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.
Response to Amendment
The Amendment filed 09/08/2025 has been entered. Claims 2-4, 6-10 remain pending in the application, with claim 10 remaining withdrawn as being drawn to a nonelected invention, and claims 2-4, 6-9 remaining rejected under 35 U.S.C 103.
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.
Claim(s) 2-4, 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jun (EP1716201B1 - see reference attached), Tae (KR102336439B1 - see machine translation attached), and Yang (CN113637328A - see machine translation attached).
Regarding claims 8, 2, & 4, Jun, drawn also to the art of a fire-retardant composition [0001], discloses a composition that once cured forms an acrylic polymer [0013] and can be used as an adhesive [0016]. Jun discloses a siloxane binder [0027] and a phosphorous based flame-retardant comprising the composition [0035-0037]. Jun discloses the siloxane comprising an epoxy group [0027-0028], and that phenyl and epoxy groups can be present [0027], but has not explicitly disclosed both a phenyl and an epoxy group. The limitation of the siloxane binder comprising both a phenyl and an epoxy group is disclosed by Tae and Yang.
Tae, drawn also to the art of a siloxane-based flame-retardant tape [0001], discloses the silane compound being phenyl trimethoxysilane (as claimed in instant claim 2), and further discloses that multiple silane compounds can be present in the composition [0041]. Tae also discloses that a phenyl and an epoxy group can be present, since Tae has disclosed that multiple silane compounds can be used, and further that they can contain epoxy and phenyl groups [0039-0040]. Further, Tae also discloses the use of the composition as a tape [0001]. Tae also discloses tetraethoxysilane being present in the silane compound [0041].
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Jun, with both a phenyl and epoxy group being present in the, as disclosed by Tae, to arrive at the instant invention, in order to provide a tape that can be used on one or both sides of a substrate at low cost with excellent flame retardancy [0011-0012].
In the event the applicant does not agree with the above explanation of Tae disclosing the use of multiple silane compounds with a phenyl and epoxy group, it is further known from Yang, to use silane compounds containing epoxy groups.
Yang, drawn also to the art of a flame-retardant silicone rubber [0001], discloses the composition comprising a structuring control agent, which is dimethyl dimethoxy silane [0016].
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Jun and Tae, with the composition containing dimethyl dimethoxy silane, since Tae has disclosed the use of multiple silane compounds already, and further in order to be able to have a flame-retardant composition that solves the problems of difficult dispersion and poor heat resistance [0007].
Regarding the newly added limitations of the input weight of the phosphorous based additive and the siloxane component, Jun has disclosed these limitations. Jun discloses Jun discloses the that the composition can contain up to 40% by weight of an additional fire-retardant additive (i.e. phosphorous compound) in addition to the siloxane component [0041], while at the same time disclosing that the siloxane component can be 2 to 50% by weight of the composition [0034]. If one were to take the siloxane component to be 25% by weight of the composition and the phosphorous component to be 40% by weight of the composition, then in this scenario, the phosphorous component is 160 parts by weight to 100 parts by weight of the siloxane component, and the instant ratio claimed is satisfied. Thus, Jun has disclosed weight ranges for both the phosphorous component and siloxane component such that they satisfy the instant limitations.
Regarding claim 3, Jun has already disclosed that the phosphorous containing compound is a phosphoric acid ester compound or a cyclic phosphate compound [0037-0038].
Regarding claims 6-7, Jun as modified by Tae and Yang, has disclosed a siloxane binder as claimed (see claim 1 rejection above). Thus, given that the same or similar material is disclosed by the prior art, it would necessarily mean that the same or similar inherent properties are present i.e. being acidic and having a pH as claimed in instant claim 7. The examiner notes that the siloxane binder disclosed by Jun, Tae, and Yang has a similar composition as claimed by applicant, (i.e. the silane compounds being present as claimed in claims 2 & 4) which would result in the claimed property (of the siloxane binder being acidic and having a pH as claimed). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the same or similar product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Regarding claim 9, Jun has disclosed the composition being used to form an acrylic adhesive, and has further disclosed the composition being applied on a substrate i.e. being applied on a tape [0045-0046 & 0050].
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
Applicant argues that Jun does not discloses the weight ranges (input weights) for the siloxane component and the phosphorous component as instantly claimed.
The examiner disagrees. As noted in the rejection of claim 8 above, Jun has disclosed the phosphorous component to be 40% by weight of the composition in addition to the siloxane component, and has disclosed the siloxane component to be 2 to 50% by weight of the composition. Then, taking a weight for the siloxane component of 25% and the phosphorous component of 40%, it can be seen that if 100 parts by weight of the siloxane component were present, then 160 parts by weight of the phosphorous component would be present, which meets the instant limitations. Thus, the weight ranges disclosed by Jun meet the instant limitations.
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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746