RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1-8 and 10, filed on 20 November 2025, have been entered in the above-identified application. Claims 11-13 have been added and claim 9 has been cancelled by applicant. Claims 1-8 and 10-13 are pending.
WITHDRAWN REJECTIONS
The objections to claims 4-6 made of record on page 3, paragraph 5 of the office action mailed 22 July 2025 have been withdrawn due to Applicant’s amendment.
The 35 U.S.C. § 112(b) rejection of claim 8, made of record on page 3, paragraph 6 of the office action mailed 22 July 2025 has been withdrawn due to Applicant’s amendment.
The 35 U.S.C. § 102 rejection of claims 1-5 and 8 over Fukuda (U.S. Pat. 5,656,711), made of record on page 4, paragraph 7 of the office action mailed 22 July 2025 has been withdrawn due to Applicant’s amendment in the response filed 20 November 2025. In particular, the limitations of former claim 9 have been included in claim 1 by amendment, and Fukuda does not teach or suggest this limitation.
NEW REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-8, 10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (U.S. Pat. 5,656,711) in view of JP 2016-216679 A. Applicant’s provided machine translation of JP ‘679 is relied upon for analysis. Page and paragraph and line numbers refer to the translation unless noted.
Regarding claim 1, Fukuda describes a curable composition comprising (see col. 1, line 56 through col. 2, line 15):
A linear fluorinated amine oligomeric compound having two alkenyl groups in one molecule and having a perfluorinated polyether structure in the main chain. Example 1 at col. 19 uses the following compound (9) having two alkenyl groups in the molecule in which Rf2 is defined as the perfluorinated polyether structure as shown. This reads on component (A) as claimed.
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A fluorinated organohydrogensiloxane having at least one group selected from the class consisting of a monovalent perfluorooxyalkyl, monovalent perfluoroalkyl, divalent perfluorooxyalkylene, and divalent perfluroalkylene, and further having at least two hydrosilyl (Si-H) groups in a molecule. Example 1 at col. 19 uses the following compound (10). Note that the compound has perflourooxyalkylene groups and 8 Si-H groups in the molecule. This reads on component (B) as claimed.
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A platinum group compound catalyst, further described at col. 13, lines 43-65. The amount of catalyst is from 1 to 1000 ppm, preferably 10-500 ppm of platinum group element based on the weight of the entire curable composition. See col. 13, line 66 through col. 14, line 30. This reads on component (C) as claimed. Example 1 at col. 19 uses such a compound.
A cyclic organosiloxane which includes at least one hydrogen atom directly bonded to a silicon atom (Si-H group) and at least one of an epoxy group and trialkoxysilyl group attached to a silicon atom through a carbon atom or a carbon and an oxygen atom, see col. 14, lines 31-42. This compound may, but need not include a fluoroalkyl or perfluoropolyether group in the molecule, see id. Suitable example compounds are shown in col. 15-16. Example 1 at col. 19 uses the following compound (12) which is free of fluorine in the molecule. This reads on component (D) as claimed. The amount of this compound in Example 1 is 1 part based on 100 parts of compound (A). However, Fukuda teaches more generally using from 0.1 to 20 parts by weight, preferably 0.3 to 10 parts by weight, of this component (D), see col. 17, lines 44-49. Thus it would have been obvious to have used a smaller amount of this component within the range of 0.01 to 1 part by weight as claimed.
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Fukuda further teaches that the amount of component (B) is such that there are 0.5 to 5 moles, preferably 1 to 2 moles of the Si-H group in components (B) and (D) combined per mol of the aliphatic unsaturated group in the entire composition, particularly component (A). See col. 13, lines 30-42. Most often, the amount of (B) is from 0.1 to 50 parts by weight based on 100 parts by weight of component (A). See id. Example 1 uses 2.7 parts of component (B) based on 100 parts of component (A). This is within the claimed range.
The composition has adhesion to various substrates, see col. 1, lines 5-8. Glass is a suitable substrate, see Table 1 at col. 20.
The composition is cured, see abstract and col. 18, lines 53-61.
While Fukuda does not specify that a 2 mm thick cured product of the composition has at least 85 % transmittance to 500 nm light as claimed, Fukuda teaches a cured composition comprising each of components (A)-(D) as claimed and as such is expected to necessarily possess the claimed attribute.
Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
However Fukuda does not specify an optical component comprising a cured product of the curable composition.
JP ‘679 discloses a curable composition which had good adhesion when cured, see p. 1, [0001] and p. 4, [0013]. The composition includes:
A linear polyfluoro compound having two or more alkenyl groups in one molecule, a perfluoropolyether structure in the main chain, and an alkenyl group content of 0.005 to 0.200 mol per 100 g of the compound (see p. 3, [0010]), this reads on component (A) as claimed;
An organohydrogenpolysiloxane represented by the following structure (see p. 13, [0059] and p. 14 of the original document).
