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 12, 15, 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 12, 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)”
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 claim 12 because it teaches the incorporation of a pefluoromonoalkenyl compound having one alkenyl group in one molecule and a perfluoroether structure in the main chain ([0012]).
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 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.
Azechi teaches that the composition preferably has an adhesive strength ranging from 0.5 to 5 N/25 mm ([0034]), which does not overlap the claimed range of “less than 0.5 N/25 mm. Nevertheless, Azechi teaches a composition whose adhesive strength lies very close to the upper limit of the claimed range. In cases where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness exists (See MPEP 2144.05.I.). Furthermore, the composition of Azechi as described above meets all of the compositional limitations of the claimed 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 adhesion characteristic will therefore necessarily be present in Azechi as applied above.
Regarding the amendment to claim 12 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, weatherability, water repellency, etc., and includes one objective characteristic, adhesion strength (less than 0.5 N/25 mm). 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 necessary adhesion characteristics are indicated as arising from the presence of claimed component (A) and (D) ([0018] and [0016]). Spec also states that (B) and (C) are responsible for curing capability ([0133]). 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., [0095]), 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 15, 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 26, Azechi teaches all of the limitations of claim 12 as described above. Azechi differs from claim 26 because it is silent with regard to the claimed volume resistivities. Nevertheless, Azechi as applied above results in a composition that is structurally identical to the claimed “adhesive composition,” which contains all of the same components in the same compositional amounts. 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 volume resistivities will therefore necessarily be present in Azechi as applied to claim 12, above.
Regarding claim 28, 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 30, 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 “tape” because the adhesive of Azechi is deposited onto a sheet of plastic (e.g., [0139]), and the overall invention is used as an adhesive sheet (i.e., a tape).
Response to Arguments
Applicant's arguments filed April 20, 2026 have been fully considered but they are not persuasive.
Applicant argues that Azechi contains a perfluoromonoalkenyl compound having one alkenyl group per molecule and having a perfluoropolyether structure in a main chain.” However, as described above, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute this component for the 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. Furthermore, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant next 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.
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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