DETAILED ACTION
The communication dated 10/23/2025 has been entered and fully considered.
Claims 6 and 14 have been amended. Claims 1-5 and 16-19 have been cancelled. Claims 22-28 are is new. Claims 6-15 and 20-28 are pending.
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 Arguments
Applicant's arguments filed 10/23/2025 have been fully considered but they are not persuasive.
The Applicant argues that instant claim 6 is amended to make it clear that the product resulting from the process is a silicone-coated release liner, which as understood in the art would not be considered as a pressure sensitive adhesive. A process of producing such a release liner is not proposed by the art.
The Applicant also argues that KO does not teach a method as claimed of producing a release liner and indeed by teaching an adhesive, teaches methods that result in products that are different from and teach away from methods of producing release liner as claimed.
The Applicant argues that release liners and pressure sensitive adhesives are understood in the art as distinct products.
The Examiner agrees that pressure sensitive adhesives are understood in the art to be distinct products; however, the Examiner uses DOEHLER as the primary and KO as the secondary reference in the rejection below. DOEHLER does teach a release coating composition and the combination of DOEHLER and KO teach a silicone release liner. One of ordinary skill would combine DOEHLER and KO, as DOEHLER teaches the coating material exhibits good adhesive and very good release effect at the same time [0060]. DOEHLER further states that release coatings are preferably adhesive coatings [0061].
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.
Claim 25 is 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.
The recitation "the composition" in claim 25 is indefinite, since it is unclear whether it refers to the recitation of "a composition" in line 4 of claim 22, or the curable silicon composition (line 3 of claim 22). For the purposes of this examination, it will be assumed the recitation refers to the curable silicon composition.
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) 6-10, 12-15, 21-24 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, in view of Ko et al. (U.S. 5,308,887), hereinafter KO.
Regarding claim 6, DOEHLER teaches: A method for preparing a silicone-coated release liner (DOEHLER teaches a method for preparing a release liner [Abstract].), the method comprising: (i) applying an ultraviolet or electron beam (UV/EB) curable silicone composition to a substrate, to obtain a coated substrate (DOEHLER teaches applying an ultraviolet curable silicone composition [0018-0021; 0050] to a substrate [0038; 0086].); (ii) laminating a UV/EB transparent protective film to the coated substrate of (i), to obtain a laminated combination (DOEHLER teaches laminating a second PET film (which Examiner is interpreting as the protective film) over the coated mixture [Col. 18, lines 44-47]); and (iii) exposing the laminated combination of (ii) to ultraviolet (UV) or electron beam (EB) radiation (DOEHLER teaches exposing the composition to ultraviolet light [0054; 0086].), to thereby produce a silicone-coated release liner (DOEHLER teaches that the silicone composition is coated onto substrates and produce a silicone-coated release liner [0038; 0062].), wherein the UV/EB curable silicone composition comprises a (meth)acrylated polysiloxane (DOEHLER teaches the composition having a (meth)acrvlated polysiloxane [0002; 0017]).
DOEHLER does not teach: laminating a UV/EB transparent protective film to the coated substrate of (i), to obtain a laminated combination. In the same field of endeavor, coatings, KO teaches: laminating a UV/EB transparent protective film to the coated substrate of (i), to obtain a laminated combination (KO teaches laminating a second PET film (which Examiner is interpreting as the protective film) over the coated mixture [Col. 18, lines 44-47]); and (iii) exposing the laminated combination of (ii) to ultraviolet (UV) or electron beam (EB) radiation (KO teaches exposing the combination to ultraviolet light [Col. 18, lines 47-49]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER, by having a protective film, as suggested by KO, in order to cure the composition through the liners [Col. 12, lines 66-68; Col. 15, lines 11-16].
Regarding claim 7, KO further teaches: wherein the UV/EB transparent protective film is selected from the group consisting of polypropylene film, polyethylene film, and a film produced by a film casting process; and/or wherein the UV/EB transparent protective film is a decorative, holographic, or a non- decorative film; which provides a matte, glossy, or ultra high gloss finish (KO teaches laminating a second PET film (which Examiner is interpreting as the protective film) over the coated mixture [Col. 18, lines 44-47].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER, by having a protective film made from polyethylene, as suggested by KO, in order to cure the composition through the liners [Col. 12, lines 66-68; Col. 15, lines 11-16] and adhesives adhere well to polyethylene [Col. 13, lines 13-16].
Regarding claim 8, DOEHLER teaches: wherein the UV/EB curable silicone composition of (i) is a UV curable silicone composition, and the laminated combination of (ii) is exposed to mercury vapor lamp UV radiation in (iii) (DOEHLER teaches exposing the composition to mercury vapor lamps [0059; 0086]).
