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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/30/2025 has been entered.
Election/Restrictions
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/24/2024.
Response to Amendment
The amendment filed on 8/14/2025 has been entered. Claims 2-12 and 14-18 are amended. Claim 13 has been canceled. Claim(s) 1-12 and 14-18 is/are pending with claim(s) 11-12 withdrawn from consideration. Claim(s) 1-10 and 14-18 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 8/14/2025, with respect to 112(a) rejection has been fully considered but is not persuasive.
Applicant argued that this is a positive definition and characterization of silicon containing compounds that are in the composition. Support is found, for example, in that all of the silicon containing compounds presented in the examples have at least two silicon atoms.
In response, the disclosure as originally filed does not provide support or discuss either one silicon atom containing compounds or the exclusion thereof. Accordingly, the exclusionary proviso of claim 1 (i.e., excluding one silicon atom compounds) does not find basis in the original disclosure and thus adds new matter. See also MPEP 2173.05(i): “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”
Applicant's argument filed on 8/14/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the MPEP 2112.01 (I) also clearly states that a "prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product." In fact, as noted by the Applicant when presenting claim 18 in the response to non-final rejection dated December 30, 2024, in the present application comparative Examples 13 and 14 (PD-13, PD-14) which are within the scope of Toyoaki have been demonstrated to not achieve such stability as noted by the recited phase separation.
In response, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), MPEP 716.02(d). Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 18 recites “an emulsion polymer”, which covers unlimited polymer. However, the examples only use one PD-0 binder [P21 line 3 spec.]. It is not known if other types of polymers will give the same result. Claim 18 recites formula (I) for linear siloxanes and formula (II) for cyclic siloxanes, which covers a wider variety of siloxanes. However, the examples only use four siloxanes (tetra(dimethylvinylsiloxy)silane, hydroxy-terminated methylvinyl siloxane, cyclic methylvinyl siloxane, and methyl-terminated methylvinyl siloxane) [P 21 Table 1 spec.]. It is not known if other types of siloxanes (e.g., having NH2 groups) will give the same results. Claim 18 recites 0-3% of a photocrosslinker. However, the examples only use 0.2-1% of one photocrosslinker (BzP) [P 21 Table 1 spec.]. It is not known if higher than 1% of BzP will give the same result, or if other types of photocrosslinkers (e.g., benzotriazoles (BT), triazines (TA), and oxanilides (OA)) will give the same result. Since the claims are not reasonably commensurate in scope with the examples for the reasons discussed above, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 adds the limitation “wherein every silicon containing compound in the dispersion comprises at least two silicon atoms”. While the disclosure as originally filed provides support for silicon containing compounds having two or more silicon atoms, the disclosure as originally filed does not provide support or discuss either one silicon atom containing compounds or the exclusion thereof. Accordingly, the exclusionary proviso of claim 1 (i.e., excluding one silicon atom compounds) does not find basis in the original disclosure and thus adds new matter. See also MPEP 2173.05(i): “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”
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 (i.e., changing from AIA to pre-AIA ) 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 2-10 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoaki et al (EP 0757059 B1).
Regarding claims 18, 2-4 and 8, Toyoaki teaches an aqueous, silicone-modified acrylate polymer emulsion for coatings and pressure sensitive adhesives, consisting an acrylate polymer emulsion produced by subjecting a monomer system (A) to emulsion polymerization in an aqueous medium in the presence of an emulsifier (B), wherein said acrylate polymer emulsion is silicone-modified using a silicone structure-containing modifier (C) during or after said emulsion polymerization [0005].
The silicone structure-containing modifier (C) can comprise a hydrolysable group-containing linear siloxane have a structure of formula (IV):
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wherein each R5 independently represents a hydrogen atom, a C1-C16 aliphatic hydrocarbon group, a C5-C10 aryl group, a C5 or C6 cycloalkyl group, a vinyl group, an acrylic C1-C10 alkyl group or a methacrylic C1-C10 alkyl group; each R6 independently represents a C1-C8 alkoxy group, an acetoxy group, a hydroxyl group, an epoxy group or an ethylene oxide group; and m represents an integer of from 1 to 999 [0038].
