DETAILED ACTION
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 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 § 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.
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.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (US 2007/059535, “Nakamura”) in view of Hahn et al. (US 3,983,298, “Hahn”).
Regarding claim 17, Nakamura discloses a silicone-based pressure sensitive adhesive (PSA) (curing-reactive organopolysiloxane composition, [0001], suitable for use in electronics, [0061]). Nakamura further discloses curing of the silicone-based PSA (0046). Nakamura further teaches that its PSA composition comprises (A) a crude rubber like organopolysiloxane having an average of at least one alkenyl group per molecule, wherein the organopolysiloxane can be straight chain or branched ([0010] and [0015], corresponding to presently claimed component (A)). Nakamura further discloses that the PSA composition includes organopolysiloxane resin consisting of R1SiO1/2 units and SiO4/2 units, where R1 is a substituted or unsubstituted univalent hydrocarbon group e.g. alkyl group or phenyl group (corresponding to component (B) of claim 17, [0010], [0018], and see [0024], describing amounts reading on the claimed amounts of from 1 to 500 parts by mass with regard to components (A) and (C)). Moreover, a person having ordinary skill in the art would recognize that R (e.g. methyl or phenyl) would not be less than 90 mol% of R in the disclosure of Nakamura ([0011], [0018], and [0051], disclosing methylpolysiloxane resin consisting of (CH3)3SiO1/2 units and SiO4/2 units). Nakamura further discloses that the PSA includes organopolysiloxane having an average of two silicon-bonded hydrogen (Si-H) atoms per molecule (e.g., [0011], corresponding to component (C) of claim 17). Nakamura additionally taches that the plasticity of the alkenyl groups may be on the range of from 50 to 200 ([0015]) and may be on the range of 0.2 weight percent (e.g., [0003], and see [0051], Example 1, having 0.2 weight percent alkenyl group). The Examiner notes that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05. Nakamura additionally teaches the inclusion of a platinum catalyst on the range of from 1 to 500 ppm based on the weight of component (A) (i.e., an organosiloxane but not the total amount of organopolysiloxane, [0039] [0040]). However, in the same field of endeavor of organopolysiloxane adhesive components (e.g., col. 1), Hahn discloses a composition suitable for use as a PSA (curing-reactive organopolysiloxane), obtained by mixing (a) from 50-60 parts by weight of a solid, benzene soluble resin containing R2SiO1/2 units and SiO4/2 units, (b) from 40-50 parts by weight of cyclic free, polydiorganosiloxane having vinyl group, (c) an amount of organopolysiloxane having greater than two silicon bonded hydrogen atoms per molecule, and (d) a platinum catalyst (column 2, line 25 to column 3, line 5). Further, the composition of Hahn is cured (column 8, lines 45-55). Hahn discloses that the platinum catalyst should be provided in such quantities to provide at least 1.0 ppm of platinum so as to avoid poisoning of the catalyst by trace quantities of impurities in the composition. According to Hahn, the amount of platinum catalyst is not critical with respect to the upper limit but it cost would suggest that excessive quantities of should be avoided. Hahn discloses that amounts up to 200 ppm platinum are not unusual but preferably from 1 to 35 parts by weight of platinum for every one million parts by weight of (a) plus (b) plus (c) is used (column 7, lines 15-25). Hahn further discloses that the components of the composition can be mixed in any manner such a bulk or in organic solvent (column 7, lines 25-30). Moreover, Hahn discloses 23 ppm of platinum in the composition (see Example 2). This disclosure of Hahn is interpreted to suggest that the amount of platinum based metal in Hahn renders obvious claimed amount of platinum based on the total amount of the solid content of the curing-reactive organopolysiloxane. It therefore would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the content of the platinum based metal in the amount as claimed and as rendered obvious from the disclosure of Hahn in the silicone based PSA of Nakamura, motivated by the desire to cure the PSA of Nakamura without the catalyst being poisoned by trace quantities of impurities, and to avoid coloration of the PSA. Nakamura as modified by Hahn is silent as to disclosing the adhesive force of a PMMA sheet as claimed. However, as described above, modified Nakamura makes obvious the claimed curing reactive organopolysiloxane composition. Absent persuasive evidence to the contrary it would be reasonable to presume that the aforementioned adhesive force would intrinsically be present in the invention of modified Nakamura. Please see MPEP 2112 (III)(IV)(V).
Claim(s) 21 – 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Hahn as applied to claim 17, above, in further view of Auld et al. (US 2009/0146324, “Auld”).
Regarding claims 21 – 23, as described above, modified Nakamura makes obvious the claimed curing reactive organopolysiloxane composition and amount of platinum metal catalyst reading on from 0.1 to 30 ppm (see discussion of claim 17, Nakamura in view of Hahn, above). Absent persuasive evidence to the contrary it would be reasonable to presume that the claimed color properties (i.e., the b* value and the amount it changes under various testing conditions) would intrinsically be present in the invention of modified Nakamura. Please see MPEP 2112 (III)(IV)(V). Further, in the same field of endeavor of polyorganosiloxane adhesive components ([0001] – [0006]), Auld teaches that such compounds typically have high transparency and maintains a low b* value for the composition even after aging at high temperatures and under high brightness ([0155] – [0157]) and thus modifying the polyorganosiloxane to have a low b* value even under these circumstances would have been obvious to the ordinarily skilled artisan at the time of filing (e.g., [0155] – [0157]).
Regarding claim 24, Nakamura additionally teaches the addition of components for adjusting the speed of curing, which may be considered to be curing retarders (e.g., [0041], [0042]).
Regarding claim 25, Nakamura teaches the curing may be done at a temperature of between 80C and 200C ([0046]) but fails to specifically teach the viscosity of the polyorganosiloxane is stable in that it does not rise 1.5 times after eight hours at room temperature. However, because the composition of modified Nakmaura is substantially similar to that of the claimed invention, absent persuasive evidence to the contrary it would be reasonable to presume that the claimed viscosity properties would intrinsically be present in the invention of modified Nakamura. Please see MPEP 2112 (III)(IV)(V). Further, in the same field of endeavor of polyorganosiloxane adhesive components ([0001] – [0006]), Auld teaches that such compounds typically have high stability ([0003], [0005], [0155], [0156], [0248]) value for the composition even after aging at high temperatures and under high brightness ([0155] – [0157]) and thus modifying the polyorganosiloxane to have such stability, including stability of viscosity, would have been obvious to the ordinarily skilled artisan at the time of filing (e.g., [0155] – [0157]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782