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
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 1, 3, 5, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kobe et al., U.S. Patent # 6,780,484 in view of Patel et al., U.S. Patent Application Publication No. 2003/0064188 and the product data sheet for Gelest DMS-S12.
Applicant is referred to Example 1 of Kobe where there is disclosed a composition comprising a silanol-terminated polydimethylsiloxane, the crosslinker bis(triethoxysilyl)octane, and the photo-acid generator bis(dodecylphenyl) iodonium hexafluoroantimonate. Although this example doesn’t contain a component correlated with the claimed additive, the composition of Example 1 is clearly intended as an exemplification of the so-called “triggered condensation cur(able) compositions referenced in column 6. In that description, there is mentioned in addition to the diorganosiloxane base polymer, crosslinker, and photo-acid (catalyst) a reactive diluent (correlated with the claimed silane additive) and a favored permutation of said diluent conforms with the description of the silane additive in claim 3. Insofar as the reactive diluent is characterized as being optional, it would also be obvious that a practitioner of the invention to Kobe et al. would be led to formulate compositions for which the quantity of diluent does not exceed 50 wt.% as claim 5 requires.
The other aspect of the invention not met by Kobe is the weight-average molecular weight limitation and, relatedly, the degree of polymerization indicated by “n” in formula (I) of claim 1. Indeed, the product data sheet for DMS-S12 reflects that the silanol-terminated PDMS has a molecular weight of 400-700 whereas the claims require one of at least 1000 daltons. However, the Examiner submits that one of ordinary skill would appreciate that, in the practice of that invention, they would not be confined to this singular embodiment of a base polymer. Curiously, the broader description is not-at-all forthcoming as to a suitable breadth of the condensation-curable polysiloxane in which case open of ordinary skill would consult other disclosures of similarly-constituted release compositions. In this connection, Patel teaches release layer-forming compositions comprised of the same classes of polymer, crosslinker, and curative that are used in Example 1 of Kobe. See [0074-0086] of Patel where they advocate for the utilization of silanol-terminated PDMS with molecular weight ranges between 200 and 5,000 g/mol. Because Patel teaches compositions for precisely the same application and said compositions so closely resemble that described by Kobe, one of ordinary skill would regard compositions utilizing silanol-terminated PDMS with a molecular weight range of 200 and 5,000 g/mol as obvious alternatives in the practice of the invention to Kobe.
As for claims 15 and 17, the Examiner’s rejection of claim 1 was predicated on the teachings of Example 1 in combination with those of column 6 where the material, a reactive diluent, that is correlated with claimed silane additive component (c) is mentioned. In Example 1, the amount of crosslinker employed is about 15 wt.% percent but, of course, its contribution will be even smaller when a reactive diluent is introduced thereto as is contemplated in column 6. Whereas a disclosure of a full range of suitable amounts of crosslinking component is not made, the Examiner contends that it would be obvious to investigate different amounts, other variables remaining the same, to observe its effects on release force. Also, the record does not establish 13 wt.% of a crosslinking agent as constituting a critical point beyond which a release composition comprising a siloxane (I), crosslinker (II), silane additive, and photoacid generator would exhibit inferior properties.
As for claim 16, the reference teaches no organic solvent in association with the release film-forming composition.
New claim 18 discloses a molecular weight embraced within the teachings of supporting disclosure Patel. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
As for claim 19, whereas it is appreciated that the maximum value of the numerical range defining the molecular weight of the siloxane polymer component as disclosed in Patel is 5,000 Daltons, and, thus, there is no overlap in the claimed- and prior art ranges, the ranges still abut one another and the record does not establish 5,000 Daltons as being especially critical to the operability of the instant invention. “ a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
New claim 20 mandates a maximum weight-average molecular weight of 500,000 with the same minimum as defined in claim 1. Of course, this range overlaps that suggested by the combined teachings of Kobe and Patel between 1,000 and 5,000 Daltons.
