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, 2, 4-12 are pending. Applicant’s previous election of Group I, claims 1, 2, 4-7, still applies and claims 8-12 remain withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/06/25 has been entered.
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
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:
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.
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, 2, 4-7, is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (U.S. 2017/0298251) in view of Leir et al. (EP 0250248).
Regarding claims 1, 2, 4-7, Park discloses a silicone coating composition comprising a vinyl terminated polydimethylsiloxane (as in claim 2), a silicone crosslinking agent, a metal catalyst and a solvent (as in claim 5 and forming a liquid composition as in claim 4), at respective amounts that overlap claim 6, for forming a release coating (see abstract, [0033]-[0045]).
Park does not disclose the particular solvent or the claimed urea silicone compound however Leir is also directed to release coatings and teaches that a urea silicone compound overlapping the elected species, formed via reaction of aminopropyl terminated polydimethylsiloxane and tetramethylene diisocyanate, (within the scope of claim 1) may be used as a release agent in release coatings to control the degree of release force and also to provide strength, mechanical and elastomeric properties, and also Leir suggests tetrahydrofuran as a suitable solvent to keep the compound in solution (see abstract, page 3, lines 1-55, formula 1 overlaps if R is methyl, m is zero, n is 500, Y is C3 alkylene, and Z is C4 alkylene, and D is H, also note the chain extender is optional as reflected in example 6, also see page 4, lines 45-60, page 6, lines 1-25). Thus, it would have been obvious to have used the urea silicone compound from Leir as a release agent in Park in order to control the degree of release force and also to provide strength, mechanical and elastomeric properties (and with such an effect resulting in the amount of the urea compound being obvious to adjust, including to values within the range of claim 6, as part of the optimization of the degree of release force, and the strength, mechanical and elastomeric properties). It would have further been obvious to have included tetrahydrofuran (as in claim 7) as the solvent in Park because Leir teaches that it is suitable for dissolving the urea silicone compound.
Response to Arguments
Applicant’s remarks are not persuasive.
Applicant argues that Leir in the above rejection fails to teach the claimed urea siloxane compound because it prefers diisocyanate compounds with Z of greater than 5 carbon atoms. However, Applicant is only referring to preferred (which do not limit the reference) and Leir clearly teaches that Z may be tetramethylene (i.e., C4) which is within the claimed range (see page 3).
Applicant then argues unexpected results based on the present examples. However, the present amendment appears to exclude the present examples relied upon (preparation example 1, which is disclosed as being prepared from “hexamethylene diisocyanate,” see [0131] of the present PGPub, which has a 6 carbon alkylene group). Even if the claims included preparation example 1, the claims would not otherwise be commensurate in scope with the examples, in terms of the other variables in the claimed formula, and the type and amount of the claimed ingredients, which are much broader in the claims than in the cited examples.
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 mailing 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787