DETAILED ACTION
This office action follows a reply filed on May 4, 2026. Claims 1, 8-9 and 15-16 have been amended. Claims 1, 6-9 and 13-16 are currently pending and under examination.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
Claim Objections
Claims 8 and 15 are objected to because of the following informalities:
In claims 8 and 15, the word “silicon” should be “silicone”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1, 6-9 and 13-16 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, exemplified as a polyether-based gamma silane terminated polymer which is terminated with a trimethoxysilane (p. 8, [0098]);
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 and derivatives thereof (p. 6, [0078]), where gum rosin is synonymous with rosin.
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.
Therefore, it can be seen that the suggested compositions of Damke possess a weight ratio of tackifying resin to polymer which overlaps with the claimed range of 0.05-2.5, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
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, 5 and 8.
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 claim 9, 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 13-16 can be rejected as described above.
Claims 1 and 7-8 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 of natural origin for instance that extracted from pine gum, 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 and 7-8.
Response to Arguments
Applicant's arguments filed May 4, 2026 have been fully considered but they are not persuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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.
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.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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