DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 6/11/26 is acknowledged. The traversal is on the grounds that it would not be an undue burden to examiner the all claims at once. This is not persuasive. Applicants’ statement that the Examiner must “evaluate” the underlying process steps of claim 1 in assessing claims 18 to 23 does not address the complexity of the situation. First, there is much more to the examination of clams 18 to 23 than an evaluation of the process steps. Second, since claim 18 is in product by process format the Examiner must consider all other manners by which the adhesive could reasonably be expected to be formed, some of which were noted in the restriction requirement. Third, examination requires much more that an evaluation of the prior art. Finally note that there are various limitations found in these claims (such as cyclosiloxane content) that would require further evaluation than simply the process of claim 1. In light of the above the Examiner maintains that it would be an undue burden to examine all claims at once.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
For claim interpretation purposes, the Examiner notes that the polysiloxane (ii) is being interpreted as being a silanol terminated polyorganosiloxane and (ii) is thus limited thereto. This is consistent with that found in paragraph 56 of the specification.
Claim Rejections - 35 USC § 112
Claims 3, 8 to 10 and 14 are rejected under 35 U.S.C. 112(b) 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.
Claim 3
It is confusing to define G as > 0 when G is a polymerizable group (see definition
later in the claim) and not a numerical variable. Furthermore, assuming this is intended to mean that there is 0 or more “G” groups, it is unclear how that can be when there is only 1 “G” group shown in the formula.
The phrase “included by not limited to…” renders this claim unclear as the exact breadth of this is not known.
The phrase “may include…” renders this claim indefinite since it is not clear if this allows for other moieties or not.
Claims 8 to 10
It is unclear from the formula shown in these claims where the groups are attach-ed to the siloxane backbone. This is true particularly in claim 10 which specifically show formulas with no divalent groups.
Also in claim 10, “x” and “y” are not defined.
Claim 14
Reference to “forming the mixture of (i) and (ii)” lacks antecedent basis.
Claim Rejections - 35 USC § 102 and 103
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.
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 to 3, 7 and 11 to 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ulman et al. 5,482,988.
Ulman et al. teach a method of making a pressure sensitive adhesive which con-
tains an MQ resin (column 2, lines 40 - 67) and a silanol terminated polyorganosiloxane (column 3, lines 23 - 48). See also column 3, line 50, through column 4, line 40, which teaches various PSAs containing these two components. This meets claimed (i) and (ii).
Only in column 4, line 25, is a catalyst disclosed and it is optional. From this it follows that the other MQ/polyorganosiloxane mixtures do not contain a catalyst and even in the composition of column 4, lines 20 to 30, it is not required. As such the “… is conducted in the absence of an external catalyst” limitation in claim 1 is met.
Finally see the siloxane (iii) on the bottom of column 4 through column 5. This is a siloxane comprising a hydrophilic group, specific a polyether such as found in the I group of claims 3 and 7. In this manner each of claims 1, 3 and 7 are anticipated.
For claim 2, note that the polyether group is able to be ionized such that this meets the “ionizable” group in this claim.
For claims 11 and 12, see column 5, lines 61 to 64, which teaches a preferred range of 5 to 15 wt% of the siloxylated polyether (iii). This falls completely within the breadth of claim 11, and thus is anticipatory. This also overlaps to such a significant degree with the range in claim 12 such that one having ordinary skill in the art would have anticipated an amount within the claimed range from this preferred teaching.
For claims 13 to 15, see column 6, lines 22 and on, which teaches mixing the MQ resin and silanol terminated polyorganosiloxane first, followed by mixing with silylated polyether and heating to a temperature of above 100 oC which falls within the claimed range. Note too that Examples 1 to 10 heat to a temperature of 100 oC.
For claim 16, note that water is continuously driven off in the preparation of the PSAs in the working examples.
As these examples apply to the instant claims, the Examiner acknowledges that they include ammonia as a catalyst, this is clearly not required, as noted supra.
Claims 1 to 7, 10 to 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sweet 4,865,920 in view of Saxena 2013/0172419.
Sweet teaches pressure sensitive adhesives and a method of making. As can be
seen from the bottom of column 1, the adhesive includes a silicone resin and a silicone fluid. These are more fully defined on column 2, line 45 to column 3, line 48. This teach-es both an MQ siloxane resin meeting (i) and a silanol terminated polyorganosiloxane meeting (ii). Column 3, line 34, states that the composition is optionally cured and only then is a catalyst taught. This clearly anticipates a composition without an external catalyst. The adhesive of Sweet is used as a transdermal patch adhesive (column 1, line 51). This does not teach the presence of component (iii) as claimed.
