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
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kashiwagi (US 20040127613, US Document #2 from IDS dated 6/29/2022).
Regarding Claim 1,
Kashiwagi teaches a composition containing the following structure:
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in which k (equivalent to m of the instant claim) is an integer from 1 to 4, R (equivalent to R3 of the instant claim) is hydrogen or methyl, l (equivalent to a of the instant claim) is an integer from preferably between 2 and 200 and m (equivalent to b of the instant claim) is an integer between 0 and 200 (Paragraph 31). These ranges overlap with the ranges of the instant claim. One of ordinary skill in the art, seeking to reduce the viscosity of the resulting composition, would seek to limit the molecular weight of the oligomeric/polymeric siloxane and, by extension, the number of repeat units of the siloxane. As such, it would have been obvious to have limited the sum of the monomer units. It also would have been obvious to have selected the overlapping portion of the ranges because selection of the overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP 2144/05.I.
Kashiwagi also teaches the use of the use of radiation sensitizers (which read upon a photoinitiator) including phenylketones (Paragraph 69) as well as the use of platinum-group metals for hydrosilylation reactions (Paragraphs 72 and 74).
With regard to the viscosity, Kashiwagi teaches that the composition when used for spin coating is typically within a range of 0.1 to 10 Pa·s (Paragraph 101) at a temperature of 25 °C. While 0.1 Pa·s is slightly above the range of the instant claim (0.005 to 0.08), based on the wide range of viscosities disclosed by Kashiwagi depending upon the use case, it stands to reason that the viscosity could be further adjusted in order to meet the requirements of the particular usage, such as switching to inkjet dispensing. Indeed, Kashiwagi notes that additives may be used to adjust the viscosity (Paragraph 81). As such, it would have been obvious to one of ordinary skill in the art to have reduced the viscosity of the composition to be within the range of the instant claim in order to allow for alternate dispensing methods.
Regarding the surface tension, while Kashiwagi is silent on the value, Kashiwagi teaches a composition comprised of the same components, and as such, it would necessarily follow that the composition would have the same properties, including surface tension. See MPEP 2112.01.II.
Regarding Claim 2,
Kashiwagi states that other additives may be used, provided they do not restrict the curability (Paragraph 81). Since a methacrylate not containing a siloxane group would by virtue of the presence of the vinyl group be involved in the curing reaction, it would logically follow that such an additive would not impair the curing process. Additionally, Kashiwagi states that such additional components can be used to reduce viscosity (Paragraph 81). As such, it would have been obvious to have included an acrylate or methacrylate compound as a reactive diluent in the composition.
Regarding Claims 3 and 5,
Kashiwagi teaches that here are no particular restrictions on method of application to generate a film (Paragraph 100). As Kashiwagi discloses the use of spin coating (Paragraph 100), it would logically follow that the composition can be dispensed as a liquid, and as such, could be adapted to be dispensed as a liquid via inkjet. One of ordinary skill in the art, seeking to reduce waste in the coating process, would seek to find alternate dispensing methods which better utilize the volume of the composition. As such, it would have been obvious to have used the composition via inkjet dispensing.
Regarding Claims 4 and 6,
Kashiwagi teaches that the composition can be cured via irradiation (Paragraph 94) and heat curing (Paragraph 96).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kozai (JP 2013-203794) teaches similar compositions to those of the instant application.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765