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 .
Claim Rejections - 35 USC § 103
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 1-5, 7, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (JPH08199070 A, hereinafter referring to the attached ESPACENET translation) in view of Koshikawa-778 (JP 2014091778 A, cited in Applicant’s IDS; machine translation referred to herein).
Regarding claim 1, Sato teaches a curable composition ([0001]), comprising:
100 parts by weight ([0042]) of component (A), which is a fluorine-containing amide compound represented by the following formula ([0006]):
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Formula 1 of Sato (JPH08199070 A)
This component reads on the claimed component “(A)” because it is a linear polyfluoroalkyl compound which has two alkenyl groups per molecule and a perfluoropolyether structure in the main chain (variable Rf is a divalent perfluoroalkylene group, c.f. [0018]). Furthermore, the amount of 100 parts by weight is identical to the claimed amount, establishing a prima facie case of obviousness.
Component (B), a fluorine-containing organohydrogensiloxane ([0035]), which may contain inter alia a monovalent perfluorooxyalkyl group, and which further contains two or more Si-H groups. This component does not require the incorporation of an epoxy group, and thus may be free of an epoxy group. Component (B) therefore reads on the claimed component “(B).”
Component (C), a catalyst for the curing reaction within the composition ([0043]), in amounts ranging from 1 to 1000 ppm (platinum group metal equivalent, [0046]), which falls within the claimed range of “0.1 to 2,000 ppm,” of component “(D),” establishing a prima facie case of obviousness.
Sato differs from claim 1 because it is silent regarding a component which reads on the claimed component “(E).” In the same field of endeavor, however, Koshikawa-778 teaches a curable fluoropolymer product (page 1) used as an optical semiconductor (i.e., light emitting diode (LED)) sealing compound (page 2) comprising a linear linear polyfluoro compound (page 2), A fluorine-containing organohydrogensiloxane comprising a silicon atom (page 3), and 0.1 to 500 ppm, in terms of mass of platinum group metal ion, of a platinum group metal catalyst (page 5). Koshikawa-778 further teaches the incorporation of 0.10 to 10.0 parts by mass with respect to 100 parts of (Component A) of an organopolysiloxane (page 6), which reads on the claimed “(E) 0.1 to 20 parts by weight of an organopolysiloxane,” comprising the following structure:
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Wherein
H refers to a hydrogen atom, thereby reading on the claimed “hydrogen atom directly bonded to a silicon atom (SiH group).”
D is a monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed “monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group.”
E is an epoxy group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom (page 6), which reads on the claimed “epoxy group or a trialkyoxysilyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom”
It is prima facie obvious to select a material for its art-recognized suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the cyclic organopolysiloxane of Koshikawa-778 into the formulation of Sato, as Koshikawa-778 teaches it as a suitable component for curable fluorine-containing elastomer compositions.
Sato teaches the incorporation of component (B) such that the amount of hydrosilyl groups (Si-H) range from 0.5-5 per mole of aliphatic unsaturated groups in the composition ([0006]), which encompasses the claimed range of “0.5 to 3,” establishing a prima facie case of obviousness.
Sato as modifed by Koshikawa-778 further differs from claim 1 because it is silent with regard to the incorporation of 20 to 120 parts by weight of sodium fluoride. Sato does however teach the incorporation of a filler within the composition ([0049]).
In the same field of endeavor, Osawa teaches a curable fluoropolymer resin ([0001])]), comprising reinforcing fillers ([0069]) at concentrations of 5 to 200 parts by mass relative to 100 parts of the fluoropolyether compound ([0071]), which encompasses the claimed “(C) 20 to 120 parts of sodium fluoride,” establishing a prima facie case of obviousness. It is prima facie obvious to select a material for its art-recognized suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the sodium fluoride of Osawa into the formulation of Sato as modified by Koshikawa-778, as Osawa recognizes sodium fluoride as a reinforcing filler suitable for fluororubber compositions.
Sato as modified further differs from claim 1 because it is silent with regard to the total light transmittance of the cured product.
Nevertheless, Sato as modified above results in a curable fluoropolymer resin that is structurally identical to the claimed formulation, with the same chemical components and composition. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed light transmittance will therefore necessarily be present in Sato as applied to claim 1 above.