Response to Arguments
The Examiner is frankly puzzled as to why Applicant believes the data in Table IV of Patel directs one of ordinary skill away from using siloxane base polymers with a weight-average molecular weight exceeding 1000 Daltons. Even if one were to infer from Table IV that liner polymers with lower release values are favored- and it would appear that the values disclosed are those having either light or medium release based on disclosure Applicant attached to their arguments-
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it remains true that every one of the polymers PDMS summarized in that table has a weight-average molecular weight much larger than the claimed minimum with some of the examples having a Mw two orders of magnitude larger. Moreover, and the Examiner has emphasized this before, Table IV summarizes the structure of a polymer component within a composition completely different than that on which the Examiner relied. That is to say, the Examiner relied on the subject matter disclosed in [0074-0086] of Patel where a release composition comprising a silanol-terminated polydimethylsiloxane with a weight-average molecular weight of 200-5000 is plainly disclosed. (As an aside, it is odd that the authors of that disclosure would exemplify a release composition that is addition-cured and wherein the base polymer mostly was of a molecular weight far exceeding 5,000 Da when the only release composition particularly defined within the broader Specification is a condensation-curable silicone composition that is photo-cured by virtue of the incorporation of a photocatalyst and comprises a polymer with Mw ≤ 5,000.)
As for the matter addressed on page 11 of Applicants’ response that begins “With respect to hydrolysis”, the Examiner had been trying to reason why CE2 had such a comparatively large release force relative to the inventive trials in Table 3 of the instant Specification. The Examiner previously postulated that this was due to the fact that it contained substantially more crosslinker XL-1, much more in fact than was necessary to crosslink all the reactive groups in PMX-0930 as Applicant pointed out in their June 24, 2025 response:
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Because (i) the release force of CE2 was so much higher, and (ii) because the release force of a crosslinked release coating is directly correlated with the extent of crosslinking (which has been documented several times during the prosecution of this case), the Examiner had earlier surmised that the excess crosslinker must be undergoing hydrolysis/condensation with other unreacted crosslinker molecules, and possibly residual reactive groups on the crosslinking molecules that reacted with the polymer as a means of justifying the results.
The Examiner, upon reinspection, has a completely different, and supportable, explanation for why CE2 exhibits a much higher release force. The Examiner failed to previously consider that the silane additive would behave as chain extender since there is only one reactive group at each end of the additive molecules. The chain extender reacts competitively with the reactive groups of PMX-0930 and, hence, the crosslinker would be crosslinking a chain-extended polymer resulting in a product with a higher molecular weight between crosslinks or, put another way, lower crosslink density. Once more, the cured products with lower crosslink density will have a lower release force. This explanation is borne out by the data. From the table above, CE2 contains crosslinker that would furnish 0.0145 total moles of reactive groups. Example 1, it can be easily verified mathematically, has effectively the same total number of moles of reactive groups (0.0147 mol by the Examiner’s calculation) contributed by the crosslinker XL-1 and Additive 1. Although Example 1 has about the same total number of reactive groups, reactive with the base polymer PMX-0930, over half the total, and about 62% to be more precise, are contributed by the silane additive/chain extender/reactive diluent. Therefore, the crosslinker will be crosslinking polymer chains that, themselves, are the chain extended product of PMX-0930 with Additive 1. Accordingly, it is unsurprising that the release force of Example 1 is lower. By extension, Example 2 also employs a combination of crosslinker and silane additive/chain extender but the mol ratio of these (and of their reactive groups) is different with the mol contribution coming from the crosslinker being higher than in Example 1. This, one of ordinary skill would expect would lead to a more highly crosslinked coating layer, and therefore higher release force, which is exactly what is reported in Table 1.
It is reiterated here that Table 3 is not designed to establish that a siloxane base polymer with a molecular weight lower than 1,000 Da is especially critical given that the polymer component used in all Examples was a silanol-terminated polysiloxane with a Mw of 730. This is the only parameter of claim 1 not anticipated by Kobe.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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March 27, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765