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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1-12, 14-16 are pending. Applicant’s previous election of Group I, claims 1-12, 14-15 still applies and claims 16 remain withdrawn.
Response to Amendment
Applicant’s amendment of 03/31/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation. Claims 3 and 4 recite peel strength change properties that only appear to be enabled in the present specification for certain compositions with certain types of ingredients (e.g., the organic polysiloxane as recited in claims 11-12, and the ionic siloxane compound as recited in claims 7-9), whereas claims 3 and 4 are much broader in terms of the type and amount of ingredients such that there would be an undue amount of experimentation required to arrive at the claimed properties from amongst the broader scope of ingredients as claimed (i.e., with the claimed embodiment including types and amounts of ingredients much broader than the types and amounts of ingredients that are enabled in the present specification, as discussed above). For example, the claims allow for any amount of organic polysiloxane resin having much different type than is enabled in the specification (e.g., having an extreme ratio of M:Q units), and any amount of any type of ionic siloxane compound (e.g., any cation/anion group, or having curing groups). The specification does not appear to offer any guidance on how to achieve the claimed properties with the types and amounts of ingredients in the broader claimed scope.
Upon applying the Wands factors to claim 3-4, undue experimentation would be required:
The breadth of the claims; (as explained above, the claims are broad in terms of the type and amount of ingredients relative to the much narrower guidance provided in the specification)
The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the properties as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various type and amount of ingredients without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain type and amount of ingredients, without any corresponding direction provided for achieving the claimed properties with the broader type and amount of ingredients as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art 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).
Claim(s) 1-4, 6-12, 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo (WO 2015/068859) in view of Mizuno et al. (U.S. 2011/0097579) in view of Michio et al. (WO 2018/096858, see machine translation) in view of Kuroda (U.S. 2018/0118988) with evidence from the X-40-2450 NPL document.
Regarding claims 1-4, 6-12, 14-15, Endo teaches a silicone based composition that forms an adhesive and releasable protective film (adhesive because it may contain adhesion promoters, as in claim 15, [0059], releasable as in the title, and inherently protective to at least some degree), wherein the composition comprises a mixture of polysiloxanes (corresponding to the claimed i and ii ingredients as explained below) at an amount overlapping claim 14, as well as a hydrosilane functional crosslinker and a corresponding catalyst ([0010]). Endo also suggests antistatic agents ([0059]).
Endo teaches that the a1 component overlaps the claimed i component when all terminal R/R11 groups are methyl, non-terminal R11 groups are methyl, and Ra is a C4-C10 alkenyl as claimed ([0027]-[0029]), and teaches that the a2 component overlaps the claimed ii component when the R and the terminal R11 groups are vinyl and/or methyl (or all vinyl), m is zero, and the non-terminal R11 groups are methyl ([0035]).
Endo discloses an ai:aii ratio that is slightly outside the claimed ranges ([0025], i.e., 50:50 a1:a2 of Endo vs 45:55 i:ii of claim 1 or the 40:60 i:ii of claim 14). However, Endo further disclose the B ingredient may be a linear polydimethylsiloxane with ends capped with vinyl groups (thus qualifying as the claimed ii ingredient) and may be included at a 90:10 ratio of A:B (with A being the sum of ai and aii) ([0041]-[0048]). Thus, if there was 45 parts of ai and 45 parts of aii (making a 50:50 ai:aii ratio as discussed above), at a 90:10 ratio of A:B there may be 45 parts of ai (corresponding to i as claimed) and 55 parts (i.e., 45+10) of aii and B (corresponding to aii as claimed). This 45:55 ratio is within the scope of claim 1 and only slightly outside the 40:60 ratio of claim 14. Furthermore, component B is provided with an effective result to the overall composition (ease of application, [0041]) such that the amount of component B relative to component A may be adjusted/optimized (including to higher amounts of B relative to A than 90:10) based on the desired ease of application.
