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, 3-20 are pending. Applicant’s previous election of Group I, claims 1, 3-10, 18-20 still applies and claims 11-17 remain withdrawn.
Response to Amendment
Applicant’s amendment of 10/31/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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, 3-10, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhagwagar (U.S. 2006/0189767).
Regarding claims 1, 3-10, 18-20 Bhagwagar teaches a solventless (as in claims 18-20) composition comprising multiple (at least one, [0006]) organopolysiloxanes having alkenyl groups that overlap the claimed A and Bi ingredients of claims 1, 3-6. For example, Formula I overlaps the claimed A ingredient when g’, h’, i’, and j’ are each zero, f’ is 24 (corresponding to the claimed Z unit), e’ is zero, d’ is 6 with o’ being 1, L in the d’ unit being alkoxy (corresponding to the claimed OZ), R in the d’ unit being methyl (also corresponding to the claimed Y unit), and c’ is 15 with n’ being 2 and L in the c’ repeating unit being vinyl and R in the c’ repeating unit being methyl (corresponding to the claimed W unit with an amount of vinyl groups overlapping claim 6), which results 45 total units, with the proportion of Z units being about 0.53 (i.e., 24/45), the proportion of Y units is about 0.13 (i.e., 6/45) and the proportion of W unit is 0.33 (i.e., 15/45), which falls within the claimed range of claim 1, 3, 4, and 6 and the Bi option of claim 5 ([0006]-[0015]). This also results in an overlapping amount of SiOZ groups (since each Y unit above contributes 1 SiOZ group, there would be 6 SiOZ groups corresponding to 13 mol%, i.e., 6/45). The above is just one example of the scope of formula 1 and other embodiments within the scope of formula 1 overlap claimed range of claims 1, 3, 4, and 6 and the Bi option of claim 5.
The A ingredient discussed above is also disclosed as having a viscosity at room temperature without any disclosed solvent ([0017]) and is therefore a liquid as claimed. The embodiments of formula 1 that overlap the embodiments in the present application also inherently have this liquid property. The composition also includes an organohydrogen siloxane as in claim 8-9 and a hydrosilation catalyst as in claim 7 ([0025], [0029], [0042]). The amount of A ingredient ([0021]) in the reference overlaps the combined range of A and B ingredients in claim 10 (since the claims allow for the same overlapping compound discussed above to qualify as both ingredients), with the amount of organohydrogen siloxane also overlapping claim 10 based on the disclosed H/alkenyl ratio ([0040]) and the disclosed amounts of other ingredients that make up the rest of the composition ([0024]).
The composition is disclosed as having release properties to some degree ([0091]) but this intended use is not given patentable weight anyway as a mere intended use and/or the composition described above is inherently capable of being used as a release composition.
“The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”
See MPEP 2111.02 II.
“During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.”
See MPEP 2111.02 II.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the reference requires a solvent. This is no true. The reference is directed to solventless compositions. Reactive diluents are not solvents because they become part of the cured product.
Applicant’s remarks based on the reference failing to be a release coating composition are based on the above solvent argument and are not persuasive. It is also not true that the reference fails to teach that the A ingredient is a liquid (as address in the rejection, viscosity is disclosed at room temperature and Applicant has not explained how a non-liquid can still have a viscosity at room temperature). Applicant’s remarks related to PSA and release coatings being “complimentary” and also “opposite” are vague and without support. Applicant also ignores the release properties mentioned in the rejection. Applicant also ignores the preamble explanation in the rejection.
Applicant then argues reasonable expectation of success assuming the reactive diluent would need to be omitted or reduced which is not persuasive as explained above related to solvent. The teaching away arguments are also based on the non-persuasive solvent argument.
Applicant then argues unexpected results which is not persuasive because it is also based on the solvent argument (comparative examples with solvent do not represent the closest prior art) and also because the claims are much broader than the cited examples.
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 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 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.
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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).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787