Regarding claim 9, DOEHLER teaches: wherein the UV/EB curable silicone composition comprises: based on a total weight of the UV/EB curable silicone composition, (A) 70-95 wt.% of a further composition which contains at least one siloxane having ethylenically unsaturated, radically-polymerizable groups, wherein the groups may be either terminal and/or pendant on a polysiloxane backbone (DOEHLER teaches 10 to 99 wt % of one or more organ modified silicones having ethylenically unsaturated, radically polymerizable groups [0020]. DOEHLER teaches a siloxane with 6 pendant SiH groups [0080]); (B) 0-10 wt. % of an acrylic organic compound (DOEHLER teaches 0 to 70 wt % of an acrylic organic compound [0034]); and (D) 1-8 wt.% of a photoinitiator (DOEHLER teaches photoinitiators in the amounts of 0.01 to 10 wt% [0057]), and wherein the laminated combination of (ii) is exposed to light emitting diodes (LED) in (iii) (DOEHLER teaches suitable radiation sources for curing the coating materials include UV-LED lamps [0059]).
Regarding claim 10, DOEHLER teaches: wherein the UV/EB curable silicone composition is an EB curable silicone composition (DOEHLER teaches the silicone composition can be cured by electron beams [0054]), and the laminated combination of (ii) is exposed to electron beam radiation source in (iii) (DOEHLER teaches the curable silicone composition can be cured by exposure to a number of radiation sources, such as electron beam radiation [0054].).
Regarding claim 10, KO further teaches: wherein the UV/EB curable silicone composition is an EB curable silicone composition, and the laminated combination of (ii) is exposed to electron beam radiation source in (iii) (KO teaches the curable silicone composition can be cured by exposure to a number of radiation sources, such as electron beam radiation [Col. 3, lines 12-16]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER, by having the laminated combination be cured by electron beams, as suggested by KO, as it’s a known method in the art. See KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.").
Regarding claim 12, DOEHLER teaches: wherein the substrate is selected from the group consisting of polypropylene, polyethylene, polyethylene terephthalate (PET), polyester, bi-axially oriented polypropylene (BOPP), biaxially-oriented polyethylene terephthalate (BoPET), high density polyethylene, low density polyethylene, and polypropylene plastic resin (DOEHLER teaches the substrate is a BOPP [0086].).
Regarding claim 13, KO further teaches: further comprising: (iv) delaminating the UV/EB transparent protective film from a UV/EB cured silicone coated substrate (KO teaches the top liner was removed [Col. 18, lines 59-61]). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER, by removing the top liner, as suggested by KO, in order to expose an adhesive surface for further use [Col. 12, lines 61-65].
Regarding claim 14, KO further teaches: wherein said method does not comprise gas inertization or an oxygen scavenging agent (KO teaches during the process [Col. 18, lines 25-58], no gas inertization is required. KO also teaches an oxygen scavenging agent may optionally be added, indicating the process does not need an agent [Col. 11, line 58 – Col. 12, lines 1-3]. KO also teaches the procedures can be polymerized in air [Col. 12, lines 4-6].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER, by not using gas inertization or an oxygen scavenging agent, as suggested by KO, in order to polymerize [Col. 12, lines 4-6] and it’s a known method in the art. See KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.").
Regarding claim 15, DOEHLER and KO teach the same process steps as stated above and would be expected to produce substantially the same result absent evidence to the contrary.
Regarding claim 21, DOEHLER teaches: wherein the silicone composition comprises an acrylated polydimethyl siloxane (DOEHLER teaches the composition having an acrylated polydimethyl siloxane [0015].), . . . , an acrylated amine synergist (DOEHLER teaches amine synergists [0053].), and a photoinitiator (DOEHLER teaches photoinitiators [0053].).
DOEHLER does not explicitly teach an acrylic monomer. In the same field of endeavor, coatings, KO teaches: wherein the silicone composition comprises an acrylated polydimethyl siloxane (KO teaches the silicone composition comprises a polydimethylsiloxane [Col. 8, lines 55-58].), an acrylic monomer (KO teaches an acrylic monomer [Abstract].), . . . , and a photoinitiator (KO teaches a photoinitiator [Abstract].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER, by having an acrylic monomer, as suggested by KO, in order for great ease of handling [Col. 4, lines 56-68].
