DETAILED ACTION
Claims 1-46 are pending.
Claims 1-5, 8, 10-11, 14-15, 20-32 and 34-46 are rejected.
Claims 6-7, 9, 12-13, 16-19, and 33 are objected to.
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 .
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 8, 10-11, 14-15, 20-24, 38, 40-42 and 44-46 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0055382 (herein Kitaichi) as evidenced by US 2016/0245233 (herein Gajiwala) and US 2011/0306429 (herein Mikami).
Note that 102 rejections can have multiple references (in the instant case the evidentiary references) in certain situations such as showing that a characteristic of a material of the primary reference is inherent. See MPEP 2131.01(III).
As to claims 1-2, 8, 11, 14, and 20-22, Kitaichi discloses (examples 1-7, abstract and paragraph 6 through 14) a curable composition comprising a silicone copolymer comprising multiple (three or greater, paragraph 64) carbon-carbon double bonds ("Elastosil R 401/60" and paragraphs 63-67), a perfluoropolyether ("BARRIERTA J100 FLUID" by NOK Klueber, also see generally paragraph 103 through 109) and a matrix-forming (majority component) composition (mainly a peroxide cross-linkable fluororubber being the majority of the curable composition, as well as silica and peroxides). This composition is used as fabrics coating hence a film, or as sealant or protective cover for automobile seats hence an article (paragraphs 138-156).
Specifically, Elastosil are vinyl terminated polydimethylsiloxane (PDMS, which is hydrophobic) compounds, thus reading on the claimed silicone copolymer. See paragraph 35 of Gajiwala for evidence.
Barrierta J100 has a formula of
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89
380
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. See formula 9 and paragraph 102 of Mikami for evidence. Thus, a fluorine content of about 68 wt% (deduced from the molecular weights of the atoms).
As to claim 3, the Elastosil and silicone copolymer is a polyorganosiloxane polymer (paragraph 63), which is a chain copolymer.
As to claims 4-5, the Elastosil and silicone copolymer is a polyorganosiloxane (PDMS) polymer (as evidenced by Gajiwala). The claim is in product by process form and PDMS can be formed by ionic ring opening (addition) polymerization (thus an ionic addition polymer), which is identically structurally. Therefore, while Kitaichi is silent on the process, the polymer is identical and can be polymerized by addition polymerization (ring opening) and thus reads on addition polymer.
As to claim 10, the silicone copolymer comprising multiple (three or greater, paragraph 64) carbon-carbon double bonds ("Elastosil R 401/60" and paragraphs 63-67). While not specifically stating that the crosslinkable groups are at an end, the groups are taught as vinyl (paragraph 66), which are end (terminal) groups by definition. Moreover, Gajiwala specifically states that the Elastosil polymers are terminated by vinyl groups. See paragraph 35 of Gajiwala for evidence.
As to claim 15, vinyl groups are taught (paragraph 66) and discloses that a C=O-O ester group may link it to the polyorganosiloxane (paragraph 92), thus reading on acryloyl group.
As to claims 23-24, the Barrierta J100 oil has the structure
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89
380
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Greyscale
. See formula 9 and paragraph 102 of Mikami for evidence. The claim is in product by process form and oil can be formed by ionic ring opening (addition) polymerization (thus an ionic addition polymer), which is identically structurally. Therefore, while Kitaichi is silent on the process, the polymer is identical and can be polymerized by addition polymerization (ring opening) and thus reads on addition polymer.
As to claim 38, the silicone copolymer to perfluoropolyether ratio is 10/3 to 20/1, which is within the claimed range. See table 1.
As to claim 40, films of the composition are taught. See paragraph 15 and examples.
As to claims 41-42 and 44-46, the composition may be used as a sealant on substrates (layers) or used as O-rings (layer on a substrate), etc. See paragraph 138. These include display panels (optical member of claim 42), sensors (per claim 44), panel covers (per claim 45) and automobile interior members (per claim 46). See paragraph 138-138.
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.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0055382 (herein Kitaichi) as evidenced by US 2016/0245233 (herein Gajiwala) and US 2011/0306429 (herein Mikami).
The discussion with respect to Kitaichi et al. set-forth above is incorporated herein by reference.
As to claim 39, the silicone rubber (copolymer) may be present in 5 to 55 parts and the perfluoropolyether (fluoropolyether) may be present in 0.5 to 10 parts. See abstract. Thus, overlapping the claimed range (e.g. 5:10 or 50:100). It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Claim(s) 1-5, 8, 10-11, 14-15, 20-32 and 34-46 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/045209 and/or US 2022/0195115 (herein Shibutani) in view of US 2019/0055382 (herein Kitaichi) as evidenced by US 2016/0245233 (herein Gajiwala)
Note that the US PgPub Shibutani is a continuation of the WO document and is utilized as the English translation thereof. Further, note that for date purposes, the WO document is utilized for the 102(a)(1) date and both are applicable for the 102(a)(2) date. Also note that a machine translation of the foreign priority of the WO and US document are supplied to establish a 102(a)(2) date of Sep 4, 2019.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome the 102(a)(1) date of this rejection (note that the 102(a)(2) date would still be applicable) because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
As to claims 1-2, 8, 11, 14, and 20-26, Shibutani discloses a curable composition (see abstract, paragraph 235, 240 and examples).
