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 .
The amendment filed 10/23/2025 has been entered. Claims 1-24 have been canceled. New claims 25-44 have been added and are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 38 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 38 recites, “The release-coated substrate of claim 25, wherein the first polymer is free of silicon atoms” (emphasis added), however, the original disclosure at the time of filing fails to provide support for said “free of silicon atoms” limitation with respect to the first polymer, especially given that the first polymer is the one that comprises a silicone-containing (meth)acrylic polymer and the section cited by the Applicant for support for the new claim refers to the second polymer, not the first polymer.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 38 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 38 recites, “The release-coated substrate of claim 25, wherein the first polymer is free of silicon atoms” (emphasis added), however, given that claim 25 recites, “a first polymer comprising a silicone-containing (meth)acrylic polymer” (emphasis added) such that the first polymer as recited in claim 25, from which claim 38 depends, includes silicon atoms as part of the silicone-containing (meth)acrylic polymer, and hence, claim 38 contradicts claim 25 and does not further limit the subject matter of claim 25. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 25-27, 30-37, and 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Donovan (WO01/85865A1), for generally the reasons recited in the prior office action with respect to canceled claims 1-15, 17-18, 21-22, and 24 and restated below with respect to new claims 25-27, 30-37, and 40-44.
As discussed in detail in the prior office action and incorporated herein by reference (see paragraphs 24-29 of the office action dated 7/23/2025), Donovan teaches a release coating and a release-coated substrate formed from a waterborne release coating composition comprising silicone acrylate latex particles that are the polymerization product of specific monomers as described in Claims 1-12 of Donovan, including (1) a silicone containing monomer, (2) one or more short chain alkyl (meth)acrylate monomers, (3) one or more carboxylic acid functional monomers, and (4) one or more nitrogen containing monomers; wherein silicon containing monomers useful in forming the polymer latices can be defined as mercapto functional silicone macromolecular chain transfer agents or silicone-containing macromonomers having a chemical structure as recited in instant claims 33-34 or 35-36, respectively, as well as in instant claim 40 (Pages 2 and 4-5). Donovan teaches that nitrogen containing monomers are those as described on Page 6, line 25-Page 7, which may read upon the claimed first monomer of the claimed second (meth)acrylate polymer including as in instant claims 27 and 30 given that the nitrogen containing monomers taught by Donovan may include an alkyl group of 12 carbon atoms along with a linking group containing a nitrogen or ester group and a free-radically polymerizable (meth)acryl group or (meth)acrylate, or is an amino-functional monomer as on Page 7); and given that the one or more short chain alkyl (meth)acrylate monomers (2) taught by Donovan read upon the claimed second free-radically polymerizable monomer of the second (meth)acrylate polymer, particularly as in instant claim 32, and that Donovan also teaches that polymerizable surfactants having a vinyl polymerizable group may also be used (Page 8, lines 9-31) as in instant claims 31, 42, and 43, the Examiner again notes that the silicone acrylate latex particles of Donovan may read upon both the claimed first or silicone-containing (meth)acrylic polymer and the second or (meth)acrylate polymer that is the polymerization reaction product of the recited monomers (e.g., given that the second (meth)acrylate polymer as recited in instant claims 25, 42, and 43 does not exclude the incorporation of silicone-containing monomers as now recited with respect to instant claim 38). Hence, the Examiner again takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the example polymers (or latices) taught by Donovan (e.g., see working Examples 1-18) alone or in admixture with one another, wherein the latter “admixture” would read upon the claimed “blend” of instant claims 25, 42, and 43, as well as the claimed “wherein the first polymer is different from the second polymer” as recited in instant claim 37 given that each of the polymers in the working examples of Donovan is different from the others (see Table 1, particularly in light of MPEP § 2144.06 with respect to the obviousness of combining equivalents known for the same purpose, e.g., combining two compositions each taught by the prior art to be used for a release coating in order to form a third composition also to be used as a release coating); and given that a 50/50 (by weight) admixture or “blend”, an obvious species of admixture/blend of two components in the art, of any two of the example polymers/latices taught by Donovan would have been obvious to one skilled in the art and would read upon the 50 % by weight of instant claim 26, the Examiner takes the position that the claimed invention as recited in instant claims 25-27, 30-37, 40, and 42 would have been obvious over the teachings of Donovan..
