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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 7, 2025 has been entered.
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.
Claims 8, 14, 22, 24, 26, 28, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Azechi (JP 2012122024 A, hereinafter referring to both the original Japanese version and the ESPACENET English translation) in view of Koshikawa-602 (US 2005/0090602 A1).
Regarding claim 8, Azechi teaches an adhesive sheet suitable for use as a masking material for painting applications ([0001]), comprising an adhesive layer ([0002]) made from a fluororesin gel ([0012]), comprising:
30 to 90 parts by mass of a linear perfluoropolyether compound having at least two alkenyl groups in one molecule and a perfluoropolyether structure in the main chain ([0012]), including hexafluoropropylene oxide groups (which read on the claimed “repeating unit represented by -CaF2aO-“ because hexafluoropropylene oxide groups fall within this representative structure when a is 3), which reads on the claimed component “(A)”. An amount of any single compound can be mathematically normalized to 100 parts by mass. Thus, any amount of this compound reads on the claimed “100 parts,” as long as the masses of the remaining components are similarly normalized such that the relative amounts of each compound are proportionally similar to the taught ranges.
An effective curing amount of an organosilicon compound having at least two hydrogen atoms bonded to silicon atoms in one molecule ([0012]), which reads on the claimed component “(B)”
A catalytic amount of a hydrosilylation reaction catalyst ([0012]), which reads on the claimed component “(C)”
Azechi differs from claim 8 because it is silent with regard to the incorporation of the claimed component “(D).”
In the same field of endeavor, Koshikawa-602 teaches an adhesive composition containing a linear perfluoropolyether, a fluorinated organohydrogensiloxane, and a platinum catalyst (Abstract), and further teaches the incorporation of an organosiloxane containing at least one silicon-bonded hydrogen atom and at least one epoxy and/or trialkoxysilyl group (Abstract), which reads on the claimed “organosilicon compound, other than the compound (B).”
Koshikawa-602 teaches the incorporation of 1 to 50 parts of the aforementioned organosiloxane per 100 parts by weight of the linear perfluoropolyether ([0089]), and teaches that it is useful for imparting a self-adhesiveness to the composition ([0066]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to incorporate between 1 and 50 parts per 100 parts of the linear perfluoropolyether of the organosiloxane taught by Koshikawa-602 into the formulation of Azechi, for the purpose of imparting self-adhesiveness to the composition. The range of 1 to 50 parts taught by Koshikawa-602 lies just outside the claimed range of “0.2 by mass or more and less than 1.0 parts by mass,” however a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05). In this case, the claimed range of “0.2 by mass or more and less than 1.0 parts by mass” is arbitrarily close to the range of 1 to 50 parts by mass taught by Koshikawa-602.
Regarding the newly-added limitation requiring that the composition be free from a fluoromonoalkenyl compound having one alkenyl group per molecule and having a perfluoroether structure or perfluoropolyether structure in a main chain, Azechi differs from this limitation because it includes a polyfluoromonoalkenyl compound having one alkenyl group in one molecule and a perfluoropolyether structure in the main chain ([0012]). However, Koshikawa-602 also teaches the use of additional components including plasticizers, viscosity modifiers, and flexibilizers, of which polyfluoromonoalkenyl compounds are a suitable option ([0092]). In addition to the polyfluoromonoalkenyl compounds, Koshikawa-602 additionally teaches the optional use of linear polyfluoro compounds, which do not have one alkenyl group in one molecule ([0092], [0094], and [0098]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the polyfluoromonoalkenyl compound of Azechi with a linear polyfluoro compound of Koshikawa-602 (which does not contain one alkenyl group in one molecule and which therefore does not fall under the purview of the excluded compounds), as Koshikawa-602 recognizes said linear polyfluoro compounds as suitable alternatives thereto.
In so doing, the formulation of Azechi as modified does not contain a fluoromonoalkenyl compound having one akenyl group per molecule, and therefore meets all of the compositional limitations of the claimed composition.
Regarding claim 14, Azechi teaches that the preferred linear perfluoropolyether compounds are those which are exactly the same as the claimed structures (see [0014] of both the translated and original Japanese versions of Azechi).
