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
Examiner withdraws the previous restriction requirement in view of the amendments to Claims 1 and 21. All pending claims are now subject to examination.
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 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) 1-11, 14-17, and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Mazurek ‘578 (U.S. PGPub 5,527,578).
Claim 1 - Mazurek ‘578 is regarded as being the prior art closest to the subject-matter of claim 1 and relates to radiation curable vinyl-silicone release coating compositions frequently employed as release coatings in pressure-sensitive adhesive tapes (col.1, 1.11-13; col.4, 1.1-5). Mazurek ‘578 describes the preparation of a composition comprising octadecyl acrylate, isooctyl acrylate, trimethylol propane triacrylate, methacryloxyurea siloxane and benzophenone (ex. 47 and 48). The octadecyl acrylate is used as a solution in cyclohexane. The compositions were coated onto BOPP and cured in order to prepare coated release sheets. The coatings were dried after curing to remove the residual cyclohexane. The subject-matter of claim 1 therefore differs from Mazurek ‘578 in that the method of making a release coated article includes the use of a release coating composition comprising no more than 1 wt.% of non-polymerizable organic solvent and is therefore new. Since no results have been shown that indicate an advantage of utilizing the claimed method as compared to the method used in Mazurek ‘578, the problem to be solved by the present invention may only be regarded as the provision of an alternative method of making a release coated article. Mazurek ‘578 mainly focus on solventless radiation curable release coating compositions (col.1, I. 64 - col.2, 1.3; col.3, 1.59-67). Furthermore, Mazurek ‘578 describes the preparation of various solventless compositions including a branched CS-alkyl acrylate, a crosslinker having at least two C=C, a polymerization initiator and a linear alkyl acrylate having less than 18 carbon atoms (e.g. ex. 39-46). It is to be noticed that Mazurek ‘578 suggests octadecyl acrylate as equal alternative for, for ex., lauryl acrylate (col.9, 1.29-37). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made or filed to have modified the invention of Mazurek ‘578 by combining the teachings in Mazurek ‘578 and would prepare a solventless composition including octadecyl acrylate in order to provide an alternative method. Col. 5 lines 1-4 disclose the application of said release coating to a sheet commensurate with the claim; col. 10 lines 60-61 disclose a preferential use for the release coating is on substrates for pressure-sensitive adhesives. This teaching fairly enables the further step of contacting a pressure-sensitive adhesive to the prepared release coating substrate to form the desired pressure-sensitive adhesive product. As regards the limitation where the crosslinking component(s) lacks diorganosiloxane moieties, Examiner notes the specification of the instant application at Page 9. Only compounds where n in the listed formula is greater than 0 are listed as diorganosiloxanes. With reference to Mazurek ‘578 at the abstract, the disclosed formula, when selected with all R3 groups the same and all R4 groups the same, is commensurate with the case in the specification where n is 0; therefore, Mazurek ‘578 contemplates compositions where the crosslinking component(s) lack diorganosiloxane moieties.
Claim 2 – Mazurek ‘578 renders obvious the method of claim 1 wherein the polymerization initiator is a free-radical initiator (Table 1, benzophenone; the phenyl group thereon initiates free radical polymerization upon activation).
Claim 3 – Mazurek ‘578 renders obvious the method of claim 2 wherein the free-radical initiator is a photoinitiator (Table 1, benzophenone).
Claim 4 – Mazurek ‘578 renders obvious the method of claim 1 wherein the monomer(s) with linear alkyl group and branched alkyl group are present at a weight ratio such that the release coating is a liquid at 25°C (e.g. col 14 lines 29-31).
Claim 5 – Mazurek ‘578 renders obvious the method of claim 1 wherein the monomer(s) with a linear alkyl group and the monomer(s) with a branched alkyl group are present at a weight ratio less than 80:20, 75:25, 70:30, 65:35, 60:40, or 55:45 (col 10 lines 50,57, viscosity controlled by degree of prepolymerization; selection of ratios to obtain desired prepolymerization values for viscosity is held as prima facie obvious).
Claim 6 – Mazurek ‘578 renders obvious the method of claim 1 wherein the monomer(s) with a linear alkyl group and the monomer(s) with a branched alkyl group are present at a weight ratio less than 50:50, 45:55, 40:60, 35:65,or 30:70 (col 10 lines 50,57, viscosity controlled by degree of prepolymerization; selection of ratios to obtain desired prepolymerization values for viscosity is held as prima facie obvious).
Claim 7 – Mazurek ‘578 renders obvious the method of claim 1 wherein the monomer(s) with a branched alkyl groups comprises octadecyl acrylate (as discussed in the rejection of Claim 1).
Claim 8 – Mazurek ‘578 renders obvious the method of claim 1 wherein the monomer(s) with a branched alkyl group are lauryl acrylate (Table 1; lauryl acrylate is a C12 alkyl commensurate with R1 and R2, and R3 is hydrogen).
Claim 9 – Mazurek ‘578 renders obvious the method of claim 8 wherein the sum of the number of carbons in R1 and R2 is 7 to 17 (rejected as claim 8 with 12 carbons).
Claim 10 – Mazurek ‘578 renders obvious the method of claim 1 wherein the monomer(s) with a branched alkyl group comprise at least three structural isomers of alkyl (meth)acrylate (Table 1, e.g. HDDA, TMPTA, and TMPTMA are commensurate with the claimed formula).