Saxena teaches various siloxanes that meet the requirement of claimed (iii). See the teachings directed to the silicone ionomer starting on paragraph 34. The siloxanes can be used in pressure sensitive adhesives and paragraphs 125 and 126 specifically teach silicone pressure sensitive adhesives used in transdermal patches.
From this one having ordinary skill in the art would have found it obvious to add the silicone ionomer of Saxena to the adhesive in Sweet in an effort to optimize and improve the properties thereof as a transdermal drug deliver adhesive. In this manner claim 1 is rendered obvious.
For claim 2, again see paragraph 35 in Saxena which teaches such groups.
For claim 3, the siloxane in paragraph 35 teaches the same general formula including M, D, T and Q units. This also teaches the same -A-I group as claimed. See paragraphs 49 to 60.
For claim 4, note that this embraces both disiloxanes of the M2M2 formula as well
as MQ resins having at least one M2 unit. Both types of siloxanes are within the breadth of the formula in Saxena such that one having ordinary skill in the art would have found the selection of such units, and thus the resulting ionomeric silicone, to have been obvious. See for instance paragraph 78 which teaches that a+b can be 2 while all other units (including a) can be 0. Even more specifically see Example 2a which prepares such a disiloxane.
For claims 5 and 6, see the specific I groups found in paragraphs 49 to 52 and 53 to 58 which meet these formulas.
For claim 7, see the pendant polyether group shown in Example 2c as well as paragraph 64 and formula (XI).
For claim 10 note that this limits the selection of the polyether amine but does require that the polyether amine be present such that the groups noted supra meet this claim.
For claims 11 and 12, adjusting the amount of silicone ionomer of Saxena that is added to the PSA of Sweet in an effort to obtain the desired properties and benefits associated therewith would have been obvious and well within routine optimization for the skilled artisan.
For claims 13 to 15, see column 3, lines 30 to 35, which teaches mixing the MQ resin and silanol terminated polyorganosiloxane. The skilled artisan would have been motivated to prepare such a PSA, followed by adding the silicon ionomer of Saxena such that these claims are rendered obvious. Heating to a temperature of 100 oC or more would have been obvious in view of the teachings in column 4, lines 15 to 20, of Sweet which teach 100 oC or greater. Note too that Examples 1 to 1 heat to 100 oC.
For claim 16, note that water is removed in the preparation of the PSAs in the working examples.
For claim 17, note that column 6, line 34, teaches dissolving in an aliphatic solvent prior to coating the composition.
As the working examples apply to the instant claims, the Examiner acknowledges that they include ammonia as a catalyst, this is clearly not required, as noted supra.
Claims 1, 3, 7 to 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kaeppler et al. 6,197,914, in view of Paul et al. 2019/0119450.
Kaeppler et al. teach a method of making an MQ resin meeting claimed (i). See
column 2, lines 17 to 23, as well as the entire teachings throughout. The MQ resin can be mixed with a polyorganosiloxane such as (VII) found on the bottom of column 4. See also column 6, lines 7 to 12. This polyorganosiloxane can have terminal -OH groups and meets the requirement of claimed (ii). As is clear from that which is found in Kaeppler et al., this blending does not require a catalyst.
Column 6, lines 29 to 32, teaches that this resin composition can be used in defoaming formulations and pressure sensitive silicone adhesives among other utilities. This differs from that claimed in that it does not teach the addition of the hydrophilic siloxane (iii).
Paul et al. teach a siloxane meeting claimed (iii). See for instance an exemplified siloxane as found in the middle of page 4 in which claimed A is a bridging unit resulting from the ring opened epoxy group and I is a polyetheramine polar group (meeting claim 7). This also meets the requirements of the units found in claims 8 to 10.
This siloxane is used as an additive in a defoaming agent due to the hydrophilic nature thereof. See Paul et al. paragraphs 23 to 25 and paragraph 74.
Thus one having ordinary skill in the art would have been motivated to combine the compositions in Paul et al. and Kaeppler et al. to form an antifoam additive and/or an antifoam composition. It is prima facie obvious to combine two compositions, each of which is taught by prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven 205 USPQ 1069. The idea for combining said compositions flows logically from their having been individually taught in the prior art.
In this manner claims 1, 3 and 7 to 10 are rendered obvious.
For claims 11 and 12, adjusting the amount of silicone additive in Paul et al. with the MQ/polyorganosiloxane blend of Kaeppler et al in an effort to obtain the desired properties and benefits associated therewith, without using a deleterious amount, would have been obvious and well within routine optimization for the skilled artisan.
For claim 13, note that the skilled artisan would have blended the MQ resin and polyorganosiloxane in Kaeppler et al. prior to adding the polysiloxane of Paul et al.
For claim 16, note that column 6, line 5, teaches completely removing solvent such that this would provide the skilled artisan with motivation to remove all water as well to form a solvent-free composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
7/22/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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