DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/17/2025 has been entered.
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 .
Election/Restrictions
Claims 16-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/26/2024.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed.
Drawings
The drawings filed 4/30/2025 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-5 and 9-14 (all pending claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As set forth in MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” They are set forth and analyzed herein:
A) The breadth of the claims-the breadth of the claim is considered to be broad. Said claim covers any release film comprising a first layer comprising “as a component of largest mass ratio… a cured fluorine atom-free silicone having a diphenyl group” which has “an elastic modulus, as measured using a nanoindenter, of 0.16 Gpa or more.” Thus, the claim covers compositions in any state of cure (partial, fully, etc). Furthermore, the claim covers compositions wherein the first layer contains any additional component or combination of components. The claims does not even require that the “fluorine atom-free curable silicone having a diphenyl” is the majority component of the silicone composition; only a component group of the component of largest mass ratio.
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(C) The state of the prior art- the state of the prior art is considered low. Specifically, a search of the invention did not identify any reference which explicitly meets the requirements of the first layer of the claimed release film. Furthermore, a review of Global Dossier suggests that international searches have similarly failed to identify prior art meeting said limitations.
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(D) The level of one of ordinary skill-Given the lack of prior art related to release sheets comprising first layers meeting the claimed elastic modulus limitation, the level of one of ordinary skill in the art is considered low. Said conclusion is further supported by the lack of prior art suggesting that the elastic modulus of a first layer of a release film is a result effective variable and the lack of prior art suggesting how to optimize the elastic modulus of a silicone composition within the claimed range.
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(E) The level of predictability in the art- The level of predictability in the art is considered low given (a) the lack of guidance provided by the prior art with regards to how to optimize the elastic modulus of a silicone composition within the claimed range; (b) the unpredictability of chemical compositions, especially given the number of possible variables which could be altered (i.e. see the discussion of the scope of the claim above. A skilled artisan could vary the content of the silicone composition, the content of the fluorine atom-free curable silicone within the silicone composition, has unlimited choice of components or combinations of components which may also be present in the first layer, the extent of cure of the composition, etc.)
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(F) The amount of direction provided by the inventor-the amount of direction provided by the inventor is considered low. Specifically, applicant fails to provide any guidance or identify any result effective variable that could be controlled/optimized in order to obtain the claimed first layer meeting the claimed elastic modulus limitation.
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(G) The existence of working examples-the specification seems to contain four inventive examples and seven comparative examples. Of the four inventive examples, three utilize the same first layer composition (A2-defined in table 1 of the specification). And all four examples utilize a first layer consisting of 100pbw of a non-fluorinated silicone release agent, a platinum catalyst, and 4% by mass solid content concentration. Both first layers are identified as products available from Shin-Etsu Chemical Company, but further details on said compositions (or datasheets for the products) were not made available. Furthermore, a search for said products did not provide sufficient detail on the products contents and how they differed from one another. Thus, it is not immediately clear from the examples whether said results can be predictably extrapolated to other products.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure-Given the breadth of the claims, the lack of guidance provided by applicant and the prior art, the lack of predictability in the art, and the lack of sufficient working examples in the specification to allow a skilled artisan to predictably extrapolate said results to other compositions, the quantity of experimentation needed to make or use the invention based on the content of the disclosure is considered extremely high.
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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.
Claims 1, 4-5 and 9-14 (all pending claims) 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regards to claim 1, it is unclear what is meant by “a solid content mass of the cured silicone having a fluorine-substituted group per unit area of the second layer is 90% by mass or less”. Specifically, it is unclear how the term “per unit area” further limits the claim. For examination purposes, the phrase “per unit area” is understood to be a Scribner’s error and is read out of the claim.
Specifically, the claims are directed toa release sheet comprising a first layer having “an elastic modulus, as measured using a nanoindenter, of 0.16 GPa or more.” However, said test is not described in sufficient detail to allow one of ordinary skill in the art to determine the subject matter within the scope of the pending claims. For instance, such test methods are known to be dependent upon the coating thickness and the substrate to which a coating is applied. “Determination of elastic modulus of thin layers using nanoindentation” (Mencik, J. Mater. Res., Vol. 12, No. 9, Sep 1997) teaches the indenter penetrating into a coating material deforms not only the coating bus usually also the substrate. Thus, it isa composite (i.e. film plus substrate) modulus. Furthermore, as noted in “Nanoindentation of polymers: an overview” (Mark R. Vanlandingham; Macromol. Symp. 2001, 167, 15- 43), uncertainty in such test methods are observed based upon calibration of the machine, detection of a true zero in load and displacement, the load and displacement measurements themselves, non-tip artifacts, etc. Said issues led the author to find “poor reproducibility in modulus measurements” in interlaboratory and/or intersystem comparisons. Additional issues with said test and the reproducibility of the results are noted in “Nano-indentation of polymeric surface” (BJ Briscoe, J. Phys. D: Appl. Phys. 31 (1998) 2395-2405). Thus, the test method is not described in sufficient detail to allow one of ordinary skill in the art to duplicate the invention.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
Applicant’s summary of the September 4, 2025 is acknowledged.
