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 .
Election/Restrictions
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/3/2025.
Response to Amendment
The amendment filed on 9/9/2025 has been entered. Claims 3, 14 and 16 are currently amended. Claim(s) 1-20 is/are pending with claim(s) 11-20 withdrawn from consideration. Claim(s) 1-10 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 9/9/2025, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 9/9/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Delis discloses that the heat activatable catalysts (Pt°-olefin complexes) are especially preferred at paragraphs [0244]-[0245]. Delis suggests that heat activatable catalysts and photoactivatable catalysts are alternatives to each other at paragraph [0247] and in the examples, all of which contain a heat activatable catalyst and none of which contain a photoactivatable catalyst. (The examples Delis use a Pt0 complex, Karstedt catalyst, and do not include a photoactivatable catalyst, such as (C-2) of the present invention.) Therefore, Delis does not teach the combination of both (C-1) and (C-2) in the amounts described in claim 1 of the present application.
In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Delis’ divinyltetramethyl-disiloxane (Pt-Karstedt catalyst) reads on the claimed (C-1), as evidenced by the applicant [0034 spec.]; η5-methylcyclopentadienyl)-trimethyl-platinum reads on the claimed (C-2), as evidenced by the applicant [0035 spec.]. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose" In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), MPEP 2144.06.I). Since Delis teaches that one or more hydrosilylation catalyst can be used, and recognized divinyltetramethyl-disiloxane and η5-methylcyclopentadienyl)-trimethyl-platinum as equivalents for the same purpose, it would have been obvious to one of ordinary skill in the art at the time of filing to combine divinyltetramethyl-disiloxane and η5-methylcyclopentadienyl)-trimethyl-platinum in Delis’ composition.
Applicant argued that Delis discloses that the inhibitor, (D), is optional. Delis further discloses that the amount of inhibitor is not critical at paragraph [0265].
In response, patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Delis teaches the inhibitor (D) and the amount of inhibitor. This is sufficient to constitute prior art.
Applicant argued that Delis does not teach or suggest any primary or secondary alcohol corresponding to component (E), and does not disclose any amount of a primary or secondary alcohol, such as the amount of component (E) in claim 1 of the present application.
In response, the secondary reference Brasseur teaches benzyl alcohol, which reads on the claimed (E). The office action stated the reasoning of combining Delis and Brasseur.
Applicant argued that there is no teaching or suggestion that would motivate one skilled in the art to substitute a different inhibitor for any reason. There is no suggestion that doing so would provide a benefit to the composition of Delis. Delis and Brasseur would not motivate one skilled in the art to add benzyl alcohol as an additional inhibitor to a composition of Delis, which already contains a maleate or fumarate inhibitor, with a reasonable expectation of success to arrive at the present invention, wherein a low catalyst loading is used to form a composition that cures at low radiation intensity.
In response, Delis teaches that the inhibitor (D) includes ethynyl cyclohexanol [0262], but does not teach the claimed primary or secondary alcohol as the inhibitor. In the same field of endeavor, Brasseur teaches a silicone release coating composition comprising an inhibitor including ethynyl cyclohexanol and benzyl alcohol [0063]. In other words, Brasseur discloses benzyl alcohol to be art-recognized equivalents to ethynyl cyclohexanol which are equally useful as an inhibitor for a silicone release coating composition. Therefore, it would have been obvious to one of ordinary skill to utilize benzyl alcohol instead of ethynyl cyclohexanol as the inhibitor because it is obvious to substitute art-recognized equivalents for the same purpose. See MPEP 2144.06. Benzyl alcohol reads on the claimed primary alcohol. The combination of Delis and Brasseur is not adding benzyl alcohol to a composition that already has an inhibitor, which is ethynyl cyclohexanol (not maleate or fumarate inhibitor), but substituting ethynyl cyclohexanol with benzyl alcohol.
Applicant argued that Delis does not have any examples of a radiation cured composition, and Delis does not teach or suggest any radiation intensity for curing a composition.