Regarding claim 22, DOEHLER teaches: wherein the curable silicone composition comprises: based on a total weight of the composition, (A) 70-95 wt. % of a composition which contains at least one siloxane having ethylenically unsaturated, radically-polymerizable groups, wherein said groups may be terminal and/or pendant on a polysiloxane backbone (DOEHLER teaches the composition comprises 10 to 99 wt. % of silicon atoms and for the silicon atoms to carry ethylenically unsaturated, radially polymerizable groups [0020]. DOEHLER teaches the siloxane can be referred to as terminally and/or pendant [0004; 0075; 0080].); (B) 0-10 wt. % of an acrylic organic compound (DOEHLER teaches the composition has 1 to 90 wt. % of an acrylic organic compound [0019; 0022-0024].); and (D) 1-8 wt. % of a photoinitiator (DOEHLER teaches 0.1 to 5 wt. % of photoinitiator [0058]).
Regarding claim 23, DOEHLER teaches: wherein component (A) is a (meth)acrylated polydiC1-8 alkylsiloxane (DOEHLER teawches the components (I), (II) and (III) have ethylenically unsaturated, radically polymerizable groups that are selected from acrylic and/or methacrylic ester functions [0022; 0034]. DOEHLER teaches (meth)acrylate polydialkylsiloxane [0075; 0079-0084].).
Regarding claim 24, DOEHLER teaches: wherein the acrylic organic compound is present and is (a) a low viscosity, tetra-functional polyol acrylate, (b) trimethylolpropane triacrylate (TMPTA), or (c) 1,6-Hexanediol diacrylate (HDDA) (DOEHLER teaches trimethylolpropane triacrylate is in the composition [0070].).
Regarding claim 28, DOEHLER teaches: wherein component (A) is at least one component selected from the group consisting of (i) di-Me, hydrogen-terminated, reaction products with acrylic acid and 2-ethyl-2-[(2-propenyloxy)methyl]-1,3-propanediol; and (ii) siloxanes and silicones, 3-[3-(acetyloxy)-2-hydroxypropoxy]propyl Me, di-Me, 3-[2-hydroxy-3-[(1-oxo-2-propen-1-yl)oxy]propoxy]propyl Me (DOEHLER teaches the composition having an acrylated polydimethyl siloxane [0015].). In the alternative, KO teaches dimethylsiloxane for the compositions [Col. 8, lines 50-56]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER by having dimethylsiloxane in the compositions, as suggested by KO, in order for adhesion [Col. 8, lines 55-59].
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, and Ko et al. (U.S. 5,308,887), hereinafter KO, as applied to claim 6 above, and further in view Zoller (U.S. PGPUB 2009/0145542), hereinafter ZOLLER.
Regarding claim 11, DOEHLER and KO teaches all of the claimed limitations as stated above, but is silent as to: wherein the substrate has a surface energy of greater than 40 dynes. In the same field of endeavor, adhesives, ZOLLER, teaches a substrate with a surface energy of at least about 30 dynes, which overlaps with the claimed range. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER and KO, by having the substrate having a surface energy of at least 30 dynes, as suggested by ZOLLER, in order to enhance surface bonding [0035].
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, and Ko et al. (U.S. 5,308,887), hereinafter KO, as applied to claim 8 above, and further in view FUKATANI et al. (U.S. PGPUB 2018/0258326), hereinafter FUKATANI.
Regarding claim 20, DOEHLER and KO teach all of the claimed limitations as stated above, but are silent as to: wherein the mercury vapor lamp UV radiation in (iii) is in a range of 220-400 nm. In the same field of endeavor, adhesives, FUKATANI teaches the composition was irradiated with light having a wavelength of 365 nm using a mercury lamp [0078], which meets the claimed range. The light irradiation is determined based on the reactive diluent and photopolymerization initiator [0060]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER and KO, by irradiating the composition with a wavelength of 365 nm, as suggested by FUKATANI, in order to increase the storage modulus of the adhesive [0058].
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, and Ko et al. (U.S. 5,308,887), hereinafter KO, as applied to claim 9 above, and further in view JUNGHANS et al. (U.S. PGPUB 2019/0308398), hereinafter JUNGHANS.
Regarding claim 21, DOEHLER and KO teach all of the claimed limitations as stated above. In the alternative, in the same field of endeavor, coatings, JUNGHANS teaches an acrylated amine synergist [0051]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify KO and DOEHLER, by having an amine synergist, as suggested by JUNGHANS, as a suitable initiator for cross-linking reactions [0051; Table 2.1] and wear resistance [0025].
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, and Ko et al. (U.S. 5,308,887), hereinafter KO, as applied to claim 22 above, and further in view Amajjahe et al. (U.S. PGPUB 2019/0048228), hereinafter AMAJJAHE.