With regards to the rejection of Clams 1, 4-7 and 9-14 under 35 U.S.C. 112(a) as failing to comply with the written description requirement, the present amendment of Claim 1 to delete the reference to ISO 17577-1 overcome said previously applied rejection.
With regards to the rejection of Claims 1, 4-7 and 9-14 under 35 U.S.C. 112) as being indefinite, the present amendment of Claim 1 to recite “the first layer comprises as a component of largest mass ratio among components constituting the first layer a cured fluorine atom-free silicone having a diphenyl group.” So as to definitively recited that “a cured silicone having a diphenyl group” is the main component of the first laver is sufficient to overcome the previously applied rejection.
With regards to the rejection of all pending claims) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement, applicant argues [0106] and [0107] of the present specification describes that “As specific means of satisfying the above conditions, it is preferable to introduce a diphenyl group in the first layer. Specifically, it is preferable to form the first layer from a silicone composition containing a curable silicone having a diphenyl group, as a main component.” and “Thus, by forming the first layer so as to have a diphenyl structure, the wettability of the first laver surface can be modified, and the wettability in coating the second layer can be improved.” Applicant argues the higher the content of the diphenyl structure in the silicone composition of the first layer, the higher the elastic modulus of the first layer and the better the wettability. Said argument is noted but is not persuasive as the specification does not implicitly or explicitly tech the relationship argued by applicant; that the higher the content of diphenyl structure in the silicone composition of the first layer, the higher the elastic modulus of the first layer and the better the wettability. To the contrary, the Gao reference cited by applicant teaches “The impact of side group type and content on glass transition and interfacial interactions of polysiloxane is unclear” (page 3, top of left column). Furthermore, said argument does not agree in scope with the pending claims as the first layer is not limited to a composition with a specific amount of diphenyl or restricted with regards to other components present. Similarly, the Examples and the Comparative Examples in the present specification noted by applicant as evidence that increasing the content of phenyl groups in the first layer improves elastic modulus and wettability are not commensurate in scope with the pending claims for the reasons noted in the enablement rejection above.
Applicant further points additional documents to support their position; specifically, “Preparation of robust diphenyl silicone elastomers with enhanced mechanical properties and thermal-aging resistances by using phosphazene as a catalyst” by Duan et al. (Polymer 272 (2023-emphasis added) 125855), “Mechanical, Dielectric and Hydrophobic Properties of Phenyl Silicone Rubber and Methyl Vinyl Silicone Rubber Blend Composites by Liu et al., GET Nanodielectrics,(2025-emphasis added), “Effect of Side Group Modification on the Glass Transition and Adhesion Properties of Polysiloxane at the Atomic Scale” by Gao et al. (Materials Today Communications, 40, 2024 (emphasis added), 109513) (DS submitted 10/17/2025), and WO2025/23168 A. However, said arguments are not persuasive as said documents fail to establish the level or ordinary skill in the art at the time the invention was filed (see MPEP 2164.05(a)). Specifically, applicant’s applicant was filed 6/4/2021 and claims priority to a Japanese document frilled 12/11/2018. The cited references are were all published years after said dates. The disclosure of said documents does not suggest the level of the prior art at the time of applicant’s filing would have been such that the application as filed was enabling. To the contrary, Gao was pointed to as showing “that molecular dynamics simulations demonstrate that introducing methylphenyl or diphenyl side chains into PDMS (polydimethyl siloxane) increases the Tg. The increase in Tg, the restriction of motion by the side chains, and the reduction in free volume are quantitatively observed.” However, the article also notes “the Tgs of diethyl, phenylmethyl, and diphenyl modified polysiloxane are not clear, so corresponding studies are needed (page 2, left hand column)” and “The impact of side group type and content on glass transition and interfacial interactions of polysiloxane is unclear” (page 3, top of left column). Similarly, Duan was relied upon to teach “the presence of diphenyl groups enhances mechanical properties.” However, Duan’s discussion of the prior art seems to suggest physical properties of such modified siloxanes were inconsistent due to lack of control of the reaction mechanism/chain scission reactions. The phenyl-containing silicone rubber blends of Liu seem to be polymers wherein phenyl is incorporated into the backbone of the polysiloxane and do not seem immediately relevant to the pending claims.
