DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/23/26 has been entered.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 4 to 8, 15, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chon et al. 9,909,007.
Chon et al. teach a silicone composition that contains each of the claimed com-
ponents (A-1), (A-2), (B), (C) and (D). See generally column 2, lines 8 to 35. While the entire teachings in Chon et al. are relevant to this rejection, for explanation purposes of this rejection the Examiner refers to Table 1, Practical Example 5.
This contains 11.49 parts of (A-7) which is defined in column 20, lines 12 to 15 and is a siloxane resin having vinyl groups and an aryl content of 50 mol%. This meets claimed (A-1).
This contains .5 parts of (B-1) which is defined in column 20, lines 28 to 36, and is a linear siloxane resin having 12 repeating units and has 13 mol% aryl groups. This structure, the molecular weight and the amount meet the requirements for claimed (B).
This contains 14.04 parts of (B-2) which is defined in column 20, lines 32 to 37, and is a linear alkenyl polysiloxane having 44.6 mol% aryl groups. This meets claimed (A-2).
Component (C-1) is contained in an amount of 14.2 and has 25 mol% aryl groups. This meets claimed (C).
The catalyst (D-1) is a hydrosilylation catalyst meeting claimed (D).
In this manner each claimed component in the curable silicone composition is found in Practical Example 5 and this claim is anticipated.
For claims 4 to 6, each of these limitations is fully met by the components cited above in Practical Example 5.
For claims 7 to 8, the composition in Chon et al. is used in semiconductor devices. See column 22, lines 54 to 61.
For claims 15, 18 and 19, these limitations are addressed supra, as they corres-pond to previous limitations, but having a different base claim. These limitations are also found in Practical Example 5.
Claims 2, 10, 13, 16 ,and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chon et al. 9,909,007.
For claim 2, note that the total of the components corresponding to (A-1) and
(A-2) in the above referenced example is about 25.5% and the claimed lower limit is 30%.
As can be seen from the teachings in column 2, lines 7 to 45, the amount of the corresponding (A) component embraces a wide range that overlaps with the claimed range. From this one having ordinary skill in the art would have been motivated to use an amount of (A-7) or (B-2) in Table 1 in greater amounts such that an amount within the claimed range would have been obvious.
On the other hand, note that Practical Example 5 contains a component (A-2) (which is embraced by the claimed composition by virtue of the word “comprising”). This component is used as a form of the component (A) in Chon et al., as is component (A-7). From this it follows that (A-7) could be present in the same amount as (A-2) with the expectation of obtaining a useful composition with predictable results.
Furthermore, see Practical Example 8 in Table 2 which contains (A-9). As can be seen in column 20, lines 22 to 26, this silicone resin meets the requirement of claim-ed component (A-1). While this example does not contain the linear polysiloxane (B) it shows that Chon et al. include compositions having the amounts of siloxanes within this claimed range.
In view of each above point, the skilled artisan would have found a composition as claimed having a total content of claimed components (A-1) and (A-2) to have been obvious. Please 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.
For claims 10, 13 and 16, note that these limitation were addressed above, as they are each specifically shown in Practical Example 5. Since it would have been obvious to adapt Practical Example 5 to include a corresponding amount of components meeting (A-1) and (A-2), the totality of these claims are rendered obvious.
For claim 20, similar to that for claim 2, the teachings of Chon et al. suggest a composition in which the resinous siloxane is present in an amount of 55 wt% or more. For instance, Practical Example 8 includes such an amount of a resinous component. The total of all resinous components in Practical Example 5 meet this requirement. See also the amounts of (A) as found in column 2, lines 10 to 22, which include amounts of within the claimed range. This, combined with the resinous siloxanes shown in columns 19 and 20 which meet claimed (A-1), renders obvious this claim limitation.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Mgm
3/27/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
Prosecution Insights