Claim 11 – Mazurek ‘578 renders obvious the method of claim 1 wherein the crosslinking component(s) comprises at least 3 ethylenically unsaturated groups (Table 1, e.g. TMPTA; each acrylate contains one ethylenically unsaturated group, so the triacrylate of TMPTA contains three such groups).
Claim 14 – Mazurek ‘578 renders obvious the method of claim 1 wherein the crosslinking component(s) is not an aliphatic urethane (meth)acrylate (e.g. Column 9 Lines 10-25, the disclosed X-Y linkage therein does not yield an acrylate in the final organopolysiloxane) .
Claim 15 – Mazurek ‘578 renders obvious the method of claim 1 wherein the ethylenically unsaturated groups are free-radically polymerizable groups (Column 9 Lines 25-42).
Claim 16 – Mazurek ‘578 renders obvious the method of claim 15 wherein the free-radically polymerizable groups are (meth)acrylate groups (Column 9 Lines 25-42).
Claim 17 – Mazurek ‘578 renders obvious the method of claim 1 wherein the substrate is selected from an organic polymeric film, metal coated film, metallic foil, paper, or fibrous web (Column 10 Line 64 – Column 11 Line 9).
Claim 21 - Mazurek ‘578 is regarded as being the prior art closest to the subject-matter of claim 21 and relates to radiation curable vinyl-silicone release coating compositions frequently employed as release coatings in pressure-sensitive adhesive tapes (col.1, 1.11-13; col.4, 1.1-5). Mazurek ‘578 describes the preparation of a composition comprising octadecyl acrylate, isooctyl acrylate, trimethylol propane triacrylate, methacryloxyurea siloxane and benzophenone (ex. 47 and 48). The octadecyl acrylate is used as a solution in cyclohexane. The compositions were coated onto BOPP and cured in order to prepare coated release sheets. The coatings were dried after curing to remove the residual cyclohexane. The subject-matter of claim 1 therefore differs from Mazurek ‘578 in that the method of making a release coated article includes the use of a release coating composition comprising no more than 1 wt.% of non-polymerizable organic solvent and is therefore new. Since no results have been shown that indicate an advantage of utilizing the claimed method as compared to the method used in Mazurek ‘578, the problem to be solved by the present invention may only be regarded as the provision of an alternative method of making a release coated article. Mazurek ‘578 mainly focus on solventless radiation curable release coating compositions (col.1, I. 64 - col.2, 1.3; col.3, 1.59-67). Furthermore, Mazurek ‘578 describes the preparation of various solventless compositions including a branched CS-alkyl acrylate, a crosslinker having at least two C=C, a polymerization initiator and a linear alkyl acrylate having less than 18 carbon atoms (e.g. ex. 39-46). It is to be noticed that Mazurek ‘578 suggests octadecyl acrylate as equal alternative for, for ex., lauryl acrylate (col.9, 1.29-37). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made or filed to have modified the invention of Mazurek ‘578 by combining the teachings in Mazurek ‘578 and would prepare a solventless composition including octadecyl acrylate in order to provide an alternative method. Col. 5 lines 1-4 disclose the application of said release coating to a sheet commensurate with the claim; col. 10 lines 60-61 disclose a preferential use for the release coating is on substrates for pressure-sensitive adhesives. This teaching fairly enables the further step of contacting a pressure-sensitive adhesive to the prepared release coating substrate to form the desired pressure-sensitive adhesive product. As regards the limitation where the crosslinking component(s) lacks diorganosiloxane moieties, Examiner notes the specification of the instant application at Page 9. Only compounds where n in the listed formula is greater than 0 are listed as diorganosiloxanes. With reference to Mazurek ‘578 at the abstract, the disclosed formula, when selected with all R3 groups the same and all R4 groups the same, is commensurate with the case in the specification where n is 0; therefore, Mazurek ‘578 contemplates compositions where the crosslinking component(s) lack diorganosiloxane moieties.
Claim 22 – Mazurek ‘578 renders obvious the pressure sensitive adhesive article of claim 21 wherein the pressure sensitive adhesive comprises at least one polymer selected from an acrylic copolymer or natural rubber (Column 11 Lines 47-51).
Claim 23 – Mazurek ‘578 renders obvious the pressure sensitive adhesive article of claim 21 wherein the monomer(s) with a linear alkyl group and the monomer(s) with a branched alkyl group are present at a weight ratio less than 80:20, 75:25, 70:30, 65:35, 60:40, or 55:45 (col 10 lines 50,57, viscosity controlled by degree of prepolymerization; selection of ratios to obtain desired prepolymerization values for viscosity is held as prima facie obvious).
Claim 24 – Mazurek ‘578 renders obvious the pressure sensitive adhesive article of claim 21 wherein the monomer(s) with a linear alkyl group and the monomer(s) with a branched alkyl group are present at a weight ratio less than 50:50, 45:55, 40:60, 35:65, or 30:70 (col 10 lines 50,57, viscosity controlled by degree of prepolymerization; selection of ratios to obtain desired prepolymerization values for viscosity is held as prima facie obvious).
Claim 25 – Mazurek ‘578 renders obvious the method pressure sensitive adhesive article of claim 21 wherein the monomer(s) with a branched alkyl group comprise at least three structural isomers of three structural isomers of alkyl (meth)acrylate (Table 1, e.g. HDDA, TMPTA, and TMPTMA are commensurate with the claimed formula).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL G MILLER whose telephone number is (571)270-1861. The examiner can normally be reached M-F 9:00-5:30 EST.
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/MICHAEL G MILLER/ Primary Examiner, Art Unit 1712