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 .
Response to Amendment
Applicant's arguments, see the remarks filed 4/22/2026, with respect to the rejection of claim(s) 11 and 13 under 35 U.S.C. 112(b) as set forth in paragraph(s) 5 and 8-9 of the action mailed 1/28/2026, have been fully considered and are persuasive. The rejection of claim(s) 11 and 13 has been withdrawn.
Applicant's arguments, see the remarks filed 4/22/2026, with respect to the rejection of claim(s) 6 under 35 U.S.C. 112(d) as set forth in paragraph(s) 11 of the action mailed 1/28/2026, have been fully considered and are persuasive. The rejection of claim(s) 6 has been withdrawn.
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 § 112
Claim 3 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.
Claim Rejections - 35 USC § 103
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) 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).
Response to Arguments
Applicant's arguments, see the remarks filed 4/22/2026, with respect to the rejection of claim(s) 3 under 35 U.S.C. 112(b) as set forth in paragraph(s) 5-6 of the action mailed 1/28/2026, have been fully considered but they are not persuasive.
Regarding claim 3, the Examiner respectfully disagrees with the Applicant’s position. As acknowledges by the Applicant, the recitation of 85 wt.% or greater and 90 wt.% demonstrate two embodiments with the former demonstrating a conspicuously broader range that the latter embodiment.
As an example, prior art applicable to the former may not be applicable to the latter; that is, if the prior art discloses a silicone polyether comprising up to 87 wt.% of the at least one of polyoxyethylene units or polyoxypropylene units, AND teaches against any proportion above said 87 wt.%, that reference would not be valid against the latter embodiment as it would be against the former embodiment. Indeed, and contrary to the Applicant’s assertions, satisfying either threshold does meet the limitation.
Further, it is unclear what is intended via the Applicant’s submission that “at a minimum, the recited alternatives do not create a genuine uncertainty as to the claim scope.” Indeed, it is unclear what is minimal, and thus relevant to the Applicant’s position, in this regard; and what would be a maximum, and if such a maximum would be a persuasive argument towards demonstrating uncertainty as to the claim grammar. Moreover, the Applicant’s characterization that the alternative embodiments are “disjunctive,” and those represent two separate choices, is the very definition of indefinite as it is unclear which of the two alternatives unequivocally demonstrate the scope of the presently claimed invention.
Thus, the rejection of claim 3 is maintained and repeated above.
Applicant's arguments, see the remarks filed 4/22/2026, with respect to the rejections of claim(s) 1, 3, 5-8, 10-11 and 13-15 over Harper et al. under 35 U.S.C. 103 and claim(s) 2 and 12 over Harper et al. under 35 U.S.C. 103 as set forth in paragraph(s) 14-15 of the action mailed 1/28/2026, have been fully considered but they are not persuasive.
Regarding the Applicant’s assertions against Harper and the presently claimed proportions of the polyoxyethylene units or the polyoxypropylene units, as noted in the priori art rejection(s), the Examiner has acknowledged that Harper does not specify the presently claimed proportions of the disclosed poly(-co-ethyleneoxide) moiety (i.e., the polyoxyethylene units presently claimed) for the disclosed block copolymer (i.e., 80 wt.% or greater). However, the Applicant is respectfully reminded that the (Examiner’s emphasis),
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
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, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
In this spirit, and as set forth in the previous and current prior art rejections, Harper does conspicuously 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. Further, as noted above, Harper teaches that the number of the alkoxy groups, which would adjust the overall wt. % of the polyoxyalkylene moieties comprising the resultant polysiloxane, which said polyoxyalkylene group(s) are taught as providing useful releasing agents (see, for example, page 9, lines 17-22 of Harper).
That is, Harper unambiguous guidance to the skilled artisan that the polyoxyalkylene groups contribute to the release properties of the disclosed release agent; and it would have been obvious to said skilled artisan to adjust the wt.% of the polyoxyalkylene portion of the polysiloxane/polyoxyalkylene block copolymer to that presently claimed (80 wt% or greater) based on the release properties required of the prior art’s intended application as presently claimed. The Examiner notes that the prior art rejections have not relied on inherency as currently argued. The Examiner further submits that said rejections did not simply rely on the Harper disclose for what the reference “could” teach, but was said rejections were instead directed to what one of ordinary skill in the art would glean from Harper in regards to the obviousness of the presently claimed invention.
Moreover, while not conceding the merits of the Applicant’s arguments, the Examiner acknowledges that Harper does disclose that the u, v, x, y integers describing the block copolymer provide a broad range of possible proportions for the siloxane and oxyalkylene moieties of the block copolymer. However, said integers do provide for a polyoxyethylene comprising said block copolymer. In addition, Harper does specifically disclose polyoxyethylene (and polyoxypropylene) blocks (page 3, 1st full paragraph).
Lastly, the Examiner respectfully acknowledges the data of Tables 1-9 presently disclosed. However, the Applicant’s assertions in regards to the presently claimed proportions (i.e., 80 wt.% or greater) of the polyoxyethylene are parallel to the disclosure of Harper, and the knowledge available to the skilled artisan, with respect to the polyoxyethylene’s contribution to the release properties of the compositions comprising them (see above). That is, one of ordinary skill in the art would expect lower release forces of the inventive examples presently disclosed, which have higher proportions of the ethyleneoxide moiety, versus the comparative examples which have no alkyleneoxides (PDMS-2) or ethyleneoxide in a wt.% well below the lower limit of 80 wt.% presently claimed (PDMS-3).
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 5/8/2026
Prosecution Insights