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 .
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 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.
Claims 1-19 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-19, and the following species in the reply filed on 08/14/26 is acknowledged. The traversal is on the ground(s) that there is a shared technical feature (not persuasive because the shared technical feature does not make a contribution over the art as explained in the restriction) and there is no burden (not persuasive because burden is not a requirement of a 371 restriction).
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The requirement is still deemed proper and is therefore made FINAL.
Upon examination of the claims limited to the above elected species it was determined that the elected species represented by formula 18 is allowable (in conjunction with the other elected species and the other claim limitations). Examination is therefore extended to the next species (below) which is the same as the above elected species except that the methyl group in the middle silicon atom is changed to a dimethylhydrosilyl group.
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Claim(s) 1-15 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/14/26.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 16-19 is/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 pre-AIA the applicant regards as the invention.
Claim 16 (by depending from claim 1) recites “B is…and that forms a silalkylene structure… or when x is 1, B has two or more diorganohydrosilyl groups” such that it is unclear if the “or when x is 1” condition completely overrides the earlier limitation on B (i.e., makes it so B no longer needs to form a silalkylene structure) or if the “or when x is 1” condition merely requires two or more diorganohydrosilyl groups (instead of the earlier recited one or more diorganohydrosilyl groups) but leaves the other limitations unchanged.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiono (U.S. 2011/0257315) in view of Fu (JP 2021-125516, see machine translation) in view of the Bieglo NPL document (2020).
Regarding claims 16-19, Shiono discloses an electronic component (e.g., cured coating layer for automobile electronics and/or sensors/analytics exposed to gases, i.e., chemical instruments, as in claims 16-19, see [0017], [0073]), that is cured from a composition comprising a perfluoropolyether siloxane compound with two or more alkenyl groups ([0019]-[0022]), a fluorine based hydrosiloxane that renders obvious the species currently under examination (explained below) at an amount to provide a ratio of hydrogen to alkenyl groups overlapping the claimed range ([0037]), a platinum catalyst in an amount overlapping the claimed range ([0039]-[0041]), as well as additives ([0058]). The B ingredient of Shiono renders obvious the species currently under examination because it discloses the following compound (last compound on page 5) which has a Z portion corresponding to the left side of the present species (from the middle silicon atom) as well as a Y portion which corresponds to the two dimethylhydrosilyl groups bound to the middle silicon atom of the present species, and with an X portion that corresponds to the right side of the present species except the fluoroalkylene linking group has C6F12 (instead of C4F8) and there are three dimethylhydrosilyl groups branching off the terminal silicon instead of the two dimethylhydrosilyl groups and one methyl group branching off the terminal silicon in the present species.
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However, the C4F8 group of the present species is prima facie obvious based on the C6F12 group in the above compound as a homologue differing only in the number of repeating units. See MPEP 2144.09 II. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Also, Shiono shows that the above B ingredient may have a terminal silicon atom with a methyl group and two dimethylhydrosilyl groups as a known alternative to the terminal silicon atom with three dimethylhydrosilyl groups of the above depicted compound (based on the second and third compounds of page 5, see below), such that it would have been obvious to have provided the above depicted compound with a terminal silicon atom having a methyl group and two dimethylhydrosilyl groups because Shiono shows it to be one of the acceptable/suitable ways of substituting the terminal silicon atom of the B ingredient.
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Based on the above obvious modifications to the X portion of the compound from Shiono (i.e., changing C6F12 to C4F8 and changing
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), the above cited compound from Shiono corresponds to the species currently under examination.
Regarding the claimed D ingredient, Shiono suggests additives but does not disclose polyimide powder. However, Fu is also directed to silicon and fluorine based coatings/adhesives for electronic devices ([0007]) and discloses that polyimide filler/powder may be included to adjust thermal expansion coefficient and/or thermal conductivity ([0019]). The Bieglo NPL document further renders obvious the inclusion of polyimide filler/powder in the composition of Shiono by disclosing that such powder was a known additive for compounding with thermosetting resins and provides heat resistance, oil, acid and solvent resistance, wear resistance and lower thermal conductivity (see bottom of page 1 and top of page 2). Thus, it would have been obvious to have included polyimide powder in the composition of Shiono based on Fu and/or the Bieglo NPL document in order to adjust thermal expansion coefficient and/or thermal conductivity (from Fu) and/or provide heat resistance, oil, acid and solvent resistance, wear resistance and lower thermal conductivity (from the Bieglo NPL document), with the above benefits further rendering obvious the amount of such an additive to values within the claimed range as part of the routine optimization of the above art-recognized benefits imparted by such polyimide additive.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 16-19 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 10-13 of copending Application No. 18/572,009 (the copending application) in view of Fu (JP 2021-125516, see machine translation) in view of the Bieglo NPL document (2020). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims overlap the scope of the pending claims except for the absence of the presently claimed D ingredient, however, the Fu and Bieglo references render obvious the addition of such an ingredient as explained above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights