicone composition according to claim 11. Oxman further teaches that the composition undergoes hydrosilylation in the wavelength range of 200-800 nm (col. 2, lines 64-67).
Furthermore, Oxman teaches a substantially similar composition prepared in a substantially similar manner as in the instant application. Like instant example 2, Oxman teaches a composition comprising a poly(dimethylsiloxane) with terminal dimethyl(vinyl)silyls and a poly(methyl hydrogen siloxane) with terminal trimethylsilyls (see chemical structures in claim 11 discussion above; [0105] of the instant specification). Oxman further teaches Pt(octane-2,4-dione)2 as a catalyst (see claim 11 discussion above; C1 in [0105] of the instant specification). In both instant example 2 and Oxman, these components are stirred together (Oxman, col. 8, lines 8-10; [0113] of the instant application). An irradiation wavelength of 365 nm is used to crosslink the composition in the instant examples ([0114-0116] of the instant specification). Because the prior art and instant compositions are substantially similar, it would be reasonable to expect the properties of the prior art composition to be similar, including an ability to undergo hydrosilylation at 365 nm.
Given Oxman’s teaching of hydrosilylation in the range of 200-800 nm and the similarity between Oxman’s composition and the instant composition, there is reasonable basis to conclude that the prior art composition is capable of undergoing cross-linking by exposure to radiation with a wavelength within the claimed range.
Regarding claim 14, Oxman teaches the silicone composition according to claim 11. Oxman further teaches that the catalyst is used in an amount of about 25-500 parts by weight of a platinum complex catalyst per 1,000,000 parts by weight of the total composition (col. 8, lines 6-8). Pt(octane-2,4-dione)2 has a molecular weight of about 477 and platinum has a molecular weight of about 195. Oxman therefore teaches a catalyst quantity calculated by weight of metal platinum of about 10-204 ppm based on the total weight of the composition (25*(195/477)=10.2 and 500*(195/477)=204.4).
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Oxman (US 5,145,886, Cite No. 1 on 10/24/2024 IDS) as applied to claim 11 above, and further in view of Guo (Highly active visible-light photocatalysts for curing a ceramic precursor, Chem. Mater., 1998, American Chemical Society, Vol. 10, No. 2, pg. 531-536; Cite No. 2 on 10/24/2024 IDS).
Oxman teaches the silicone composition according to claim 11.
Oxman is silent as to the presence of diastereomers in the catalyst.
However, Guo teaches a method of preparing platinum complexes that produces a mixture of cis and trans isomers. Like Oxman, Guo teaches platinum (II) β-diketonate complex hydrosilylation catalysts (Guo, pg. 531, last paragraph). Guo teaches a two-step method of preparing the catalysts (Guo, pg. 532-533, Synthesis of Platinum Complexes section). Guo’s specific catalysts include those with similar (CH3) and larger (C6H5) groups to the methyl and butyl groups present in Pt(octane-2,4-dione)2 (Guo, pg. 533, col. 2, table in Spectral Data section). Guo’s product is a mixture of cis and trans isomers that are not separated (Guo, pg. 533, col. 2, Spectral Data section). Given Guo’s disclosure one of ordinary skill would have recognized that a desired platinum (II) β-diketonate catalyst could be prepared by the method of Guo by selecting appropriate “L” compounds.
Based on Oxman’s disclosure, one of ordinary skill would have recognized Pt(octane-2,4-dione)2 as a suitable catalyst but would not have known how to prepare the catalyst. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared the platinum catalyst of Oxman using the method of Guo in order to use an established method of preparing platinum (II) β-diketonate complex hydrosilylation catalysts. Utilizing this method would necessarily lead to the Pt(octane-2,4-dione)2 being a mixture of cis and trans diastereomers. It would have been obvious not to separate the cis and trans diastereomers because Guo demonstrates that this step is not necessary and Oxman does not place importance on diastereomer selectivity.
Conclusion
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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