In response, radiation intensity is not part of the claims. Even if radiation intensity is included in the claims, it is a property of the product. “Products of identical chemical composition cannot 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Applicant argued that as shown in comparative Example 13 discussed at paragraph [0064] of the present application, a sample containing ethynyl cyclohexanol (ETCH ) used as the inhibitor would not cure when Karstedt's catalyst (used in the Examples of Delis) corresponding to C-1 was used.
In response, the reason that the comparative sample would not cure is due to the use of only one of the two catalysts (C-1) [0064 spec.], not because of the use of ETCH.
Applicant argued that the examples in the present applicant showed unexpected results.
In response, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 1 recites 90 to 99 weight parts of (A) a polyorganosiloxane having at least two aliphatically unsaturated groups per molecule. This covers a wide variety of polyorganosiloxane having unlimited aliphatically unsaturated groups per molecule. However, the examples only employ 97.95 parts of one polyorganosiloxane (A-1) [Table 1-3 spec.]. It is not known if other types of polyorganosiloxane or other concentration (e.g., 90 parts or 99 parts) of polyorganosiloxane would give the same “unexpected results”. Claim 1 recites 1 to 10 weight parts of (B) a polyorganohydrogensiloxane. This covers a wide range of polyorganohydrogensiloxane depending on the number of SiH bonds, etc. However, the examples only employ 2.05 parts of one polyorganohydrogensiloxane (B-1). It is not known if other polyorganohydrogensiloxane or other concentration (e.g., 1 part or 10 parts) of polyorganohydrogensiloxane would give the same “unexpected results”. Similarly, the examples are not commensurate in scope with the claimed (C), (D), and (E). Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Delis et al (US 20110124804 A1) in view of Brasseur et al (US 20140010963 A1).
Regarding claim 1, Delis teaches a curable silicone release coating composition [0002] comprising:
100 parts of (A) one or more polyorganosiloxanes having in average at least two alkenyl groups,
0.2-100 parts of (B) one or more polyorganosiloxanes having in average at least two SiH groups,
0.1-5 parts of (C) one or more hydrosilylation catalyst,
0-2 parts of (D) optionally one or more inhibitors of the hydrosilylation reaction [0049-0055, 0141-0147].
The hydrosilylation catalyst (C) includes Pt0-olefin complex having vinylsiloxane ligands such as divinyltetramethyl-disiloxane (Pt-Karstedt catalyst) [0244, 0385], and photoactivatable catalysts such as η5-methylcyclopentadienyl)-trimethyl-platinum [0247, 0258], both are sufficient to provide from 1 to 500 ppm by weight platinum per weight of polyorganosiloxane components (A) to (B) [0246, 0259].
The (D) includes dimethyl maleate and diethyl fumarate [0262] in an amount of 0.0005 to 2 wt% [0266].
The examiner submits that Delis’ (A) reads on the claimed (A), with the amount of 100 parts being equivalent to 48.3-99.7 wt% based on the total components, overlapping the claimed 90-99 wt%. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
Delis’ (B) reads on the claimed (B), with the amount of 0.2-100 parts being equivalent to 0.2-48 wt% based on the total components, overlapping the claimed 1-10 wt%.
Delis’ divinyltetramethyl-disiloxane (Pt-Karstedt catalyst) reads on the claimed (C-1), as evidenced by the applicant [0034 spec.]; η5-methylcyclopentadienyl)-trimethyl-platinum reads on the claimed (C-2), as evidenced by the applicant [0035 spec.]. Since Delis teaches that one or more hydrosilylation catalyst can be used, it would have been obvious to one of ordinary skill in the art at the time of filing to combine divinyltetramethyl-disiloxane and η5-methylcyclopentadienyl)-trimethyl-platinum in Delis’ composition.
The amount sufficient to provide from 1 to 500 ppm by weight platinum overlaps the claimed ≤ 200 ppm and ≤ 100 ppm.
Delis’ diethyl fumarate reads on the claimed (D-1) wherein R=alky group of 2 carbon atoms. Delis’ dimethyl maleate reads on the claimed (D-2) wherein R=alky group of 1 carbon atom. The amount of 0.0005 to 2 wt% is equivalent to 5-20000 ppm, overlapping the claimed 300-1000 ppm.
