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 .
Election/Restrictions
Claims 4 and 5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/15/2026.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over
Kato US 20210292556 A1.
Regarding claim 1, Kato teaches an addition curable silicone rubber composition (Abstract). Kato also teaches that the composition comprises a linear organopolysiloxane which has one silicon bonded alkenyl group at each of both molecular chain ends (Paragraph [0012]). This reads on the claimed at least two alkenyl groups per molecule.
Kato also teaches that the linear polyorganosiloxane (A) has a structure of
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where R2 is an aryl group (Paragraph [0024 and 0026]). Kato also teaches R2 can be the same or different where R2 can also be alkyl groups (Paragraph [0024-0026]). Kato also teaches that R1 is vinyl allyl or alkenyl groups (Paragraph [0025]). It would have been obvious to select one of the R2 groups as an aryl group because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Kato teaches that the composition also comprises at least 90 mol% of all the R2 groups are methyl (Paragraph [0026]). Where 90% of the R2 groups are methyl groups, the organopolysiloxane comprises 10 mol% or less of aryl groups. This reads on the claimed range of greater than 0% and less than 5 mol% aryl groups. This reads on the claimed (A).
Kato also teaches the composition comprises an alkenylated linear polyorganosiloxane (B) (Paragraph [0013]). Kato teaches (B) comprises two or three silicon bonded alkenyl groups at each of both molecular chain ends (Paragraph [0013]). This reads on the limitations of the claimed “B.”
Kato also teaches the composition comprises 100 parts by weight (A) and 1-30 parts by weight of (B) (Paragraph [0012-0013]). This correspond to a range of 76-99 mass% of (A) and 1-23 mass% (B). These overlap with the claimed range of 89-99 mass% (A) and 0-10 mass % (B).
Kato also teaches the composition comprises organohydrogenpolysiloxanes where the organohydrogenpolysiloxane has a 3D network structure (Paragraph [0046]). It would have been obvious to select the organohydrogenpolysiloxane as having a 3D network structure because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Kato also teaches the number of Si-H groups per molecule are at least 3 (Paragraph [0044]). Kato also teaches the C-1 polymer comprises copolymers with SiO4/2 groups (Paragraph [0063]). It would have been obvious to select the organohydrogenpolysiloxane as having a 3D network structure because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the claimed C-1. In Example 1, Kato teaches that the composition comprises 3.62 parts by weight (C-1) (Paragraph [0086]) This overlaps with a claimed range of 2.8 mass% C-1. This overlaps with the claimed range of 1-11%.
Kato also teaches the composition comprises an addition reaction catalyst (Paragraph [0068]). This reads on the claimed hydrosilylation catalyst (E). Kato teaches the amount of catalyst is 1-500 ppm based on the total weight of components (A) and (B). This overlaps with the claimed range of 15 ppm or less.
Kato also teaches that the total alkenyl groups is preferably 1.0-3.0 (total Si-H groups/total alkenyl groups) (Paragraph [0066]).
Regarding claim 2, Kato teaches the composition is cured to form a silicone rubber article (Paragraph [0081]). This reads on the claimed hardened material.
Regarding claim 3, Kato is silent on the composition being a photosemiconductor sealing material. However Kato teaches an identical composition that is capable of functioning as a photosemiconductor sealing material.
Claims 3 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Kato US 20210292556 A1 in view of Mochizuki 20140088232A1
Regarding claim 3, Kato is silent on the composition being a photosemiconductor sealing material. However, Mochizuki teaches a low hardness teaches a silicone composition used in semiconductor compositions. Mochizuki teaches the composition comprises a polyorganosiloxane (A) which has one or more alkenyl groups (Paragraph [0014]). This overlaps with the claimed range of at least two alkenyl groups. Mochizuki teaches that component (A) comprises 100 parts by weight polyorganosiloxane (Abstract).
Mochizuki also teaches the composition comprises an organohydrogenpolysiloxane (B) is preferably a 3D network comprising a SiO4/2 unit (Paragraph [0037]). This reads on the limitations of claim C-1.
Mochizuki also teaches the composition comprises a platinum based catalyst (C) (Paragraph [0040]). This catalyst is a hydrosilylation reaction catalyst (Paragraph [0040]). This reads on the claimed (D).