Regarding claims 22, Azechi teaches that the inventive formulation is used as an adhesive layer to be used in an adhesive sheet for paint applications ([0001]-[0002] and [0012]), which reads on the claimed “adhesive.”
Regarding claim 24, Koshikawa-602 teaches the incorporation of the organosiloxane containing at least one silicon-bonded hydrogen atom and at least one epoxy and/or trialkoxysilyl group (Abstract), which reads on the claimed “organosilicon compound, other than the compound (B),” as described above. Koshikawa-602 teaches specific structural limitations of this compound, including the requirement of at least one hydrogen atom bonded directly to a silicon atom and at least one group selected from among epoxy groups and trialkoxysilyl groups bonded to a silicon atom through an intervening carbon atom or through intervening carbon and oxygen atoms ([0066]). However, none of the structural requirements required by Koshikawa-602 requires the incorporation of a fluorine atom. Furthermore, Koshikawa-602 teaches that preferred organosiloxanes have monovalent perfluoroalkyl or monovalent perfluorooxyalkyl groups ([0067]), which exemplifies that the incorporation of fluorine atoms is, at least in this particular way, optional. Importantly, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Regarding claims 26, Koshikawa-602 teaches specific organosiloxanes which have optionally epoxy groups (designated with the symbol L in [0070]-[0073]) attached to silicon atoms via a hydrocarbon group of 1-10 carbons ([0074]), wherein the repeat unit number corresponding to the epoxy groups (Y) ranges from 1 to 50 ([0071]). Therefore, Koshikawa-602 teaches organosiloxanes having two or more epoxy groups each bonded to a silicon atom.
Regarding claims 28, Koshikawa-602 teaches organosiloxane compounds whose structures overlap those claimed ([0070]-[0081]), wherein the repeat unit numbers W, X, Y, and Z all fall within the claimed ranges of “W,” “X,” “Y,” and “Z,” establishing prima facie cases of obviousness ([0071]).
Regarding claims 30, Koshikawa-602 teaches specific organosiloxanes which have optionally trialkoxysilyl groups (designated with the symbol L in [0070]-[0073]) attached to silicon atoms via a hydrocarbon group of 1-10 carbons ([0074]), wherein the repeat unit number corresponding to the epoxy groups (Y) ranges from 1 to 50 ([0071]). Therefore, Koshikawa-602 teaches organosiloxanes having two or more trialkoxysilyl groups each bonded to a silicon atom.
Claims 9-10, 15-16, 23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Azechi (JP 2012122024 A, hereinafter referring to both the original Japanese version and the ESPACENET English translation) in view of Koshikawa-602 (US 2005/0090602 A1) and further in view of Koshikawa-263 (US 2011/0178263 A1).
Regarding claim 9, Azechi as modified by Koshikawa-602 teaches components within the adhesive layer which read on the claimed components “(A)” through “(D)” as described above. Azechi further teaches the incorporation of 10 to 70 parts by mass of a polyfluoro monoalkenyl compound having one alkenyl group in one molecule and having an (optional) perfluoropolyether structure in the main chain ([0012]). This component reads on the claimed component “(E).”
With regard to the compositional limitation of “20 to 60 parts by mass” of the claimed component “(D),” as described above, the parts by mass of the polyfluoro monoalkenyl compound must be mathematically normalized to align with the normalization of the linear perfluoropolyether compound described in the rejection of claim 1. Given that Azechi teaches a range of 30 to 90 parts of this compound, and 10 to 70 parts of the polyfluoro monoalkenyl compound, the ratio of these two compounds may range from 9:1 (90 parts perfluoropolyether to 10 parts monoalkenyl compound) to 1:2.3 (30 parts of perfluoropolyether to 70 parts of monoalkenyl compound. The range of parts of the polyfluoro monoalkenyl compound taught by Azechi, with respect to 100 parts by mass of the linear perfluoropolyether compound, is from about 11.1 to 230. This range encompasses the claimed range of “20 to 60 parts by mass,” establishing a prima facie case of obviousness.
Azechi as modified by Koshikawa-602 differs from claim 9 because the components therein which read on the claimed component “(D)” contain at least one silicon-bonded hydrogen atom (Abstract), whereas the amended claim now requires that said component contains no silicon-bonded hydrogen atom per molecule.