While Sato does contemplate the incorporation of silica within the formulation as a filler ([0049]), this incorporation of silica is not required; thus, Sato teaches embodiments where silica is not included in the inventive formulation, which reads on the claimed limitation requiring that “the composition does not contain silica as a filler.”
Finally, Sato as modified differs from claim 1 because it is silent with regard to the claimed total light transmittance characteristic. Nevertheless, Sato as modified results in a fluororubber composition which is structurally identical to the claimed composition, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed total light transmittance characteristic will therefore necessarily be present in Sato as modified and as applied above.
Regarding claim 2, Sato exemplifies the inventive component (A) as having vinyl group contents of 0.035 mol/100g ([0054] Example 1), 0.013 mol/100g ([0058], Example 2 and [0067], Example 5), 0.009 mol/100g ([0061], Example 3), and 0.007 mol/100g ([0064], Example 4), all of which fall within the claimed range of “0.005 to 0.3 mol/100 g,” establishing prima facie cases of obviousness.
Regarding claim 3, Sato teaches that the polymers of component (A) contain perfluoroalkylene groups and preferably those having the formula -CmF2m- where m is 1-10 ([0018]), but differs from claim 3 because it is silent regarding a perfluoropolyether structure with the claimed number of repeat units.
However, Koshikawa-778 teaches a highly similar component (A), having a perfluoropolyether structure in the main chain, as follows, on page 2:
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Furthermore, the main chain of Sato (i.e., the portion of chemical formula 1 of Sato, shown above, between the two most-distal carbonyl groups) may be comprised of only a polyfluoroalkylene group (c.f. [0020] of Sato which indicates that variable a may be equal to zero, in which case the bracketed portion of chemical formula 1 will be absent). Finally, it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to substitute the main chain portion of Sato with the main chain portion of Koshikawa-778, shown above, as Koshikawa-778 recognizes it as a suitable main chain portion for a linear polyfluoro compound used in curable fluoropolymer products. Koshikawa-778 teaches that, within the aforementioned structure, m and n are each an integer of 1 to 100 (page 3), which overlaps the claimed range of “b is an integer of 4 to 302,” establishing a prima facie case of obviousness.
Regarding claim 4, the chemical structure of the modified component (A) of Sato in view of Koshikawa-778, as described in the rejection of claim 3, above, is as follows:
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Wherein R1 and R2 are those values derived from Sato ([0009]), and wherein m, n, and r are those values derived from Koshikawa-778 (page 3). This modified compound meets the limitations of claimed “formula (2),” because these aforementioned variables overlap the claimed variables “R1,” “R3,” and “c, d, and e,” respectively.
Regarding claim 5, as stated above, Koshikawa-778 teaches (Component D), an organopolysiloxane (page 6), with the following structure:
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Wherein:
i (which corresponds to the claimed “t”) is an integer of 1 to 6 (page 6), which overlaps the claimed “t is an integer of 1 to 6”
j (which corresponds to the claimed “u”) is an integer of 1 to 4 (page 6), which overlaps the claimed “u is an integer of 1 to 4”
k (which corresponds to the claimed “v”) is an integer of 1 to 4 (page 6), which overlaps the claimed range of “v is an integer of 1 to 4”
i + j + k is an integer of 4 to 10, which overlaps the claimed “t + u + v is an integer of 4 to 10”
R7 (which corresponds to the claimed “R7”) is a substituted or unsubstituted monovalent hydrocarbon group (page 6), which may have 1 to 12 carbon atoms, and which may include alkyl and aryl groups such as methyl, ethyl, propyl, butyl, hexyl, cyclohexyl, octyl, benzyl and phenylethyl (page 6 and page 2). The range of 1 to 12 carbon atoms and exemplified substituents, taught by Koshikawa-778, overlaps the claimed ranges of “1 to 20” and “1 to 12” carbon atoms.