The silicone structure-containing modifier (C) also comprises a cyclic silane such as tetramethyltetravinylcyclotetrasiloxane [0040].
The examiner submits that the acrylate polymer emulsion reads on the claimed (a) an emulsion polymer.
The silicone structure-containing modifier (C) reads on the claimed siloxane: the formula (IV) meets the claimed formula (I), with R6 being OH group (corresponding to the claimed R1 and R4 in claims 1-2), R5 being vinyl group (corresponding to the claimed R2 and R23 alkenyl groups) and optionally C1-C16 aliphatic hydrocarbon group (corresponding to the claimed optional R3 C1-C6 alkyl group, n can be zero), and m=1 to 999 (overlapping the claimed m=2-40 in claim 1 and m=4-16 in claim 2). The cyclic silane tetramethyltetravinylcyclotetrasiloxane reads on the claimed formula (II) as specified in claim 3.
Toyoaki does not teach any photocrosslinker as specified in claim 4. Therefore, the composition can comprise zero percent photocrosslinker, meeting the claimed from zero to 3% and less than 0.6% of a photocrosslinker in claim 8.
The recited “wherein the dispersion has a no observable phase separation or the layering thickness is less than 20% of the original height, after being stored at 50°C for 28 days”. This limitation is a property of the product. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 5, Toyoaki teaches that the amount of (C) satisfies the following relationship:
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wherein (A) and (B) is, respectively, used in an amount of from 80 to 99.95 % by weight,
and in an amount of from 20 to 0.05 % by weight, based on the total weight of the monomer system (A) and the emulsifier (B) [0009].
The amount of (C) is in the range of about 1 to 200 parts based on 80-99.95 parts of (A) and 20-0.05 parts of (B), or 1-67 wt% based on the dry weight of the emulsion polymer, as calculated by the examiner based on the above relationship. This amount of (C) overlaps the claimed 1.0-5.0% of siloxane based on the dry emulsion polymer in claim 5. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claims 6-7, Toyoaki teaches that the composition further comprises nonionic surfactant in an amount of 2.0% by weight or less based on the weight of the emulsion [0057-0058]. The weight ratio of dispersed phase (solids) to aqueous medium as a dispersion medium is 70/30 or less [0054]. Thus, the nonionic surfactant is 1.4% by weight or less based on the dry weight of the emulsion polymer, as calculated by the examiner, overlapping the claimed 0.1-5%.
Regarding claim 9, Toyoaki’s acrylate polymer meets the claimed acrylic polymer. Toyoaki teaches that styrene can be used as a comonomer [0017].
Regarding claim 10, the claimed Tg is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 16, Toyoaki teaches linear siloxane having a structure of formula (IV) as stated above.
Regarding claim 17, Toyoaki teaches that R5 in formula (IV) comprises vinyl group.
Claim(s) 4, 8 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoaki et al (EP 0757059 B1) as applied to claim 1 above, further in view of Moren (US 20190023948 A1).
Toyoaki teaches the aqueous dispersion in claim 18 as stated above. Toyoaki does not teach the claimed photocrosslinker.
In the same field of endeavor, Moren teaches a pressure-sensitive adhesive (PSA) composition comprising acrylics and siloxane/polysiloxane [abstract, 0007]. The composition can be made by emulsion polymerization [0137]. Photocrosslinkers such as multifunctional benzophenones [0124] can be added to the composition to significantly increase the cohesive strength and the tensile strength of the provided PSA [0118]. The crosslinker is added up to 3 weight percent [0126].
It would have been obvious to one of ordinary skill in the art at the time of filing to add up to 3 wt% of photocrosslinkers such as multifunctional benzophenones to Toyoaki’s composition to significantly increase the cohesive strength and the tensile strength of the provided PSA.
The up to 3 wt% of photocrosslinker overlaps the claimed amounts in claims 8, 14 and 15. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762