In the same field of endeavor, Koshikawa-263 teaches an adhesive composition containing a linear perfluoropolyether, a fluorinated organohydrogensiloxane, and a platinum catalyst (Abstract), and further teaches the incorporation of various additives which improve its viable utility, specifically including compounds having organosilicon compounds containing at least one epoxy group bonded to a silicon atom, useful as a tackifier ([0065]). Koshikawa-263 provides specific examples of suitable compounds within this category, including inter alia the following structure, which it shares in common with the similar category of components within Koshikawa-602:
PNG
media_image1.png
394
625
media_image1.png
Greyscale
Structure of a suitable self-adhesiveness/tackifier agent, common to both Koshikawa-602 and Koshikawa-263
Koshikawa-263 further teaches alternative examples of suitable additives including some which have no silicon-bonded hydrogen atoms, such as the following:
PNG
media_image2.png
231
455
media_image2.png
Greyscale
Alternatively suitable additive taught by Kohikawa-263 at [0070]
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art to substitute the additives of Koshikawa-263, which do not bear a silicon-bonded hydrogen atom, in place of the additives of Koshikawa-602, which bear silicon-bonded hydrogen atoms, within the modified formulation of Azechi, as Koshikawa-263 teaches said components as suitable alternatives for the purpose of improving the tackiness/self-adhesiveness of the composition. In doing so, the formulation of Azechi as modified by both Koshikawa-602 and Koshikawa-263 would meet all of the claimed compositional limitations.
Regarding claim 10, Azechi teaches that the preferred polyfluoromonoalkenyl compounds are those which are exactly the same as the claimed structures (see [0016] of both the translated and original Japanese versions of Azechi).
Regarding claims 15-16, Azechi teaches that the preferred linear perfluoropolyether compounds are those which are exactly the same as the claimed structures (see [0014] of both the translated and original Japanese versions of Azechi).
Regarding claim 23, Azechi teaches that the inventive formulation is used as an adhesive layer to be used in an adhesive sheet for paint applications ([0001]-[0002] and [0012]), which reads on the claimed “adhesive.”
Regarding claim 25, Koshikawa-602 teaches the incorporation of the organosiloxane containing at least one silicon-bonded hydrogen atom and at least one epoxy and/or trialkoxysilyl group (Abstract), which reads on the claimed “organosilicon compound, other than the compound (B),” as described above. Koshikawa-602 teaches specific structural limitations of this compound, including the requirement of at least one hydrogen atom bonded directly to a silicon atom and at least one group selected from among epoxy groups and trialkoxysilyl groups bonded to a silicon atom through an intervening carbon atom or through intervening carbon and oxygen atoms ([0066]). However, none of the structural requirements required by Koshikawa-602 requires the incorporation of a fluorine atom. Furthermore, Koshikawa-602 teaches that preferred organosiloxanes have monovalent perfluoroalkyl or monovalent perfluorooxyalkyl groups ([0067]), which exemplifies that the incorporation of fluorine atoms is, at least in this particular way, optional. Importantly, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Response to Arguments
Applicant's arguments, see Applicant’s Remarks, filed November 7, 2025, with respect to the rejections of claims 8, 14, 22, 24, 26, 28, and 30 have been fully considered but they are not persuasive.
Applicant argues that the amended claim 8, which now excludes a fluoromonoalkenyl compound having one alkenyl group per molecule and having a perfluoroether structure or a perfluoropolyether structure in a main chain, are not made obvious by Azechi in view of Koshikawa-602 because Azechi includes a fluoromonoalkenyl compound having one alkenyl group per molecule and a perfluoropolyether structure in a main chain. However, as described above, Koshikawa-602 provides motivation to substitute this compound with another compound which does not fall under the purview of the excluded compounds. The composition of Azechi as modified by Koshikawa therefore makes obvious the claimed composition despite the amendment to exclude the above-described compounds.
Applicant’s arguments with respect to the rejections of claims 9-10, 15-16, 23, and 25 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of both Koshikawa-602 and Koshikawa-263, as described above.
Conclusion
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.
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, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762