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 .
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.
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.
Claims 8, 15 and 16 are 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.
Claims 8 and 15 contains the trademark/trade name Wacker XT 50 and Wacker XT 55, and claim 16 contains the trademark/trade name Risun 30000T. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name Wacker XT 50 or XT 55 is used to identify/describe a blend of a silylated polymer with a silicone resin intermediate and RISUN 30000T is used to identify/describe trimethoxy silane terminated polyether polymer, accordingly, the identification/description is indefinite.
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.
Claims 1-3, 5-7, 9-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Damke (US 2019/0300712).
Damke teaches adhesive materials comprising the following:
a) at least one polymer having at least one terminal group of the general formula -Zn-R-SiXYZ, and meets applicants’ silylated polymer;
b) at least one compound of the general formula
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90
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which meets applicants’ silicone resin intermediate; and
an adhesion promoter, which includes rosins (p. 6, [0078]).
Damke does not teach or suggest the peel strength, as claimed; however, Damke does teach that when X, Y and Z are methoxy groups, rapid curing is possible which is desirable for adhesives with which high initial adhesion is required (p. 4, [0059]). Damke also teaches that the rosin adhesion promoter improves the adhesion properties of adhesive layers on surfaces (p. 6, [0078]).
Polymer (a) is present in an amount of preferably 20-60 wt% (p. 5, [0062]) and compound (b) is present in an amount of preferably 2-50 wt% (p. 5, [0066]) and the tackifier adhesion promoter is taught as being present in an amount of 0.1-5 wt% (p. 6, [0081]). When the adhesion promoter is present in an amount of 5 wt%, and the resin components are present in an amount of 94 wt%, the ratio of tackifier to resin is 0.05. Additionally, the inclusion of other additives, such as plasticizers, catalyst, drying agent, solvent, etc., a ratio of 5/65 or about 0.08 is possible.
The components described by Damke are the same as those claimed, and are taught in amounts which are suggested by the instant invention; therefore, one of ordinary skill in the art would expect the adhesives of Damke as having similar peel strength properties as those claimed.
Damke is prima facie obvious over instant claims 1-3 and 5.
As to claims 6-7, Damke teaches that the adhesion promoters can include coumarone/indene resins and terpene phenolic resins, teaching that they can be use individually or as a combination of several compounds. Choosing a combination of rosin and coumarone/indene resins and/or terpene phenolic resin is prima facie obvious.
As to claims 9-10 and 12-16, Damke teaches the inclusion of a solvent to reduce the viscosity, which includes ketones and esters (p. 6, [0076]), where acetone is known as the simplest ketone, and methyl acetate is known as the simplest ester solvent, and are both very well-known solvents. The remaining limitations can be met as described above.
Claims 1-2, 7, 9-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Garnier (US 2022/0049143).
Garnier teaches adhesive compositions comprising the following:
(A) at least one polymer comprising a hydrolysable alkoxysilane group, which meets applicants’ silyl terminated polymer;
(B) at least one tackifying resin, which includes (i) terpene phenols and (iii) rosins, suggesting a combination of such can be used;
(C) at least one silsesquioxane, which meets applicants’ silicone intermediate; and
(D) at least one crosslinking catalyst.
Garnier exemplifies a ratio of tackifying resin to polymer of about 0.05-0.1 in Examples 1-2, showing that when some of the tackifying resin is substituted with the silsesquioxane, the peel strength significantly increases.
Garnier teaches that the adhesive has high peel strength on stainless steel and polymer but does not teach the peel strength as measured by the instant invention; however, the compositions of Garnier suggest the claimed adhesives using applicants claimed components in similar amounts as described in the instant disclosure. Therefore, one of ordinary skill in the art would expect the adhesives of Garnier to possess a similar peel strength, as claimed.
Garnier is prima facie obvious over instant claims 1-2, 7, 9-10 and 14.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2025/0316766 does not qualify as prior art, but teaches applicants’ claimed components.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/ Primary Examiner, Art Unit 1766