In addition to the above remarks explaining how the i:ii ratio is obvious over Endo in view of overlapping ranges and/or result effective variable optimization of A:B, the claimed i:ii ratio is further obvious based on MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentabilitxy of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Endo does not disclose the claimed organic polysiloxane resin. However, Mizuno is also directed to a siloxane composition that is hydrosilation curable and has adhesive and release properties, and teaches that such a composition may have controllable adhesion and still be able to release from an adherend without leaving residue by including an MQ organosiloxane resin overlapping claims 1, 3, 4, 10, 11, which contributes to adhesiveness (recall that Endo calls for adhesion promoters) ([0014], [0072]-[0076]), such that it would have been obvious to have included such an MQ resin in the composition of Mizuno in order to control the adhesiveness of the composition while still allowing for release properties as sought by Endo.
Although the amount of the MQ resin is not disclosed as in claim 12, the amount of the MQ resin is art-recognized as affecting the adhesiveness of the composition and thus would have been obvious to adjust, including to values within the claimed range, as part of the optimization of the degree of adhesion of the composition as taught by Mizuno. Similarly, the degree of adhesion (e.g., peel strength as in claim 2) is obvious to optimize in modified Endo, including to values within the claimed range, because modified Endo seeks a composition that has adhesion and release properties (i.e., such that the degree of adhesion would be obvious to optimize as part of balancing adhesion vs release). Furthermore, because claim 2 does not specify the type of adherend or the testing parameters, the limitation may be met simply by selecting a suitable adherend that will produce a peel strength within the claimed range.
Modified Endo does not disclose the claimed ionic siloxane compound but does call for antistatic agents. However, Michio is also directed to hydrosilation curable silicone compositions that include an overlapping amount (as in claim 9) of antistatic additives and teaches that silicone based antistatic additives are preferred in terms of dispersibility in a silicone based composition, and suggests additives that are silicone modified ionic liquids, such as X-40-2450 ([0029]). As evidenced by the X-40-2450 NPL document, this additive has a siloxane group bound to an cation of a conjugated anion-cation ionic liquid group, as in claim 6, and is “non-curing” (see the fourth line in the table on the last page, thus does not include alkenyl groups, as in claim 7). Thus, it would have been obvious to have used a non-curing siloxane modified ionic liquid type antistatic agent, like X-40-2450, as taught by Michio, in order to improve dispersibility in siloxane based compositions like in modified Endo. Although the amount of antistatic additive in Michio overlaps claim 9 as indicated above, this would also be obvious to modify to within the claimed range as an art-recognized result effective variable for optimize antistatic properties.
Although the particular anion and cation of the ionic liquid part of the silicone modified ionic liquid are not disclosed in Michio of modified Endo, Kuroda is also directed to hydrosilation curable silicone compositions that include ionic liquids to provide antistatic properties and teaches that imidazolium is a suitable cation and bis(trifluoromethylsulfonyl)imide is a suitable anion (corresponding to the elected species and within claim 8) ([0052]-[0054]). Thus, it would have been obvious to have used these anion and cation species for the siloxane modified ionic liquid in modified Endo, because Kuroda teaches that they are suitable for the desired intended purpose (i.e., to provide antistatic anions and cations in a hydrosilation curable silicone composition).
Regarding claims 3 and 4, modified Endo does not disclose the claimed properties, however, given that modified Endo teaches an overlapping type of composition compared to the composition that achieves these properties in the present application, these overlapping embodiments in modified Endo will inherently have the same properties as the overlapped embodiments of the present application.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo (WO 2015/068859) in view of Mizuno et al. (U.S. 2011/0097579) in view of Michio et al. (WO 2018/096858, see machine translation) in view of Kuroda (U.S. 2018/0118988) with evidence from the X-40-2450 NPL document, as applied to claim 1 above, and further in view of Nagashima (U.S. 2015/0152295).
Regarding claim 5, modified Endo discloses all the above subject matter but does not disclose the claimed surface resistance. However, Nagashima is also directed to antistatic silicone based compositions and teaches that the antistatic properties correspond to surface resistance and a desirable surface resistance overlaps claim 5 to provide antistatic properties ([0032], [0042]) such that it would have been obvious to have used such a surface resistance for the coating of modified Endo because it corresponds to a good antistatic property as taught by Nagashima.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the amendment to claims 3 and 4 makes the claimed scope sufficiently correlated to the enabling disclosure such that there is no longer a scope of enablement problem. However, there are still multiple aspects from the scope of enablement rejection that are not recited in claims 3 and 4 to define a reasonable amount of experimentation for achieving the claimed properties, and thus a scope of enablement problem remains.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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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 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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