DETAILED ACTION
Examiner’s Note
Given the new ground(s) of rejection(s) set forth below, the following action is made non-final.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 12/30/2025, with respect to the rejections of claims 1-3, 5-6, 9-14 and 16 over Degroot Jr. under 35 U.S.C. 103; claim 4 over Degroot Jr. in view of Matsushita et al. under 35 U.S.C. 103; and claims 7-8 over Degroot Jr. under 35 U.S.C. 103; as set forth in paragraphs 4-6 of the action mailed 10/16/2025, have been fully considered and are persuasive. The rejections of claims 1-14 and 16 have been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 9, it is unclear if the limitations recited in current claim 9 are further limiting the limitations of component (ii) recited in current claim 1, or if the recitations in said current claim 1 provide for the component (ii) to be open to other elements not specifically recited in said current claim 1.
Claim Rejections - 35 USC § 102
Claim(s) 1-3, 5-6, 11 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kusunoki et al. (US 2017/0029571 A1).
Regarding claims 1-3 and 14, the Examiner notes that a reasonable interpretation of presently recited Formula 2 of component (ii) demonstrates the following requirements:
Only the (R1R2SiO2/2)x moiety is required of the claimed invention give that x = 1, y = 0,
z = 0, and thus x + 0 + 0 = 1;
R3, R4, R5, and R6 are not required;
Only one of R1 and R2 needs to be a vinyl group;
SiO4/2 moieties are excluded from Formula 2.
Kusunoki teaches an addition curable silicone composition (organic polysiloxane composition) to form a film (para 0132) comprising an adhesive aid (silicone-based adhesive protective film) (para 0134), and comprising:
(A) a linear organopolysiloxane having at least two alkenyl groups per molecule;
(B) an organopolysiloxane having at least 4 terminal hydrosilyl groups per molecule (crosslinking agent);
and (C) a hydrosilylation catalyst (current claim 14) (abstract).
General formula (1) (para 0046) teaches the structure of component (B), with an exemplary structure given in paragraph 0054 of the reference, wherein it is noted that the -SiH structure is provided at various pendant placements, including at two of the ends (i.e., at Si-H group at both ends). Kusunoki also teaches that component (A) has the structure given by formula (11) with at least two of R11 being an hexenyl group (component (i), organic polysiloxane having at least one silicon-bonded C8 alkenyl group per molecule, current claim 3) (para 0088-0089).
Kusunoki further teaches that silicone composition comprises (D) an organopolysiloxane having at least two alkenyl groups per molecule, such as two vinyl groups, and given by formula (12) (para 0102-0104). The Examiner notes that formula (12) is given by
(R113SiO1/2)o (R112SiO2/2)p (R11SiO3/2)q (SiO4/2)r
with r = 0 (free from SiO4/2 unit), and, for example, o = 1, p = 1 and q = 1, and thus formula (12) is given by,
(R113SiO1/2)o (R112SiO2/2)p (R11SiO3/2)q
Formula (12) teaches the presently claimed component (ii) (organic polysiloxane of Formula 2), with presently claimed x, y and z interpreted as noted above, wherein the (R112SiO2/2)p moiety of said formula (12) teaching the presently claimed,
(R1R2SiO2/2)x, x + y + z = 1, y and z = 0, R1 and/or R2 a vinyl group
Moreover, the inventive examples of Kusunoki demonstrate that the disclosed invention was intended to demonstrate an elongation of 80 to 180% and a tensile strength of less than 5 MPa (current claim 2) (Table 2, para 0208).
While Formula 2 presently claimed does not specifically include the (R113SiO1/2)o and (R11SiO3/2)q units of Kusunoki, it does not specifically exclude them.
Regarding claim 5, the Examiner notes that a reasonable interpretation of presently recited Formula 1 of component (i) demonstrates the following requirements:
x = 1, y = 0, x + y = 1;
(R1R2SiO2/2)x, where R1 is a C3 to C10 alkenyl group, R2 is a C1 to C10 alkyl group;
(R3R4SiO2/2)y not required, R3 and R4 not required.
Thus, component (i) comprises (R1R2SiO2/2)x. Component (A) is given by formula (11), generically as (R113SiO1/2) (R11R11SiO2/2)n (R113SiO1/2) with at least two R11 alkenyl groups such as the hexenyl groups previously mentioned (R1 is the C6 alkenyl groups), and the remainder of R11 being, inter alia, C1 to C12 alkyl groups (R2 is the C1 to C10 alkyl groups) (para 0088).
Regarding claim 6, Kusunoki teaches that the R11 substituents that are not alkenyl groups are phenyl (silicon-bonded aromatic group) (para 0103).
Regarding claim 11, the Examiner notes that a reasonable interpretation of presently recited Formula 5 demonstrates the following requirements:
x = 0, y = 1, x + y = 1;
(R3R4SiO2/2)y, where R3 and R4 are C1 to C10 are alkyl groups;
(R1R2SiO2/2)x not required, R1 and R2 not required.
R5, R6, R7, R8, R9, and R10 a hydrogen.
Thus, Formula 5 comprises H3Si(R3R4SiO2/2)ySiH3, wherein R3 and R4 are C1 to C10 are alkyl groups.
In addition to component (B), Kusunoki teaches (E) linear organohydrogenpolysiloxane (crosslinking agent) containing at least two SiH groups, and given generically by formula (13) R23Si(R2SiO2/2)SiR23, wherein R2 is a hydrogen and, inter alia, a methyl (C1 alkyl group) (para 0047, 0112-0113). Thus, formula (13) teaches the presently claimed Formula 5.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kusunoki et al. (US 2017/0029571 A1).
