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.
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 the amendment to claim 8 which now requires that the composition “consists essentially of” the listed ingredients, this transitional phrase limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention (see MPEP 2111.03). In this case, the specification refers to many subjective measures of characteristics such as “excellent” heat resistance, oil resistance, chemical resistance, solvent resistance, low-temperature properties, moisture resistance, low gas permeability, etc., and includes one objective characteristic, adhesion strength (at least in a range of 0.001 to 10.0 N/25 mm, [0017]). The subjective characteristics are somewhat dubious in terms of being "basic and novel characteristics" because the term "excellent" is subjective and because the Specification does not specify what qualifies as "excellent."
Moreover, the excellent chemical and solvent resistance and high adhesion characteristics are indicated as arising from the presence of claimed component (A) ([0020]). Spec also states that (B) and (C) are responsible for curing capability ([0139]). The specification makes no mention that the incorporation of plasticizers, viscosity modifiers, and/or flexibilizers would inhibit these characteristics. To the contrary, the specification contemplates the incorporation of other additives (e.g., [0104]), indicating that the mere presence of other components does not necessarily imply the destruction of the basic and novel characteristics of the claimed composition. Therefore, the incorporation of a linear polyfluoropolyether compounds of Azechi as modified by Koshikawa would not materially affect the basic and novel characteristics of the claimed invention, and thus are included in 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, 25, and 32-39 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).” As described above, Azechi as modified by Koshikawa-602 meets the claimed “consisting essentially of” limitation.
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:
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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:
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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. Alternatively, it would have been obvious to one having ordinary skill in the art to substitute the silicon-bonded hydrogen atoms within the compound of Koshikawa-602 with non-hydrogen substituents as shown to be suitable alternatives within Koshikawa-263. 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).
Regarding claims 32-33, Azechi in view of Koshikawa-602 and Koshikawa-263 meet all of the compositional limitations of claimed components “(A)” through “(D)” as described above. Azechi is silent with regard to the incorporation of a hydrosilylation regulator, however Azechi does teach hydrosilylation and catalysis thereof (e.g., [0062]). Koshikawa-263 additionally teaches the introduction of a hydrosilylation catalyst regulator including acetylenic alcohols ([0080]). It is prima facie obvious to select a known material based on its art-recognized suitability for its intended purpose (see MPEP 2144.07). It thereore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the acetylenic alcohol-based hydrosilylation catalyst regulator of Koshikawa-263 into the formulation of Azechi, as Koshikawa-263 recognizes said additives suitable for their named purpose within highly similar formulations.
Regarding claim 34, 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 cured product.
Regarding claim 35 Azechi teaches that the composition preferably has an adhesive strength ranging from 0.5 to 5 N/25 mm ([0034]), which falls within the claimed range of “0.001 N/25 mm to 10.0 N/25 mm,” establishing a prima facie case of obviousness.
Regarding claims 36-37, Azechi in view of Koshikawa-602 and Koshikawa-263 meet all of the compositional limitations of claimed components “(A)” through “(E)” as described in the rejection of claim 9, above. The incorporation of claimed component “(F)” would have been obvious as described in the rejection of claim 33, above.
Regarding claim 38, 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 cured product.
Regarding claim 39 Azechi teaches that the composition preferably has an adhesive strength ranging from 0.5 to 5 N/25 mm ([0034]), which falls within the claimed range of “0.001 N/25 mm to 10.0 N/25 mm,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant's arguments filed April 20, 2026, have been fully considered but they are not persuasive.
Applicant argues that the use of “consisting essentially of” phrasing excludes the linear polyfluoro compounds of Koshikawa-602. However, as described above, the incorporation of a linear polyfluoropolyether compounds of Koshikawa-602 into Azechi would not materially affect the basic and novel characteristics of the composition’s basic and material characteristics, and thus are included in the claimed composition.
Applicant argues that the presence of silicon-bonded hydrogen atoms within the component of Koshikawa-602 disqualifies the same from reading on the claimed composition because the incorporation of the functional groups of Koshikawa-263 would interfere with the mechanical strength and adhesion characteristics of the composition. However, as described above, it would have been obvious to substitute the silicon-bonded hydrogen of said component within Koshikawa-602, with non-hydrogen substituents as taught by Koshikawa-263. In so doing, the composition would meet all of the claimed limitations without introducing the aforementioned functional groups.
Assuming arguendo that this is not the case, the applicant has merely asserted that the incorporation of said functional groups would impact the mechanical strength and adhesion characteristics of the composition; however it is not clear that any particular degree of mechanical strength constitutes a basic and novel characteristic of the claimed composition, and there is no evidence of record indicating that such a change would categorically remove the combined prior art composition from the claimed range of adhesive strength.
Applicant argues that the hydrosilylation catalyst of Koshikawa-263 is essential and therefore interferes with the combination of references as applied above and previously; however, the combined composition is not based on the compositional design of Koshikawa-263; instead, Koshikawa-263 is utilized in the rejection above to supply a motivation for substituting components recognized in the prior art as suitable equivalents. While the catalyst within Koshikawa-263 likely serves to enhance the curing characteristics of the inventive composition described therein, the component used in the combined composition above is not indicated as requiring a silicon-bonded hydrogen – and Koshikawa-263 teaches additional components including Si-H bonds (such as component (B) therein). The combined composition of Azechi as modified does not contain the catalyst (E) taught by Koshikawa-263.
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
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