D (which corresponds to the claimed “E”) is a monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed “E is each independently a monovalent perfluoroalkyl group or a perfluorooxyalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain a silicon atom, an oxygen atom, and a nitrogen atom”
E (which corresponds to the claimed “G”) is an epoxy group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, which reads on the claimed “G is each independently an epoxy group or a trialkoxysilyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, provided that the order of bonding of -(SiO)(H)R7-, -(SiO)(E)R7- and -(SiO)(G)R7- is not limited.” Koshikawa-778 does not cite any limitations on the bonding order of the corresponding substituents.
The overlapping ranges described above establish prima facie cases of obviousness for the claimed limitations.
Regarding claim 7, Sato is silent with regard to the formation of an optical component comprising a cured product of the inventive formulation; however, Koshikawa-778 teaches an optical semiconductor produced with the described formulation (page 2), which reads on the claimed “optical component comprising a cured product of the curable fluoropolyether adhesive agent composition.” Furthermore, the compositions of Sato and Koshikawa-778 are highly similar, as laid out in the rejection of claim 1, above. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize the formulation of Sato as modified within an optical semiconductor.
Regarding claim 9, Sato as modified teaches the incorporation of between 5 and 200 parts of sodium fluoride, which reads on the claimed range of “20 to 80 parts by weight,” establishing a prima facie case of obviousness.
Regarding claim 10, as described above, Koshikawa-778 teaches the incorporation of teaches (Component D), an organopolysiloxane (page 6), with the following structure:
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Wherein:
i (which corresponds to the claimed “t”) is an integer of 1 to 6 (page 6), which overlaps the claimed “t is an integer of 1 to 6”
j (which corresponds to the claimed “u”) is an integer of 1 to 4 (page 6), which overlaps the claimed “u is an integer of 1 to 4”
k (which corresponds to the claimed “v”) is an integer of 1 to 4 (page 6), which overlaps the claimed range of “v is an integer of 1 to 4”
i + j + k is an integer of 4 to 10, which overlaps the claimed “t + u + v is an integer of 4 to 10”
R7 (which corresponds to the claimed “R7”) is a substituted or unsubstituted monovalent hydrocarbon group (page 6), which may have 1 to 12 carbon atoms, and which may include alkyl and aryl groups such as methyl, ethyl, propyl, butyl, hexyl, cyclohexyl, octyl, benzyl and phenylethyl (page 6 and page 2). The range of 1 to 12 carbon atoms and exemplified substituents, taught by Koshikawa-778, overlaps the claimed ranges of “1 to 20” and “1 to 12” carbon atoms.
D (which corresponds to the claimed “E”) is a monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed “E is each independently a monovalent perfluoroalkyl group or a perfluorooxyalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain a silicon atom, an oxygen atom, and a nitrogen atom”
E (which corresponds to the claimed “G”) is an epoxy group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, which reads on the claimed “G is each independently an epoxy group or a trialkoxysilyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom, provided that the order of bonding of -(SiO)(H)R7-, -(SiO)(E)R7- and -(SiO)(G)R7- is not limited.” Koshikawa-778 does not cite any limitations on the bonding order of the corresponding substituents.
Koshikawa-778 therefore teaches an organopolysiloxane component meeting the claimed limitations.
Regarding claim 11, as described above, k within the formula of Koshikawa-778 (which corresponds to the claimed “v”) is an integer of 1-4 (page 6), which encompasses the claimed range of “2 to 4,” establishing a prima facie case of obviousness. Furthermore, Koshikawa-778 teaches that the E groups (which correspond to the claimed “G” groups), may independently consist of monovalent perfluoroalkyl group or a monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain an oxygen atom or a nitrogen atom (page 6), which reads on the claimed limitations.
Regarding claim 12, Koshikawa-778 teaches (Component D) 0.10 to 10.0 parts by mass with respect to 100 parts of (Component A) of an organopolysiloxane (page 6), which reads on the claimed which overlaps the claimed range of “0.1 to 2.2 parts by weight,” establishing a prima facie case of obviousness. It therefore would have been obvious to include this amount of said component within the modified formulation of Sato for the same reasons as described above.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed December 15, 2025, with respect to the rejections of claims 1-5, 7, and 9-12 under 35 SUC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Sato, Osawa, and Koshikawa-778, as described above.
In response to applicant's argument that Koshikawa-778 fails to recognize the effect of improved light transmittance and/or adhesive properties of the claimed invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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 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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762