Mochizuki teaches that the ratio of hydrogen atoms bonded to silicon atoms is 0.5 – 3 mols per mol of alkenyl groups bonded to silicon atoms (Paragraph [0039]). This overlaps with the claimed range of 1-3. Mochizuki teaches that if the compounding amount is less than 0.5 mol, sufficient crosslinking cannot be achieved On the other hand, if the compounding amount exceeds 3.0 mol, unreacted Si-H groups remain and tend to cause temporal change in physical property after curing (Paragraph [0039]).
It would have been obvious for one of ordinary skill in the art at the time of filing to use the curable silicone composition of Kato in the photosemiconductor sealing composition of Mochizuki because Mochizuki teaches curable silicone compositions similar to that of Kato can be used in photosemiconductor applications. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. This reads on the limitations of claim 3.
Relevant Prior Art
Kobayashi 20210171771A1 teaches silicone rubber composition used as a release paper adhesive (Title, Paragraph [0001]).
Kobayashi teaches the composition comprises a linear organopolysiloxane (A). Kobayashi teaches the component (A) comprises a phenyl group (Paragraph [0040]). This reads on the limitations of the claimed “aryl group.” Kobayashi also teaches the linear organopolysiloxane comprises two vinyl end groups (Paragraph [0040]). This reads on the claimed “at least two alkenyl groups.”
Kobayashi teaches the composition comprises a linear organopolysiloxane (B). Kobayashi teaches the composition comprises 3 vinyl groups (Paragraph [0049]). This overlaps with the claimed range of at least two alkenyl groups.
Kobayashi teaches a compotation comprises an organohydrogenpolysiloxane (C). However, Kobayashi is silent on the component (C) being a network organohydrogenpolysiloxane. While components (A) and (B) of Kobayashi are specified as being optionally a network polymer, component C is listed as either linear, branched or cyclic (Paragraph [0054]). Therefore Kobayashi does not read on the limitations of claim (C-1) or (C-2).
Kobayashi also teaches the composition also comprises a platinum group metal catalyst (C) which is a hydrosilylation catalyst (Paragraph [0063]). This reads on the claimed D.
Beyer 20200181408 A1. teaches a silicone composition with high hardness used in sealing applications (Title, Abstract, Paragraph [0146]). Beyer teaches the composition comprises a polyorganosiloxane (A1 and A2). Beyer also teaches the polyorganosiloxane A1 may be a linear polymer. Beyer teaches the polyorganosiloxane comprises at least 2 alkenyl groups bonded to a silicon atom per molecule (Abstract). This overlaps with the claimed range of at least two alkenyl groups. Beyer teaches A1 can be a linear polyorganosiloxane (Paragraph [0045]). It would have been obvious to select A1 as a linear polyorganosiloxane because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Beyer also teaches the composition comprises a polyorganosiloxane A2 (Abstract). Beyer teaches this organopolysiloxane A2 comprises at least two alkenyl groups (Paragraph [0053]). This reads on the limitations of the claimed (B).
Beyer also teaches the composition comprises an organopolysiloxane B1. (Paragraph [0069]). Beyer teaches the organopolysiloxane B1 comprises at least two silicon bonded hydrogen groups (Paragraph [0069]). Beyer teaches the compound B1 can be any organopolysiloxane containing two hydrogen atoms that is well known in the art. Specifically, Beyer teaches a method of making B1 as taught in EP0251435. EP0251435, teaches MQ resins (Col. 3 Line 29). It would have been obvious to select the MQ resin taught in EP0251435 as the organopolysiloxane B1 because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.This reads on the claimed C1.
Beyer teaches the composition comprises a catalyst (C) (Paragraph [0092]). This reads on the claimed hydrosilylation catalyst (D). Beyer teaches the catalyst is present in amounts from 1-100 ppm based on the total weight of (A) and (B) (Paragraph [0092]). This overlaps with the claimed range of less than 15 ppm.
Beyer also teaches the composition has a ratio of Si-H/SiAlk of >1.1 (Paragraph [0087]). This overlaps with the claimed range of 1-3.
Beyer teaches that the component A-1 is present in amounts from 35-75% this does not overlap with the range of 89-99% in claim 1. Therefore Beyer teaches away from the limitations of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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