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 Amendments and Arguments
Applicant’s amendments and arguments, filed January 21, 2026, with respect to the rejection(s) under 35 U.S.C. 112(b) have been fully considered and are persuasive. Applicant has amended the claims in accordance with the Examiner’s suggestion. Accordingly, the rejections have been withdrawn.
Applicant’s amendments and arguments, filed January 21, 2026, with respect to the rejection(s) of claim 3 under 35 U.S.C. 112(d) have been fully considered and are persuasive. Applicant has amended claim 3 in accordance with the Examiner’s suggestion. Accordingly, the rejections have been withdrawn. However, claim 4 as amended does not recite a lower bound and therefore the rejection is maintained.
Applicant’s arguments, filed January 21, 2026, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) have been fully considered but they are not persuasive. Applicant argues that the Office has not established that the composition of Rhodes would necessarily exhibit the claimed peel adhesion and UL 94 rating based on the allegation that “Rhodes does not teach all of the claimed ingredients in the claimed amounts, and the composition of Rhodes are not identical to those recited in claim 1.” Applicant further argues that “the specific combination of components and their amounts, including the iron oxide filler mixture component as claimed, contributes to achieving the recited properties, and Rhodes does not teach this specific combination. However, it is the position of the Office that all of the claimed components and amounts thereof are anticipated by Rhodes and that Applicant does not point to any structural features not disclosed by Rhodes. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433 (see MPEP 2112.01). As there is no argument made towards any specific structural limitations in which Rhodes is deficient and no evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product, the rejections of record are maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites wherein “the pressure sensitive adhesive comprises an iron oxide filler mixture component content of not greater than about 10 wt%...” and does not recite a lower bound for the limitation. Accordingly, the “not greater than about 10 wt%” can be construed to include values greater than the “at least about 0.5 wt%” recited in claim 1, thus reciting a broader range in claim 4. Furthermore, the limitation wherein “the pressure sensitive adhesive comprises an iron oxide filler mixture component content of not greater than about 10 wt%...” does not appear to further limit or narrow the upper bound of the range recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rhodes et al. (US20170218239, hereinafter referred to as “Rhodes”).
As to Claim 1: Rhodes teaches a silicone pressure sensitive adhesive composition ([0002]) comprising a silicone-based adhesive matrix (corresponding to the claimed “silicone based pressure sensitive adhesive component) and metallic particulates dispersed therein ([0010]), wherein said metallic particulates may be black iron oxide ([0034]) present in an amount of 1 to 2% by weight based on the weight of the adhesive ([0041]), which is within the claimed range.
Rhodes does not measure the property of “peel adhesion when measured at 25 ˚C” or teach a UL 94 rating for the adhesive.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. peel adhesion and UL 94 rating, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes further teaches that the adhesive composition may comprise metallic particulates dispersed therein ([0010]), wherein said metallic particulates may be black iron oxide ([0034]).
As to Claims 3-4: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes further teaches that the adhesive composition may comprise metallic particulates dispersed therein ([0010]), wherein said metallic particulates may be black iron oxide ([0034]) present in an amount of 1 to 2% by weight based on the weight of the adhesive ([0041]), which is within the claimed range.
As to Claim 5: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes further teaches that the adhesive composition may comprise metallic particulates dispersed therein ([0010]), wherein said metallic particulates may be black iron oxide ([0034]).
As to Claim 6: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes teaches that the silicone pressure sensitive adhesive composition ([0002]) comprises a silicone-based adhesive matrix (corresponding to the claimed “silicone based pressure sensitive adhesive component) wherein said silicone adhesive includes a component a) which may be one or more of a polydimethylsiloxane gum, polymethylphenyl siloxane gum ([0048]), which reads on the claimed silicone adhesive as defined by the instant specification para. [0021]-[0022].
As to Claim 7: Rhodes teaches the pressure sensitive adhesive of claim 6 (supra).
Rhodes teaches that the silicone pressure sensitive adhesive composition ([0002]) comprises a silicone-based adhesive matrix (corresponding to the claimed “silicone based pressure sensitive adhesive component) wherein said silicone adhesive includes a component a) which may be one or more of a polydimethylsiloxane gum, polymethylphenyl siloxane gum ([0048]) (i.e., a methyl silicone adhesive or a phenyl silicone adhesive).
As to Claims 8-9: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes further teaches that the silicone pressure sensitive adhesive may be crosslinked in the presence of a catalyst such as a platinum catalyst or a peroxide crosslinker ([0044]).
As to Claim 10: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes teaches that the silicone pressure sensitive adhesive composition ([0002]) comprises a silicone-based adhesive matrix (corresponding to the claimed “silicone based pressure sensitive adhesive component) wherein said silicone adhesive includes silicone resins such as MQ resins or blends of resins ([0049]).
As to Claims 11-12: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes further teaches that the composition may comprise one or more solvents which may be toluene or xylene ([0055]).
As to Claim 13: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes does not measure the property of “peel adhesion when measured at 25 ˚C.”
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. peel adhesion, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 14: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes does not measure the property of “peel adhesion when measured at 100 ˚C.”
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. peel adhesion, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 15: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes does not measure the property of “peel adhesion when measured at 250 ˚C.”
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. peel adhesion, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 16: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes does not measure or report a “tack” of the adhesive composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. tack, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 17: Rhodes teaches the pressure sensitive adhesive of claim 1 (supra).
Rhodes does not measure or report a UL 94 rating for the adhesive composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. UL 94 rating, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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, Mark Eashoo can be reached on (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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