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The variable groups A, R1, R2, and R3 are defined at p. 13, [0059]. In particular, A can represent a monovalent perfluoroalkyl group or monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group. Suitable example compound (B) materials are shown in paragraph [0068] of the original document and include the following:
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These materials each include a monovalent perfluoroalkyl group connected to the silicon atom by a divalent linking group, and each include at least two hydrogen atoms directly bonded to silicon atoms (Si-H groups) and are free of an epoxy group or an alkoxy group directed bonded to a silicon atom in the molecule. This reads on component (B) as claimed;
A hydrosilylation catalyst in the amount of 0.1 to 500 ppm, preferably 0.5 to 200 ppm of platinum group atoms relative to 100 parts by mass of component A), see p. 16, [0075]. This reads on component (C) as claimed;
A cyclic compound with a monovalent perfluoroalkyl group or monovalent perfluorooxyalkyl group bonded to a silicon atom via a divalent hydrocarbon group which may contain oxygen atoms and an epoxy group or trialkoxysilyl group or both, see p. 3, lines 103-105 and p. 16, [0076] and p. 17, [0077]. This reads on component (E) as claimed.
JP ‘679 teaches that the cured composition is used for optical semiconductor encapsulation, see p. 1, [0001]. The composition is cured as described at p. 4, [0011].
Fukuda and JP ‘679 are analogous because they are similar in structure and function, as each discloses curable adhesive compositions which employ linear polyfluoro compounds as a main ingredient along with organohydrogenpolysiloxanes, hydrosilylation catalysts with platinum-group metal, and cyclic siloxane compounds with epoxy or trialkoxysilyl groups also having monovalent perfluoroalkyl or monovalent perfluorooxyalkyl groups as described above.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the curable composition of Fukuda with an optical component to arrive at the claimed invention, as Fukuda teaches using the curable composition with a variety of electric and electronic parts, see col. 19, lines 1-8, and glass is listed as a suitable adherend, see Table 2 in col. 20.
Regarding claim 2, Example 1 of Fukuda specifies that the polymer of formula (9), which reads on component (A) as described above, has a vinyl content of 0.013 mol/100 g. This is within the claimed range of 0.005 to 0.3 mol/100 g. See col. 19, lines 16-20.
Regarding claim 3, Example 1 of Fukuda (see col. 19) specifies that the polymer of formula (9), which reads on component (A) as described above includes the following perfluorooxyalkyl group:
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which simplifies to (C3F6O)n+m. This meets the claimed general formula (1) in which a = 3 and b = n+m = 97.
Regarding claim 4, Example 1 of Fukuda (see col. 19) specifies that the polymer of formula (9), which reads on component (A) as described above. This has the claimed structure of general formula (2) in which R1 and R2 are each is either -CH3 or -CH=CH2, there is one R1 and one R2 group which are alkenyl groups and thus the total is 2 of out the 6 such groups, R3 is a methyl group, the total of c+d is 97 and thus c and d are each integers between 1 and 150 as claimed, and e is 2.
Regarding claim 5, Example 1 of Fukuda (see col. 19) specifies using the tackifier of formula (12), which reads on component (D) as described above. This reads on the claimed general formula (4) in which f is 2, g is 2, f+g is 4, R6 is a methyl group which is an unsubstituted alkyl group having 1 carbon atom, and A is either a trialkoxysilyl group bonded to a silicon atom through a divalent hydrocarbon group, or an epoxy group bonded to a silicon atom through a divalent hydrocarbon group that includes an oxygen atom.
Regarding claim 6, Fukuda describes a curable composition which includes components (A)-(D) reading on components (A)-(D) as described above.
Fukuda further notes that component (D) may be a cyclic organosiloxane which includes at least one hydrogen atom directly bonded to a silicon atom (Si-H group) and at least one of an epoxy group and trialkoxysilyl group attached to a silicon atom through a carbon atom or a carbon and an oxygen atom, see col. 14, lines 31-42. This compound may, but need not include a fluoroalkyl or perfluoropolyether group in the molecule, see id. Suitable example compounds are shown in col. 15-16.
Example 2 at col. 20-21 uses the following compound (15) which includes a perfluorooxyalkyl group. This reads on component (E) as claimed. The amount of this compound is 1 part based on 100 parts of compound (A). See col. 20, lines 50-62.
