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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 6/27/2022 are accepted.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 9-17, 19, and 22-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,134,697. Although the claims at issue are not identical, they are not patentably distinct from each other because US’697 claims a laminate body (Claim 10), comprising a base material; and a curable hot melt silicone composition layer in contact with the base material (claim 10); wherein the curable hot melt silicone composition wherein the curable hot melt silicone composition includes at least an organopolysiloxane resin containing a siloxane unit expressed by SiO₄/₂ making (A) up at least 20 mol% or more of all siloxane units, and a straight or branched chain organopolysiloxane that is liquid or has plasticity at
25°C (claim 1); and wherein component (A) comprises:
(A1') an organopolysiloxane resin containing a curing reactive functional group including
a carbon-carbon double bond in the molecule and containing a siloxane unit expressed by
SiO₄/₂ making up at least 20 mol % of all siloxane units, that does not independently have
hot-melt properties and is solid at 25°C; and
(A2') an organopolysiloxane resin that does not have a curing reactive functional group
containing a carbon-carbon double bond in the molecule while containing a siloxane unit
expressed by SiO₄/₂ making up at least 20 mol % or more of all siloxane units, that does
not independently have hot-melt characteristics and is solid at 25°C (claim 1).
While US’697 does not explicitly state the organopolysiloxane resin containing a siloxane unit expressed as SiO₄/₂ making up at least 20 mol% or more of all siloxane units, said conditions is met when components (A1) and (A2) are included in the amounts disclosed in claim 1. US’697 also does not explicitly teach that the melt viscosity of the curable hot melt silicone composition as measured by a
6.flow tester at a pressure of 2.5 MPa at 100°C is 500 Pa's or less. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the viscosity of the composition in order to optimize its processability.
Claims 1-7, 9-17, 19, and 22-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,384,941. Although the claims at issue are not identical, they are not patentably distinct from each other because US’941 claims a laminate body (Claim 10), comprising a base material; and a curable hot melt silicone composition layer in contact with the base material (claim 10); wherein the curable hot melt silicone composition wherein the curable hot melt silicone composition includes at least an organopolysiloxane resin containing a siloxane unit expressed by SiO₄/₂ making (A) up at least 20 mol% or more of all siloxane units, and a straight or branched chain organopolysiloxane that is liquid or has plasticity at 25°C (claim 1); and wherein component (A) comprises:
(A1') an organopolysiloxane resin containing a curing reactive functional group including
a carbon-carbon double bond in the molecule and containing a siloxane unit expressed by
SiO₄/₂ making up at least 20 mol % of all siloxane units, that does not independently have
hot-melt properties and is solid at 25°C; and
(A2') an organopolysiloxane resin that does not have a curing reactive functional group
containing a carbon-carbon double bond in the molecule while containing a siloxane unit
expressed by SiO₄/₂ making up at least 20 mol % or more of all siloxane units, that does
not independently have hot-melt characteristics and is solid at 25°C (claim 1).
While US’941 does not explicitly state the organopolysiloxane resin containing a siloxane unit expressed as SiO₄/₂ making up at least 20 mol% or more of all siloxane units, said conditions is met when components (A1) and (A2) are included in the amounts disclosed in claim 1. US’941 also does not explicitly teach that the melt viscosity of the curable hot melt silicone composition as measured by a
flow tester at a pressure of 2.5 MPa at 100°C is 500 Pa's or less. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the viscosity of the composition in order to optimize its processability.
Claims 1-7, 9-17, 19, and 22-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No.18/268,222 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because US’222 claims a laminate body (Claim 10), comprising a base material; and a curable hot melt silicone composition layer in contact with the base material (claim 10); wherein the curable hot melt silicone composition wherein the curable hot melt silicone composition includes at least an organopolysiloxane resin containing a siloxane unit expressed by SiO₄/₂ making (A) up at least 20 mol% or more of all siloxane units, and a straight or branched chain organopolysiloxane that is liquid or has plasticity at 25°C (claim 1); and wherein component (A) comprises:
(A1') an organopolysiloxane resin containing a curing reactive functional group including
a carbon-carbon double bond in the molecule and containing a siloxane unit expressed by
SiO₄/₂ making up at least 20 mol % of all siloxane units, that does not independently have
hot-melt properties and is solid at 25°C; and
(A2') an organopolysiloxane resin that does not have a curing reactive functional group
containing a carbon-carbon double bond in the molecule while containing a siloxane unit
expressed by SiO₄/₂ making up at least 20 mol % or more of all siloxane units, that does
not independently have hot-melt characteristics and is solid at 25°C (claim 1).
While US’222 does not explicitly state the organopolysiloxane resin containing a siloxane unit expressed as SiO₄/₂ making up at least 20 mol% or more of all siloxane units, said conditions is met when components (A1) and (A2) are included in the amounts disclosed in claim 1. US’22 claims that the melt viscosity of the curable hot melt silicone composition as measured by a flow tester at a pressure of 2.5 MPa at 100°C is 50 Pa's or less (claim 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-6 , 12-15, 17, 19, and 22-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regards to claim 2, there is no antecedent basis for the term “the structure.”
With regards to claim 3, there is no antecedent basis for the term “the adjacent layers.”
With regards to claim 4, there is no antecedent basis for the term “the case.”
With regards to claim 5, “a first base material a second base material, and a curable” should read “the first base material, the second base material, and the curable”.
With regards to claim 6, “a first base material a second base material, and a curable” should read “the first base material, the second base material, and the curable”.
With regards to claim 6, it is unclear what is meant by “the laminate body is a laminate body”.
With regards to claim 12, “a base layer” should read “the base layer”.
With regards to claim 13, “a curable hot melt” should read “the curable hot melt”
With regards to claim 14, “a curable hot melt” should read “the curable hot melt” and “a base layer” should read “the base layer”.
With regards to claim 17, “a curable hot melt” should read “the curable hot melt”.
With regards to claim 19, “a multilayer laminate structure containing a curable hot melt” should read “the multilayer laminate structure containing the curable hot melt.” Furthermore, there is no antecedent basis for the term “the layer” in line three of the claim. Additionally, it is unclear what is meant by “the functional layer is a functional layer”.
With regards to claims 22 and 23, “a function layer” should read The functional layer.”
With regards to claim 24, M is not defined.
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787