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
Applicant's election with traverse of Species (C), claims 1-3, 5-8 and 10-15, in the reply filed on 12/17/2025 is acknowledged. The traversal is on the ground(s) that the breadth of Harper’s disclosure in regards to the proportions of the polyoxyalkylene units is too broad towards teaching the presently claimed silicone polyether comprising 80 wt.% or greater of the polyoxyethylene and/or polyoxypropylene units. This is not found persuasive because, as noted in the prior art rejections set forth below, Harper further discussed that the polyoxyalkylene units are included towards the releasability of the disclosed release liners, which is an endeavor also provided by the inventive examples presently disclosed as argued by the Applicant.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 4 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/17/2025.
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 3, 5, 11 and 13 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation of 85 wt.% or greater, and the claim also recites 90 wt.% or greater, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation of 82 wt.% or greater, and the claim also recites 85 wt.% or greater, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 recites the limitation " the coating" in line 1. There is insufficient antecedent basis for this limitation in the claim as a coating has not been previously introduced.
Claim 13 recites the limitation " the coating" in line 2. There is insufficient antecedent basis for this limitation in the claim as a coating has not been previously introduced.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3, 5-8 and 10-11 and claims 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harper et al. (WO 2004/085561 A2).
Regarding claim 1, Harper teaches a film-forming polymer and block copolymer comprising a release agent coated (layer of a composition) onto a substrate towards a release liner for a PSA tape, a release coating for a backside self-wound PSA tape, etc.; which said block copolymer comprises a polysiloxane block and a polyoxyalkylene block (b) silicone polyether) (page 3, line 26 to page 4, line 16), and which said film-forming polymer comprises, inter alia, polymers or copolymers of vinyl acetate and poly(vinyl alcohol) (a) polymeric material having a hydrogen covalently bonded to an oxygen atom) (page 14, lines 13-28).
The Examiner notes that Harper does not instruct that the film-forming polymer and the block copolymer demonstrate covalent bonding between each other.
Harper also teaches that the film-forming polymer is present at 35 to 54.9 parts by weight (pbw) and that the block copolymer is present at 0.1 to 20 pbw (page 15, lines 12-19), which provides the film-forming polymer in an amount, relative to the combined proportions of the film-forming polymer and the block copolymer, a range of approximately 64 to less than 100 wt.%, which overlaps that presently claimed (90 to 99.5 wt.%).
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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
The Examiner also notes that the film-forming polymer is employed to provide the disclosed compositions with “continuous film” properties and to function as a matrix to bond the block copolymer to the substrate, whereas the block copolymer provide the release properties (i.e., the release agent) to the composition (page 3, lines 19-30; page 4, lines 19-21; page 13, lines 13-15). Harper further elaborates that the film-forming polymer places the release agent at a surface of the coated substrate towards release properties and mechanical properties towards securing the block copolymer to the substrate (page 14, lines 1-12).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the film-forming polymer and the block copolymer in the presently claimed proportions based on at least the releasability and mechanical properties required of the prior art’s intended application as in the present invention.
While Harper does not specify the presently claimed proportions of the poly(-co-ethyleneoxide) moiety (polyoxyethylene units) of the disclosed block copolymer (80 wt.% or greater), Harper does instruct one skilled in the art that the polyether moieties of the block copolymer, are provided to the release coatings to adjust release properties/performance (page 2, lines 7-11 and lines 16-19; page 5, lines 26-27). Harper further teaches that the amount of the alkoxy groups (i.e., ethoxy groups) in attached to the polysiloxane are directed to the polyoxyalkylene group useful as the release agent (page 9, lines 17-22).
Harper continues to teach that the block copolymer comprises the structure given by the disclosed formula with E comprising, inter alia, an alkyl; L comprising, inter alia, a single bond; R comprising, inter alia, a methyl, which said R = methyl teaches that the polysiloxane block portion(s) is(are) poly(dimethylsiloxane); and with u, v, x, and y selected to allow the composition to be coated on a substrate and to exhibit controlled release properties such as u = 1 to 50, v = 0 to 50, x = 1 to 50 and y = 1 to 50 (page 2, lines 14-29; page 7, lines 10-25), which said v = 0 provides for the polyether block of the block copolymer to comprise no propyleneoxide portion (i.e., poly(-co-ethyleneoxide)). The Examiner respectfully submits that the range of values for u, x and y provide block copolymer with the poly(-co-ethyleneoxide) moiety in an amount that overlaps that presently claimed (80 wt.% or greater).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide block copolymer with the presently claimed proportions of the poly(-co-ethyleneoxide) moiety based on the releasability properties required of the prior art’s intended application as in the present invention.
Regarding claims 3 and 5, as noted above, Harper teaches that the block copolymer (i.e., the poly(dimethylsiloxane-co-ethyleneoxide) AB block copolymer) comprises the poly(-co-ethyleneoxide) moiety in proportions that overlap that presently claimed (85 wt.% or greater, 82 wt.%).
Regarding claims 6-7, as noted above, Harper teaches that the film-forming polymer and the block copolymer are present in respective proportions that overlap that presently claimed (5 to 10 wt.%, 95 to 99.5 wt.%).
Regarding claim 8, as noted above, Harper teaches that the film-forming polymer comprises, inter alia, polymers or copolymers of vinyl acetate and poly(vinyl alcohol).
Regarding claim 10, as noted above, Harper teaches that the film-forming polymer comprises, inter alia, polymers or copolymers of poly(vinyl alcohol), and that the block copolymer comprises ethyleneoxide moieties, which would provide a degree of hydrogen between the oxygens of the ethyleneoxides and the -OH groups of the poly(vinyl alcohol).
Regarding claim 11, as noted above, Harper teaches that the release coating, or resultant release layer, comprises the film-forming polymer and the block copolymer identical to that presently claimed, and thus would provide a degree of writable capabilities identical to that presently claimed.
Regarding claim 13, Harper teaches a backing coated on both sides with an adhesive, and that a release liner coated with a release coating in contact with the adhesive-coated backing sides (article) (page 17, line 32 to page 18, line 2).
Regarding claims 14-15, the BACKGROUND INFORMATION section of Harper demonstrates that the use acrylic, silicone and rubber adhesives are established PSA’s are employed with release liners such as those inventive release liners disclosed in Harper (page 1, lines 8-16). Harper teaches that the adhesive is a PSA (page 17, line 25-28).
Claim(s) 2 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harper et al. (WO 2004/085561 A2).
Regarding claim 2, Harper teaches the release agent coated onto a substrate towards a release liner for a PSA as in the rejection of claim 1 set forth above, which is equally applicable to the current claim.
Regarding claim 12, Harper teaches the substrate towards a release liner comprises, inter alia, paper or thermoplastic films (polymeric film) (page 17, lines 14-24).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/24/2026