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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/21/2025 has been entered.
Claim Rejections - 35 USC § 103
Claim(s) 1-3 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iwai et al. (US 2015/0184032) as evidenced by BYK Technical Datasheets for silicone-containing surface additives BYK-330 and BYK-307 (2012).
Regarding claim 1:
Iwai discloses an adhesive (fixing member) formed from a composition comprising (A) a polymer compound (resin) and (B) a radical polymerizable monomer (curing agent), which crosslinks the (A) polymer compound [abstract; 0002; 0043; 0110]. The composition further comprises (L) a silicone-based surfactant to provide an improved coating property [0304; 0312].
The ratio of (B) radical polymerizable monomer to (A) polymer compound is 90/10 to 10/90 [0227]. This is equivalent to a range of about 11 parts by mass to 900 parts by mass of (B) radical polymerizable monomer relative to 100 parts by mass of (A) polymer compound (11=100*10/90; 900=100*90/10).
The content of (L) surfactant is 0.001-2.0% by weight based on the total solid content of the adhesive [0314]. The content of (A) polymer compound is 5-95% by weight based on the total solid content of the adhesive [0148]. This implicitly provides a broadest content range of the (L) surfactant of 0.001 parts by mass to 40 parts by mass of (L) surfactant relative to 100 parts by mass of (A) polymer compound (0.001=100*0.001/95; 40=100*2/5). At a constant 95% by weight of (A) polymer compound based on the total solid content of the adhesive, this disclosure also implicitly discloses a range of about 0.001 parts by mass to 2.1 parts by mass of (L) surfactant relative to 100 parts by mass of (A) polymer compound (0.001=100*0.001/95; 2.1=100*2/95).
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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the relative amounts of components (B) and (L), including over amounts within the presently claimed ranges, to provide an adhesive in accordance with Iwai’s teaching, and thereby arrive at the claimed invention.
Although Iwai is silent with regard to the coefficient of friction of the surface, the examiner submits that those adhesives taught by Iwai that otherwise meet the claimed composition requirements would necessarily meet the claimed property requirements because they are the same as presently claimed.
Regarding claim 2:
Iwai teaches silicone-based surfactants include commercially available materials, such as those sold under the names BYK-307 and BYK-330 [0312]. These materials are polydimethylsiloxane-based as evidenced by the provided data sheets.
Regarding claim 3:
Iwai teaches the polymer compound (A) comprises a (meth)acrylic acid ester [0080; 0102-0103]. Also see at least structures 31-34 and 36-68 in [0149].
Regarding claim 9:
Although Iwai is silent with regard to the shear stress and surface tackiness of the adhesive, the examiner submits that those adhesives taught by Iwai that otherwise meet the claimed composition requirements would necessarily meet the claimed property requirements because they are the same as presently claimed.
Allowable Subject Matter
Claims 8 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Iwai (US 2015/0184032) discloses an adhesive (fixing member) formed from a composition comprising (A) a polymer compound (resin) and (B) a radical polymerizable monomer (curing agent), which crosslinks the (A) polymer compound as discussed above.
Iwai is silent with regard to the arithmetic mean roughness Ra of a surface of the adhesive. Although Iwai discloses compositions having compositions that are otherwise the same as presently claimed, one of ordinary skill in the art would recognize that the arithmetic mean roughness Ra of a surface of the fixing member (adhesive) on the sub-5 µm scale would depend on other factors in addition to the composition (e.g., the roughness of the substrate used to form the adhesive or the manner in which the film is dried). Therefore, one of ordinary skill in the art would not conclude Iwai’s adhesive necessarily meet the claimed requirements. Nothing of record indicates it would have been obvious to modify the reference to arrive at the claimed subject matter.
Iwai is also silent with regard to the use of a urethane acrylate resin as resin (A). Although the reference discloses urethane acrylates, this disclosure refers to the radical polymerizable monomer (B) (see heading before [0160] and [0178]). Iwai further discloses trimethylolpropane triacrylate as another monomer (B) [0168]. Nothing of record indicates it would have been obvious to select both components as monomers (B) and further use them in the relative amounts required by present claim 1.
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
Applicant argues Iwai is silent with regard to the claimed coefficient of friction and further one would not have arrived at the claimed property from its teachings (p6).
While the examiner agrees Iwai is silent with regard to the claimed coefficient of friction, the reference otherwise discloses compositions that comprise the same components in the same amounts presently claimed. The examiner maintains those compositions would be expected to have the same coefficient of friction as claimed. Therefore, the examiner maintains the rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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