Regarding claim 7, Kusunoki teaches the addition curable silicone composition to form a film comprising an adhesive aid as in the rejection of at least current claim 1 set forth above, which is equally applicable to the presently claimed invention.
Regarding claim 8, as noted above, formula (12) is given by
(R113SiO1/2)o (R112SiO2/2)p (R11SiO3/2)q (SiO4/2)r
with r = 0, o = 1, p = 1 and q = 1, and thus formula (12) is given by,
(R113SiO1/2)o (R112SiO2/2)p (R11SiO3/2)q
However, formula (12) also provides for p ˃ 1 (e.g., 2) and thus formula (12) teaches
(R113SiO1/2)o (R1R2SiO2/2)x (R3R4SiO2/2)y (R11SiO3/2)q, 0 ˃ y < 1
with R1 and/or R2 the vinyl group(s) and R3 and R4 a C6 aryl group (given that R11 is a phenyl group).
Claim Rejections - 35 USC § 103
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kusunoki et al. (US 2017/0029571 A1) in view of Matsushita et al. (JP 2015003987 A). The Examiner notes that citations from the ‘987 reference were taken from a machine translation, which was included with a previous action.
Regarding claim 4, Kusunoki teaches that the alkenyl is a hexenyl as noted above, but is silent to the hexenyl being 5-hexenyl.
However, Matsushita teaches that the alkenyl-containing polyorganosiloxane is selected from, inter alia, 5-hexenyl (para 0011).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Case law holds that the mere substitution of an equivalent (something equal in value or
meaning, as taught by analogous prior art) is not an act of invention; where equivalency
is known to the prior art, the substitution of one equivalent for another is not
patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Therefore, it would have been obvious to one skilled in the before the effective filing date of the present invention to select the 5-hexenyl as the alkenyl compound for the polysiloxane(s) of the Kusunoki invention, and thereby arrive at the presently claimed invention from the disclosures of the prior art.
Claim(s) 9-10, 12 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kusunoki et al. (US 2017/0029571 A1).
Regarding claims 9 and 16, Kusunoki teaches the component (A) as noted above, but also teaches variations of the alkenyl group placement as side chains, at the ends of the molecular chain, or both, and that the alkenyl groups are vinyl (two silicon-bonded vinyl groups (SI-Vi) at both ends) (para 0089-0090).
Thus, one skilled in the art would have recognized the inclusion of at least two component (A) silicones (another organic polysiloxane), wherein at least one of them had the Si-bonded vinyl groups at both ends (see R11 end groups of formula (11) of Kusunoki) based on the crosslinking points reactive with the Si-H (hydrosilyl) functionalities of the component (B) (see, for example, para 0097 of the reference).
In addition, the recitation in current claim 1 that component (ii) “being” an organic polysiloxane of Formula (2) suggests that the “being” limitation in and of itself, or in tandem with the remaining limitations of component (ii), is equivalent to the word “comprising,” and is thus open to component (ii) comprising other components, to include other polysiloxanes, distinct from said polysiloxane of Formula (2). This interpretation is supported by the limitations of current claim 9 reciting the component (ii) further comprises the “another organic polysiloxane.” See also the rejection of current claim 9 under 35 U.S.C. 112(d) set forth above.
Thus, similar to prior art application against current claim 9 noted above, wherein the component (A) teaches the presently claimed another organic polysiloxane, and given that component (A) is disclosed as being linear, the other variations of component (A) included in the curable silicone composition of the cited prior art teach the straight chain polysiloxane. While component (i) and (ii) as recited as being separate, since both comprise the presently claimed composition, no distinction is made whether Kusunoki teaches the limitations of current claims 9 and 16 via component (A) or component (D).
Regarding claim 10, Kusunoki teaches that component (D) is present 20 to 200 parts by weight per 100 parts by weight of component (A), which provides an overlap with the proportions presently claimed, towards a balance of hardness and viscosity (para 0111).
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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 12, while Kusunoki does not describe the proportions of component (B) in parts by weight relative to 100 parts by weight of the combination of components (A) and (D), Kusunoki does teach that component (B) is provided towards a hydrosilyl group/alkenyl group ratio ranging from 0.4.1 to 4/1 towards a balance of adequate cure and the prevention of dehydrogenation reactions (para 0097).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the component (B) in the presently claimed parts by weight (and in consideration of the number hydrosilyl groups contained in said component (B)) based the balance of adequate cure and the prevention of dehydrogenation reactions required of the prior art’s intended application as in the present invention.
Allowable Subject Matter
Claim 13 is allowable over the prior art allowed.
The following is a statement of reasons for the indication of allowable subject matter: Kusunoki teaches the all the limitations of at least current 1, but is silent to the curable silicone composition comprises at least one of components (iii) and/or (iv).
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 12/30/2025, with respect to the rejections of claims 1-3, 5-6, 9-14 and 16 over Degroot Jr et al. under 35 U.S.C. 103; and claim 4 over Degroot Jr et al. in view of Matsushita et al. under 35 U.S.C. 103; and claims 17-8 over Degroot Jr et al. under 35 U.S.C. 103 as set forth in paragraphs 4-6 of the action mailed 10/16/2025, 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.
Conclusion
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/26/2026