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Although Fukuda does not have a specific example which employs components which read on (A), (B), (C), (D), and (E) as claimed, Fukuda does specify Example 1 which reads on using components (A), (B), (C), and (D) while Example 2 reads on using components (A), (B), (C), and (E). Fukuda also teaches that the organosiloxane compounds can be used in a mixture, see col. 14, lines 43-46. It would have been obvious to have used some of the materials reading on component (D) and component (E) together to arrive at the claimed invention. There is a reasonable expectation of success as Fukuda teaches that each of these organosiloxane compounds permit the composition to develop self-tackiness, see col. 14, lines 31-42.
Regarding claim 7, The organosiloxane used in Example of Fukuda (see col. 21) has the structure as shown above which reads on component (E).
This reads on the claimed general formula (5) in which h is 2, i is 1, j is 1, h+i+j is 4, R7 is a methyl group which is an unsubstituted alkyl group having 1 carbon atom, D is a monovalent perfluoro group bonded to a silicon atom via a divalent hydrocarbon group that includes an oxygen atom and a nitrogen atom, and E is a trialkoxysilyl group bonded to a silicon atom through a divalent hydrocarbon group.
Other suitable materials shown in col. 15-18 also read on the general formula (5) structure.
Regarding claim 8, Fukuda teaches that the composition of Example 1 is adhered to glass as shown in Table 1 in col. 20.
Regarding claim 10, Fukuda teaches that the composition of Example 1 is adhered to glass as shown in Table 1 in col. 20. Thus the optical component includes glass as a constituent material.
Regarding claim 13, Fukuda teaches that the amount of component (D) may be from 0.1 to 20 parts by weight, see col. 17, lines 44-49. This overlaps the claimed range of 0.01 to 0.2 parts by weight.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 20 November 2025 regarding the 35 U.S.C. § 103 rejection of claims 1-5 and 8 of record over Fukuda have been carefully considered but are deemed unpersuasive. The Examiner has interpreted the arguments as they pertain to the present rejections over Fukuda in view of JP 2016-216679 A.
Applicant argues that Fukuda in Example 1 uses one part of a material which reads on component (D), however claim 1 as amended uses 0.01 to less than 1 part by weight of this material, see p. 11 of the remarks.
However, Fukuda is not limited to its examples. In accordance with MPEP §2123 a rejection is proper over a prior art reference’s broad disclosure instead of merely preferred embodiments or examples because patents are relevant as prior art for all information they contain. In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804 (Fed. Cir. 1989). In this case, Fukuda teaches using from 0.1 to 20 parts by weight, preferably 0.3 to 10 parts by weight, of this component, see col. 17, lines 44-49.
Applicant further argues that claim 1 requires the transmittance of light at 500 nm through a 2 mm thick cured product to be more than 85%, a feature not disclosed in Fukuda.
However, Fukuda teaches a cured composition comprising each of components (A)-(D) as claimed and as such is expected to necessarily possess the claimed attribute.
Accordingly, a 35 U.S.C. § 103 rejection based on Fukuda is still presented.
Allowable Subject Matter
Claims 11 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner's statement of the reasons for allowance:
The base claim is claim 1.
Claim 11 is deemed allowable over the references since the references do not disclose or render obvious the specific components (A) as shown in general formula (3) in claim 11 in combination with the curable fluorpolyether adhesive agent components (B), (C), and (D) as specified in claim 1 and used in an optical component.
While Fukuda teaches a linear polyfluoro compound within the scope of component (A) and formula (2) in Claims 1 and 4, Fukuda does not teach or suggest the aromatic-substituted amido group-containing linear polyfluoro compound of formula (3) as recited in claim 11.
Claim 12 is separately deemed allowable over the references since the references do not disclose or render obvious the specific components (B) as shown in general formulae (13) to (17) in claim 12 in combination with the curable fluorpolyether adhesive agent components (A), (C), and (D) as specified in claim 1 and used in an optical component.
While Fukuda discloses a fluorine-containing organohydrogensiloxane component (B), the materials described at col. 9, line 56 through col. 13, line 29 do not read on the claimed formulae (13) to (17). The closest component is that used in Example 1 at col. 19 which is most similar to formula (14) as shown in the claim however this component does not include the (SiOR8R8)x2 group as of formula 14 as claimed.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pat. 10,647,899 from the same inventor recites a similar fluorinated adhesive composition but does not specify or suggest using a material reading on component (D) as claimed.
U.S. Pat. 11,866,579 also from the same inventor also recites a similar fluorinated adhesive composition, but is not available as prior art as the inventive entity is the same. The reference also does not specify or suggest using a material reading on component (D) as claimed.
Conclusion
Claims 1-8, 10, and 13 are rejected. Claims 11 and 12 are objected to.
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759