Regarding claim 23, DOEHLER and KO teach all of the claimed limitations as stated above. In the alternative, in the same field of endeavor, coatings, AMAJJAHE teaches (meth)acrylate-bearing polysiloxanes [0010; 0016-0018]. AMAJJAHE teaches the process makes it possible to provide (meth)acrylate-bearing (poly) siloxanes according to the formula (I) [0016]. AMAJJAHE teaches alkyl radicals having 1 to 14 carbon atoms or monocyclic aromatics, further preferably methyl [0018] and another identical carbon radicals can be used, such as alkyl radicals having 1 to 30 carbon atoms [0019]. AMAJJAHE teaches various formulas of a meth(acrylate)-bearing polysiloxanes [0016-0059]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER and KO, by having a meth(acrylate)-bearing polysiloxanes, as suggested by AMAJJAHE, in order to create a particularly economic production of polymers [0009; 0012].
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, and Ko et al. (U.S. 5,308,887), hereinafter KO, as applied to claim 22 above, and further in view Bilodeau (U.S. PGPUB 2005/0215655), hereinafter BILODEAU.
Regarding claim 25, DOEHLER and KO teach all of the claimed limitations as stated above, but are silent as to: wherein the composition comprises 1 to 5 wt. % of a mercapto synerist or an oligoamine synergist. In the same field of endeavor, coatings, BILODEAU teaches about 2% to about 6% by weight of an amine synergist in the composition [0053], which overlaps with the claimed range. Overlapping ranges are prima facie evidence of obviousness. BILODEAU teaches the amine synergists include oligomer (polymer) tertiary amine compounds and polymerizable amino acrylate compounds [0033]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER and KO, by having 2% to about 6% of an amine synergist in the composition, as suggested by BILODEAU, in order to cure the component by UV [0019].
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, and Ko et al. (U.S. 5,308,887), hereinafter KO, as applied to claim 22 above, and further in view JUNGHANS et al. (U.S. PGPUB 2019/0308398), hereinafter JUNGHANS.
Regarding claim 26, DOEHLER and KO teach all of the claimed limitations as stated above, but are silent as to: wherein the photoinitiator is a blended photoinitiator combination comprising bis(2,4,6-trimethylbenzoyl)phenylphosphine oxide, ethyl(2,4,6-trimethylbenzoyl)-phenylphosphinate, and 2-hydroxy-2-methyl-1-phenylpropanone. In the same field of endeavor, coatings, JUNGHANS teaches: wherein the photoinitiator is a blended photoinitiator combination comprising bis(2,4,6-trimethylbenzoyl)phenylphosphine oxide, ethyl(2,4,6-trimethylbenzoyl)-phenylphosphinate, and 2-hydroxy-2-methyl-1-phenylpropanone (JUNGHANS teaches the photoinitiators can comprise α-hydroxyalkylphenones such as 2-hydroxy-2-methyl-1-phenylpropanone and acylphosphine oxides such as 2,4,6-trimethylbenzoyldiphenylphosphine oxide and ethyl 2,4,6-trimethylbenzoylphenylphosphinate [0049].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify KO and DOEHLER, by having the photoinitiators comprise α-hydroxyalkylphenones such as 2-hydroxy-2-methyl-1-phenylpropanone and acylphosphine oxides such as 2,4,6-trimethylbenzoyldiphenylphosphine oxide and ethyl 2,4,6-trimethylbenzoylphenylphosphinate, as suggested by JUNGHANS, in order to initiate radical reactions [0048].
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over DOEHLER et al. (U.S. PGPUB 2017/0369619), hereinafter DOEHLER, and Ko et al. (U.S. 5,308,887), hereinafter KO, as applied to claim 6 above, and further in view Bilodeau (U.S. PGPUB 2005/0215655), hereinafter BILODEAU.
Regarding claim 27, DOEHLER and KO teach all of the claimed limitations as stated above, but are silent as to: wherein the composition further comprises: (C) 1 to 5 wt. % of an acrylated synergist. In the same field of endeavor, coatings, BILODEAU teaches about 2% to about 6% by weight of an amine synergist in the composition [0053], which overlaps with the claimed range. Overlapping ranges are prima facie evidence of obviousness. BILODEAU teaches the amine synergists include oligomer (polymer) tertiary amine compounds and polymerizable amino acrylate compounds [0033]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify DOEHLER and KO, by having 2% to about 6% of an amine synergist in the composition, as suggested by BILODEAU, in order to cure the component by UV [0019].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE BEHA whose telephone number is (571) 272-2529. The examiner can normally be reached MONDAY - FRIDAY 9 A.M. - 5 P.M.
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/C.B./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748