Delis teaches that the inhibitor (D) includes ethynyl cyclohexanol [0262], but does not teach the claimed primary or secondary alcohol as the inhibitor.
In the same field of endeavor, Brasseur teaches a silicone release coating composition comprising an inhibitor including ethynyl cyclohexanol and benzyl alcohol [0063]. In other words, Brasseur discloses benzyl alcohol to be art-recognized equivalents to ethynyl cyclohexanol which are equally useful as an inhibitor for a silicone release coating composition. Therefore, it would have been obvious to one of ordinary skill to utilize benzyl alcohol instead of ethynyl cyclohexanol as the inhibitor because it is obvious to substitute art-recognized equivalents for the same purpose. See MPEP 2144.06. Benzyl alcohol reads on the claimed primary alcohol.
Delis’ 0.0005-2 parts of inhibitor is equivalent to 0.0005-0.97 wt% based on the total components, overlapping the claimed 0.3-0.8 parts of (E).
Regarding claim 2, Delis teaches that (A) can be a branched polyorganosiloxane having a formula of [MaDbTcQd]m
wherein m=1-2000, a=1-40, b=0-2000, c=0-50, d=0 or 1, M=R3SiO1/2, D=R2SiO2/2, T=RSiO3/2, and Q=SiO4/2, wherein R is an organic group, with the proviso that the siloxanes in average comprise at least two alkenyl groups per molecule, and R is selected in particular from n-, iso-, tertiary- or C1-C30-alkyl, C2-C12-alkenyl, C1-C12-alkoxy(C1-C12)alkyl, C5-C30-cyclic alkyl, C5-C30-cyclic alkenyl or, C6-C30-aryl, C7-C30-alkylaryl [0152-0165]. This formula reads on the claimed formula in claim 2 which is QDax4M4 when b=0, or TDax3M3 when b=1.
Regarding claim 3, Delis teaches that (B) is SiH-containing polyorganosiloxanes of the general formula (II): [Ma2Db2Tc2Qd2]m2
M=R43SiO1/2, D=R42SiO2/2, T=R4SiO3/2, Q=SiO4/2, m2=from 1 to 1000, a2=from 1 to 10, b2=from 0 to 1000, c2=from 0 to 50, d2=from 0 to 1, and R4 is R (defined above), R1 (vinyl) or hydrogen, with the proviso that in average at least two radicals R4 per molecule are hydrogen [0201-0212]. A preferred (B) has a formula (IIa): HR2SiO(R2SiO)z(RHSiO)pSiR2H [0217], which reads on the claimed formula in claim 3 wherein p=0, q overlaps Delis’ z, r overlaps Delis’ p, and s=2.
Regarding claim 4, Delis teaches Karstedt's catalyst as the claimed (C-1) as stated above. Delis teaches η5-methylcyclopentadienyl)-trimethyl-platinum as the claimed (C-2) as stated above, which is equivalent to the claimed trimethyl(methylcyclopentadienyl)platinum(IV). Delis teaches both of these catalysts are in an amount sufficient to provide 3 ppm to 100 ppm platinum [0246, 0259], which overlaps the claimed ranges of 20-40 ppm and 10-30 ppm, respectively.
Regarding claim 5, Delis teaches diethyl fumarate as the claimed (D) as stated above.
Regarding claim 6, Delis teaches the claimed (D) in an amount of 5-20000 ppm as stated above, overlapping the claimed 400-800 ppm.
Regarding claims 7-9, Delis in view of Brasseur teaches 0.0005-0.97 wt% of benzyl alcohol as stated above, which reads the claimed aromatic alcohol. The amount of 0.0005-0.97 wt% is based on the total components, and overlaps the claimed 0.5 parts by weight, based on combined weights of starting materials (A), (B), (C), (D), and (E).
Regarding claim 10, Delis teaches that the composition comprises a solvent, anchorage additives and fillers [0268-0270].
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762