With regards to the relationship between the elastic modulus and wettability, Applicant provides a copy of “Contact angles on a soft solid: from Young's law to Neumann's law.” by Marchand et al. (PRL, 109, 236101, 2012) (EDS submitted 10/17/2025) and “Universal deformation of soft substrates near a contact line and the direct measurement of solid surface stresses” (Style et al. PRL, 110, 066103, 2013} GDS submitted 10/17/2025} describes that experimental observations (using microscopy, etc.) Said teachings are noted but fail to demonstrate the claimed invention is enabled. Specifically, the references do not disclose siloxanes (or diphenyl containing siloxanes) and, thus, fails to demonstrate a skilled artisan would have known how to make the claimed first layer composition meeting the claimed elastic modulus limitation. Said reference also does not identify any result effective variables that the skilled artisan would have known are directly associated with the elastic modulus of such compositions.
Applicant notes that upon “entry of this Amendment, Claims 1, 4-7, 9-14 and 16-26 are pending. Claims 16- 25 are withdrawn.” The examiner respectfully disagrees and notes claims 16-26 (not 16-25) are withdrawn. The examiner further notes claims 25 and 26 do not contain the proper status identifier int the claim set of 4/30/2025. Specifically, both claims are understood to be (original-withdrawn).
With regards to the rejection of Claims 1-15 under 35 U.S.C. 112(a), Applicant argues the rejections are “obviated by the present significant amendments of Claim 1.” Specifically, applicant argues the first layer comprises a cured fluorine atom-free silicone having a diphenyl group as the main component; and a thickness in a range from 0.1 to 2um; thus, “the factors that obtain the elastic modulus of the first layer have been identified.” Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. Specifically, there is no evidence of record suggesting the thickness and the use of “a cured fluorine atom-free silicone having a diphenyl group as the main component” are the factors that obtain the elastic modulus of the first layer. As noted in the enablement rejection above, the specification is silent with regards to the result effective variables that should be controlled in order to obtain the claimed elastic modulus. Applicant argues it is clear from the comparison between the Examples and the Comparative Examples in the present specification, the higher the content of the diphenyl structure in the silicone composition of the first layer, the higher the elastic modulus of the first layer. Said argument is noted but is not persuasive. A review of the examples and comparative examples did not result in such a trend being readily apparent. Applicant is requested to provide further explanation of the examples and how they support the proposed trend. Applicant further notes the disclosure of paragraphs in 106 and 107 of the present specification, which state “As a specific means of satisfy the above conditions, if is preferable to introduce a diphenyl group in the first layer. Specifically, tis preferable to form the first layer from a silicone composition containing a curable silicone having a diphenyl group, as a mam component.” However, it is unclear from said disclosure what variable is a result effective variable. Does the diphenyl group have to be “a main component” of the first layer, of the curable silicone, etc. Must the curable silicone (having a diphenyl group” be a main component of the first layer? Must a silicone composition be “a main component” of the first layer? Etc.
With regards to the rejection of Claims 1-15 under 35 USC. 112(b}, Applicant argues said amendments are obviated by the present amendment of claim 1 reciting “as measured according to ISO 14577-1… “ Specifically, applicant files product literature describing the T1930 Tribo Indenter and a KLA instruments Application Note describing ISO 14577 being followed in the testing procedure as support for amending the claim to include the ISO-14577 standard. Said argument is noted but is not persuasive. While said references acknowledges that ISO-14577 may be utilized, neither reference establishes that it is necessary utilized when measuring indentation on theT1930 Tribo Indenter disclosed in the specification. Specifically, the KLA instruments Application Note states “to test in compliance with this standard, the user simply opens this test method(“ISO 14577 Test Method” …and initiates testing.” Thus, the reference acknowledges a selection must be made to run said test. The Application Note further states “if desired, a user may customize” the test-again, supporting the conclusion the test standard is not implicit to the disclosure of the present application. Similarly, the T1930 Tribo Indenter document states the indenter “conforms to ISIO 14577with temperature and humidity measurement” but also states it has the “widest array of testing capabilities on the market.”
The Office has questioned the relation of this testing to the nature and relationship of the substrate employed when the test is conducted. Applicant submits a Declaration by Yosuke OSEKI describing the application of the nano-indenter testing method in the present disclosure to only 50nm which is only a small fraction of 1/760 of the thickness and therefore, not affected by the substrate, Therefore, the “measurement conditions are completely unaffected by the substrate film.” Said argument is noted but moot in view of the new grounds of rejection. Specifically, the claim currently states the method is conducted according to industrial standard ISO 14577.
For the reasons noted above, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JPH0577364 teaches the intervening layer is a fluoro-silicone release sheet should have an elastic modulus of 1x107 dyne/cm2 (abstract), thus teaching away from the present claim. WO2019117059 teaches a similar three layer laminate as the pending claims, but does not teach the claimed elastic modulus for the first layer.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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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.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787