DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claim 5, in the reply filed on 7/15/26 is acknowledged. The traversal is on the ground(s) that the claims possess unity of invention because the Yamaoka reference does not disclose the PCS specified in claim 5. This is not found persuasive because the claims are believed to lack unity of invention in view of the prior art rejection below.
The requirement is still deemed proper and is therefore made FINAL.
As a result of this election the application has been transferred and is currently being examined by Margaret Moore.
Claim Rejections - 35 USC § 112
Claim 5 is 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.
The conflicting numbers in Mw, Mn and Mw/Mn ratio render this claim indefinite. For instance, given the Mw and Mw/Mn requirements, the Mn can never be as low as 1,500. Note that 10,000/1,500 is 6.67 and 16,000/1,500 is 10.6 such that at this lower limit one can never achieve Mw/Mn within the claimed ratio. This raises the question as to which limitation, if any, is controlling and to the breadth of the claim.
Claim Interpretation
For claim interpretation purposes, the Examiner notes the following.
For the values in claim 5 that are referenced above in the § 112 rejection, the Examiner is giving weight to the Mw/Mn ratio as required to be between 2.0 and 4.5. Shen teaches Mw values as claimed and Mn values that render obvious the lower limit of 1,500 but this results in an Mw/Mn ratio outside that claimed. As of now the Examiner has opted to interpret the claim as requiring an Mw/Mn ratio between 2.0 and 4.5, but this interpretation is not clear from the claimed language. Applicants are invited to look at paragraph 157 and 148 of Shen 2007/0167599 and consider such teachings when amending the claim.
For the product by process limitation “is a reaction product from a composition comprising a cyclic silane” note that this does not indicate what type of silane, what type of reaction product or what reaction occurs. This could be a ring opened cyclic silane, a silane having anywhere from 1 and above Si atoms in the ring, such atoms can be directly attached via Si-Si linkages, Si-C linkages of a combination, a reaction product with the ring intact or a reaction product in which all the Si bonds are cleaved and the resulting product has all of the Si atoms bonded to C. These are just some interpreta-tions that can be given to this language. Thus while not indefinite this language does not appear to place any clear structural limitation on the final product.
Note, for instance, that in the process 6 for making the product in claim 5, there is no mention of a cyclic silane.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Komuro et al. 7,652,118
Komuro et al. teach polycarbosilanes. See the formulas shown in column 3, line
53 to column 4, line 50. Of particular importance, note that the Mw can be from 2,000 to 10,000 which meets the claimed lower Mw limit of 10,000. In addition the Mw/Mn ratio can be from 1.5 to 5, which embraces the entirety of the claimed range of 2 to 4.5
These ranges correspond to an Mn range of from 1,333 - 6,666 which completely embraces the claimed range. If one having ordinary skill in the art were to desire an Mw/Mn value of 3, 4 or 5, values that are clearly inside the range in column 4, line 48 of Komuro et al., this would result in an Mn range of from 3,333 to 2,000.
As can be seen the disclosed Mw range combined with the Mw/Mn range results in ranges for the Mn that are well within the breadth of the claimed range. As such one having ordinary skill in the art would have been motivated to work within the breadth of the teachings of Komuro et al. to arrive at the claimed polycarbosilane. Note that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In this manner claim 5 is rendered obvious.
Regarding the “reaction product from a composition comprising a cyclic silane” language, note that supra regarding Examiner interpretation. For instance, the repeating Si atom or the reactant (1) on the bottom of column 4 could be the reaction product of a cyclic silane compound in which the Si atoms have been cleaved.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process
When the PTO shows a sound basis for believing that applicants’ product and the prior art are the same, applicants have the burden of showing that they are not. Note that the Patent Office does not have the ability to recreate compositions and determine the properties associated therewith.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
