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 .
Claim Rejections - 35 USC § 103
Claim(s) 1-3 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.
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].
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner agrees with Applicant (Remarks, p4-5) that Chang (US 2006/0159915) teaches away from the amended claimed range of 11-20 parts by mass of a curing agent. Chang teaches amounts of its crosslinking agent of 0.01-10 parts by weight and further teaches “if the above amount exceeds 10 parts by weight, a peeling phenomenon may occur under high temperature and high humidity conditions.” [0033-0034]. Similarly, Hishinuma (JP 2020-050777) discloses a content of its crosslinking agent is “preferably from 0.1 to 10 parts by weight, more preferably from 0.5 to 5 parts by weight, particularly preferably from 1 to 3 parts by weight, based on 100 parts by weight of the acrylic polymer” at [0038], which does not suggest the claimed range.
Applicant additionally points to Examples 2-7 in the present specification as evidence for the criticality of the claimed amount of curing agent (p5). In particular, Applicant compares the results for “Difficulty of adhesion of substances to fixing member” of identical, or nearly so, compositions that use differing amounts of the curing agent (p5-6).
The examiner has considered the data, but does not find it persuasive of the criticality of the claimed range because the examples in the specification are not commensurate in scope with the claimed invention. Claim 1 broadly encompasses “A fixing member formed from a cured product of a resin composition comprising a resin, a curing agent capable of curing the resin, and a silicone-based surface modifier”. The examples use specific resins, specific curing agents, and specific silicone-based surface modifiers, which do not exemplify enough species of compositions to permit one of ordinary skill in the art to determine a trend across the large genus of claimed compositions comprising any resin and any curing agent. For instance, while Applicant demonstrates a difference in results for a urethane acrylate-based resin and differing amounts of trimethylolpropane triacrylate (Examples 4-7), there is no indication that such results hold for all possible resins and curing agents as encompassed by claim 1. Furthermore, the Examples demonstrate not all curing agents achieve the noted result, even when used in amounts within the claimed range. Examples 7 and 8 use the same relative amount of curing agent, but Example 7 uses trimethylolpropane triacrylate as a curing agent and Example 8 uses trimethylolpropane ethylene oxide-modified triacrylate. Example 7 has an “A” grade and Example 8 has a “B” grade, thus demonstrating the results depend on the specific materials involved and not only the content of the curing agent. Therefore, the examiner maintains the claims are properly rejected in view of newly cited Iwai.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787