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 Objections
It is presumed that the first incidence of the word “with” in the third line beneath the formula for component (A2-1) should be replaced with “or”.
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.
Claims 1-2, 4, and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshitake et al., WO 2019/093295 for the reasons outlined previously.
Response to Arguments
As an initial matter it is not especially material, in the Examiner’s estimation, that Yoshitake endeavors to combine the same materials as those claimed to solve a different problem. “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below). Although Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) states that obviousness cannot be established by combining references “without also providing evidence of the motivating force which would impel one skilled in the art to do what the patent applicant has done” (emphasis added), reading the quotation in context it is clear that while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
It is further noted here that, Yoshitake was held as anticipatory of all aspects of claim 1 save for the provisos now adopted from original claims 2 and 7. As for proviso (ii), column 7, lines 14-16 indicate that the strongly overlapping range recited immediately above is preferred for enhancements in mechanical strength. Not only this but the skilled artisan is cognizant of the relationship between crosslink density and elastomeric hardness. As for proviso (i), it would seem to be the case that a filler is not even essential to achieving the dual objectives of formulating a liquid composition that cures to possess simultaneously good adhesive properties, mechanical strength, and elastomeric hardness given the fact that only one of the six inventive experiments even contains a filler. Also, the claims allow that as little as 1 phr of the filler can be incorporated and amounts this low would ostensibly not be enough to even influence the overall property profile.
As to the amounts of filler, while the Examiner concedes that there is no guidance for this parameter- though the Examiner does not acquiesce to the notion that said lack of guidance suggests the incorporation of filler is unobvious- the claimed range is substantially broad. Even very highly-filled compositions such as, for instance, a thermally-conductive polymer composition, where a percolation threshold must be met so as establish a continuous thermal pathway across a dimension of the filled polymer article, contain an amount of filler consistent with the higher bounds of Applicants’ claimed range. Certainly, amounts smaller than 1 phr would not be entertained for the reason mentioned supra.
The reasons why one of ordinary skill would add a filler are familiar to the skilled artisan. “It is prima facie obvious to add a known ingredient to a known composition for its known function.” In re Lindner 173 USPQ 356; In re Dial et al 140 USPQ 244. Additionally, the prior art composition (column 12, lines 61-67 and (instant invention [0001] of the instant Specification) have similar utility, e.g. encapsulants for optical semiconductors, and, hence, similar properties would be sought including properties made available by fillers.
As to the notion that the rejection should be invalidated by the experimental data furnished by Applicant, the Examiner respectfully disagrees. Generally speaking (but not always), a proper demonstration of unexpected results involves proving that those claimed aspects which are not anticipated convey to the invention properties/advantages/benefits which would not have been predicted by one of ordinary skill in the art based on current state of the art. In this case, that would mean that Applicant must show that the presence of a filler in varied quantities representative of the claimed range (and, actually, also a representative number of different fillers since the claims are not-at-all limiting in this regard), with all other aspects being the same, impart to the composition a property(s) that was/were not foreseeable by one of ordinary skill. That, or the data would have to establish that operating outside of the claimed range disclosed in proviso (ii) would bring one or more unexpectedly diminished results.
The comparative trials of the instant Specification differ from the inventive ones either by the employment of a different embodiment of (A1), the complete absence of (A1), or the complete absence of (A2). Applicants’ representative emphasizes the “high” molecular weight of (A2), (A2-1) specifically, the “low” molecular weight of (A1), (A1-1) specifically, and its high (vinyl) group content. Nowhere is it stipulated, however, that a certain molecular weight must be attached to (A2). The molecular weight of (A1) is only addressed by claim 4 and the vinyl group limitation is anticipated by Yoshitake. Certainly, the empirical data is not designed to prove critical any of these aspects and, anyway, two of them are anticipated by the reference.
The Examiner did find this one passage from Applicants’ arguments to be interesting:
“Notably, Embodiment 4 further demonstrates that the claimed compositions maintain this advantageous balance of properties even in the presence of a functional filler. Specifically, Embodiment 4 includes 100 mass parts of titanium dioxide while remaining a liquid at room temperature and producing a cured product exhibiting excellent adhesion, low surface tack, and a Shore A hardness of 81. This further demonstrates that the presently claimed compositional design, rather than merely the presence or absence of filler, is responsible for the advantageous combination of properties achieved by the claimed invention.”
At the same time, it is not clear why the skilled artisan would have expected the composition to lose its liquid characteristics or the balance of adhesion and low tack when cleared. (One of ordinary skill generally has the expectation of hardness being increased when many inorganic fillers are introduced.) Even if Applicant were able to explain why this was not predictable, it would still be necessary to do the same for a representative sampling of distinct fillers, in in quantities across the claimed range.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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September 2, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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