The composition comprising a silicone oil (copolymer). See paragraph 200-202.
The composition comprising a fluorine containing copolymer (see abstract, paragraph 30) comprising a fluoropolyether group (paragraph 35), which is produced by radical polymerization (paragraph 186 and examples). The fluorine content of the fluoropolyether portion of the polymer is about 65% (deduced), and about 50 wt% of the entire polymer after reaction with hydroxyethylacrylate. See examples. The polymer are block copolymers. See examples.
The composition comprising a matrix forming composition. See paragraph 235-238.
While Shibutani discloses modified silicone oil with e.g. amino groups, Shibutani is silent on the specifics of the silicone oil as claimed with multiple crosslinking groups.
Kitaichi discloses similar (examples 1-7, abstract and paragraph 6 through 14) a curable composition comprising a silicone copolymer comprising multiple (three or greater, paragraph 64) carbon-carbon double bonds ("Elastosil R 401/60" and paragraphs 63-67), a perfluoropolyether ("BARRIERTA J100 FLUID" by NOK Klueber, also see generally paragraph 103 through 109) and a matrix-forming (majority component) composition (mainly a peroxide cross-linkable fluororubber being the majority of the curable composition, as well as silica and peroxides). This composition is used as fabrics coating hence a film, or as sealant or protective cover for automobile seats hence an article (paragraphs 138-156).
Specifically, Elastosil are vinyl terminated polydimethylsiloxane (PDMS, which is hydrophobic) compounds, thus reading on the claimed silicone copolymer. See paragraph 35 of Gajiwala for evidence. Kitaichi teaches that the silicone oil improves sticking resistance (paragraph 18-19). Kitaichi discloses that multiple unsaturated groups (carbon carbon double bonds) are utilized in the silicone oil/rubber to cause crosslinking. See paragraph 64.
It would have been obvious at the time of the invention to have modified the composition of Shibutani with the specific silicone copolymer of Kitaichi because one would want to improve sticking resistance (see paragraph 18-19 of Kitaichi).
As to claim 3, the Elastosil and silicone copolymer is a polyorganosiloxane polymer (paragraph 63), which is a chain copolymer.
As to claims 4-5, the Elastosil and silicone copolymer is a polyorganosiloxane (PDMS) polymer (as evidenced by Gajiwala). The claim is in product by process form and PDMS can be formed by ionic ring opening (addition) polymerization (thus an ionic addition polymer), which is identically structurally. Therefore, while Kitaichi is silent on the process, the polymer is identical and can be polymerized by addition polymerization (ring opening) and thus reads on addition polymer.
As to claim 10, the silicone copolymer comprising multiple (three or greater, paragraph 64) carbon-carbon double bonds ("Elastosil R 401/60" and paragraphs 63-67). While not specifically stating that the crosslinkable groups are at an end, the groups are taught as vinyl (paragraph 66), which are end (terminal) groups by definition. Moreover, Gajiwala specifically states that the Elastosil polymers are terminated by vinyl groups. See paragraph 35 of Gajiwala for evidence.
As to claim 15, vinyl groups are taught (paragraph 66) and discloses that a C=O-O ester group may link it to the polyorganosiloxane (paragraph 92), thus reading on acryloyl group.
As to claims 27-28, formula I and 2 starting paragraph 30 to 47 are identical to that of claimed formula (3) and (4) with identical language.
As to claim 29, see paragraph 99-106, which utilizes identical language.
As to claim 30, see paragraph 96 using similar language.
As to claims 31-32, n is taught as 2 to 30. See paragraph 148.
As to claim 34-35, see paragraph 292 and 298, wherein the formula is disclosed and taught identically.
As to claim 36, see paragraph 294-298, wherein claimed formula f2 to f5 are identically claimed.
As to claim 37, see paragraph 195, which discloses the formula identically.
As to claims 38-39, the silicone oil is taught in 0 to 10 parts (paragraph 202) to 100 parts of the fluorine containing copolymer (fluoropolyether).
As to claim 40, paragraph 243-248 teaches films of the composition.
As to claim 41, paragraph 242-250 teaches an article comprising a substrate and a layer of the composition.
As to claim 42, optical members are taught. See paragraph 244.
As to claim 43, the article is a LiDAR member. See paragraph 256 and 308.
As to claim 44, sensor members are taught. See paragraph 256 and 308.
As to claims 45-46, an instrument panel cover member and an automobile interior member are taught. See paragraph 256.
Allowable Subject Matter
Claims 6-7, 9, 12-13, 16-19, and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764