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 .
DETAILED ACTION
Response to Amendment
Applicant's amendments filed on 02/17/2026 have been entered. Claims 1-7 and 15-16 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shiono et al (US 2014/0107263, ‘263 hereafter).
Regarding claims 1-4 and 6, ‘263 discloses an adhesive composition ([0006]-[0021]) comprising (A) 60 parts by weight of a linear perfluoropolyether compound specifically represented by following chemical formula ([0024]-[0032], Example 1, [0093]-[0095], formula 8):
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which has at least two alkenyl group, with numerical average molecular weight being 16,700, and the content of alkenyl group is 0.012 ([0093]), satisfying limitations of present claims 1-4; (B) a fluorine-containing organohydrogenpolysiloxane compound having two or more hydrogen atoms bonded to silicon atoms in one molecule and one or more fluorine-containing organic groups, being free of an epoxy group and a trialkoxysilyl group, and having a numerical average molecular weight in the range of 2000 to 20,000 ([0095], formula 12) and present in an preferred amount of 0.8 to 2.0 mol of hydrogen atoms to a mole alkenyl groups in the component (A) ([0042]); (C) 0.1 to 500 ppm in terms of platinum atom with respect to the mass of the component (A) of a platinum compound ([0044]-[0047]); and (D) an organohydrogen-polysiloxane compound having following formula (Example 1, [0095], formula 13):
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which has hydrogen atom bonded to silicon atoms, epoxy group bonded to silicon atoms in one molecule, monovalent perfluoroalkyl groups bonded to a silicon atom via a divalent linking group containing a carbon atom or an oxygen atom, and has a numerical average molecular weight around 1000 (Wn=1077), which can be present in an amount falling within the range of 0.005 to 1.5 mol of hydrogen atoms to 1 mole alkenyl groups in the component (A) (Example 1, 2.5 part formula 13, molecular weight is about 1077, H mole% is 1/1077=0.00093 mol/1g, 2.5*0.00093/0.012=0.19). ‘263 dose not set forth that the weight loss of the component (A) and (B) at 150 °C for 1 hour, however, since components (A) and (B) as of ‘263 have chemical structures being identical to the presently claimed components (A) and (B, it is reasonable to expect that the weight loss of these components fall within presently claimed ranges. "Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).( See MPEP 2112.01).
Regarding claim 5, ‘263 discloses the component (B) can be represented by following chemical formulae ([0040]), satisfying present claim 5:
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Regarding claim 7, ‘263 discloses that the composition may further include an adhesion promoter being carboxylic anhydride ([080]), wherein the amount of carboxylic anhydride falling in the presently claimed range (Example 1, [0094]-[0095], estimate amount of carboxylic anhydride 0.8*25%=0.2 parts per 100 component (A)). In light of these teachings, one of ordinary skill in the art would have used the amount as taught to render the composition having desired adhesion properties.
Regarding claims 15 and 16, 263 also discloses that the component (B) includes (B1) a cyclic fluorine-containing organohydrogenpolysiloxane compound and (B2) a fluorine-containing organohydrogenpolysiloxane having a linear siloxane structure, wherein the amount of the component (B2) in weight% is less than the amount of the component (B1)(Example 1, [0095], compound 11 and 12).
Response to Arguments
Applicant's arguments filed on 02/17/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
Conclusion
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 RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782