With respect to instant claim 41, Donovan teaches that suitable substrates to be coated with the release coating include paper, metal sheets and foils, nonwoven fabrics, and films of thermoplastic resins such as polyesters, polyamides, polyolefins (encompassing the claimed polyethylene and polypropylene), polycarbonates, polyvinyl chloride, and acetate films (paragraph bridging pages 12-13), and given that the claimed polyethylene and polypropylene are obvious species of thermoplastic polyolefins in the art, the claimed invention as recited in instant claim 41 would have been obvious over the teachings of Donovan.
With respect to instant claims 43-44, in addition to the discussion with respect to the aqueous release coating composition taught by Donovan as detailed above reading upon and/or rendering obvious the claimed “blend”, Donovan teaches that the coating compositions can be applied to a suitable substrate by conventional coating techniques such as wire-wound rod, direct or offset gravure, slot die, air-knife and trailing blade coating, wherein after application of the aqueous release coating composition, the coated substrate or coated web is dried to form the release layer thereon as in the working examples, reading upon the claimed “removing the aqueous carrier liquid to form a coated substrate” as in instant claim 43 (Page 13, line 9-Page 14, line 18; Examples); and although Donovan teaches examples utilizing a slot die and heated rollers maintained at approximately 118°C, Donovan does not specifically limit the drying conditions to any particular temperature, and given that drying as room temperature is “conventional” in the art, falling within the temperature range as recited in instant claim 44, and/or given that it would have been obvious to one having ordinary skill in the art to determine the optimum drying conditions for a particular conventional coating technique, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 43-44 would have been obvious over the teachings of Donovan.
Claims 25-44 (assuming claim 38 is meant to refer to the second polymer) are rejected under 35 U.S.C. 103 as being unpatentable over Donovan (WO01/85865A1) as applied above and in further view of Tseng (EP0448399A2) (emphasis added), or alternatively, over Tseng in view of Donovan for generally the reasons recited in the prior office action and restated below with respect to new claims 25-44.
The teachings of Donovan are discussed in detail above and although the Examiner takes the position that the polymer(s) taught by Donovan read upon both the claimed silicone-containing (meth)acrylic polymer and the second (meth)acrylate polymer such that at least claims 25-27, 30-37, and 40-44 would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based upon the teachings of Donovan given that one skilled in the art would have been motivated to utilize any of the polymers/latices taught by Donovan in the examples alone or in admixture as discussed above, it is further noted that Tseng teaches a similar waterborne release coating latex composition wherein the composition comprises about 5 to about 70 wt% of a polymer comprising a polymerized, long-chain free radically polymerizable monomer (Abstract) having a formula reading upon the claimed first monomer of the second (meth)acrylate polymer, particularly reading upon formula (3) of instant claim 27 and the monomer of instant claims 29-30 (Pages 5-7), in combination of two or more of said long-chain monomers and/or in combination with at least one free radically polymerizable second monomer different from the long-chain monomers, which may be selected from those recited on Page 8, such as short chain alkyl (meth)acrylates (e.g., containing an alkyl chain comprising less than about 12 carbon atoms, reading upon the claimed second free-radically polymerizable monomer having less than 12 carbon atoms as in instant claims 25, 42, and 43, and particularly as in instant claim 32), to improve film-forming properties and reduce cost; as well as an emulsifier, and an aqueous phase as in Donovan (Tseng: Entire document, particularly Abstract, Pages 5-8); wherein Tseng also teaches that preferably, the ratio of the long-chain hydrocarbon monomer (e.g., claimed first monomer) to the second monomer (e.g., claimed second monomer) is from about 20:80 to about 100:0 depending upon the type of PSA to be used in conjunction with the water-borne release coating and the tightness of the release desired, wherein a ratio of about 40:60 to about 60:40 provides good release properties when used in conjunction with an acrylic PSA (Page 8, lines 30-34; reading upon the claimed weight ratio as recited in instant claim 28). Tseng teaches that the resulting release coating has excellent release and aging performance for various conventional pressure sensitive adhesives (Page 4; e.g. same end use as in Donovan, paragraph bridging pages 1-2); and given that Tseng is of the same field of endeavor as Donovan and the instantly claimed invention, can be applied to similar substrates as in Donovan and the instantly claimed invention (Tseng: Page 11), and that Tseng clearly teaches that the latex can be used in combination with one or more other latexes (Page 11, lines 3-11), the Examiner again takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine or “blend” the release coating latex taught by Tseng comprising a (meth)acrylate polymer reading upon the instantly claimed “second polymer” and monomers thereof as in instant claims 25, 27-30, 32, and 37-39, as well as instant claim 31 and the (meth)acrylate polymer of instant claims 42-43 in light of the emulsifiers taught by Tseng which include polymerizable emulsifiers (Page 8, line 37-Page 9, line 7) or would be obvious in light of Donovan, with the release coating latex taught by Donovan to further improve the release properties thereof, especially given that Donovan similarly teaches that the latex may be used alone or alternatively various additives well known in the art may be added thereto including polymeric stabilizers, coalescing agents, and rheology modifiers (Page 9, lines 1-3; Page 10, line 22-Page 11). Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 25-44 would have been obvious over the teachings of Donovan in view of Tseng, or alternatively, over Tseng in view of Donovan given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to combine prior art reference teachings to arrive at the claimed invention where there is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Donovan, taken alone in view of Tseng, as applied above, and in further view of DiZio (US2007/0100306A1). The teachings of Donovan, alone or in view of Tseng, are discussed in detail above, and although both Donovan and Tseng broadly teach that the latex coating composition may be coated onto a substrate by conventional coating techniques and then dried, e.g., removing the water/aqueous carrier liquid, to form a release-coated substrate, Donovan does not limit a temperature at which the coated substrate is exposed to form the release-coated article as in instant claim 44, and only provides working examples wherein the substrate after coating is exposed to heated rollers maintained at a temperature of approximately 118°C as discussed above, while Tseng teaches that “the coating is typically dried at a temperature of at least about 5°C above the highest melting point of the latex polymer in order to obtain a coating possessing good release properties” (emphasis added; Page 11, lines 26-29), with the latex polymers taught by Tseng typically possessing a melting point or melting points above about 30°C (Page 10, lines 19-20), such that neither reference limits the drying temperature as instantly claimed. However, the Examiner again takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize room temperature and/or to determine the optimum drying conditions for a particular conventional coating technique or desired drying time, wherein it is further noted that DiZio teaches a similar release coating comprising one or more thermoplastic silicone-containing polymers, e.g., as in Donovan, and one or more other thermoplastic polymers different from the silicone-containing polymer (Abstract), preferably a water-dispersible thermoplastic film-forming polymer and more preferably selected from those as recited in Paragraph 0062 such as an acrylic polymer, e.g., as in Tseng (Paragraphs 0061-0062), wherein DiZio teaches that the release coating can be applied from a water-based system (Paragraph 0067), e.g., as in Donovan and Tseng, by means of conventional coating techniques (Paragraph 0068), e.g., as in Donovan and Tseng, and dried at room temperature (i.e., falling within the claimed range), an elevated temperature, or a combination thereof, provided that the backing material (e.g., substrate) can withstand the elevated temperature, wherein “[t]ypically, the elevated temperature is 60°C to 130°C (Paragraph 0068). Hence, absent any clear showing of criticality and/or unexpected results, the Examiner again takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize room temperature and/or to determine the optimum elevated temperature to provide the desired drying conditions for a particular conventional coating technique and given coating composition based upon the teachings of Donovan, taken alone or in view of Tseng, and in further view of DiZio which clearly shows that drying conditions in the art for similar release coating compositions may be at room temperature and/or elevated temperatures.
Response to Arguments
Applicant's arguments filed 10/23/2025 have been fully considered but they are not persuasive with respect to the obviousness rejections over Donovan taken alone, or over the combined teachings of Donovan and Tseng as applied above to new claims 25-44. With respect to the obviousness rejection over Donovan taken alone, the Applicant first argues that “using a single example polymer of Donovan would not read on the present claims as it is not a blend of two different polymers” (emphasis in original, see page 9 of the response, last full paragraph). However, the Examiner notes that the rejection clearly stated that it would have been obvious to one having ordinary skill in the art to utilize any of the example polymers taught by Donovan alone or in admixture wherein the Examiner notes that an “admixture” is a blend, such that an “admixture” of any two or more of the example polymers taught by Donovan, which are each different from one another and read upon the claimed first and/or second polymers, would read upon the claimed invention, particularly in light of MPEP § 2144.06, which states: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
The Applicant also argues that “with respect to the second polymer, the second polymer is described as an organic entity- made from monomers having carbon, hydrogen, and nitrogen and/or oxygen,” wherein there “is no teaching in the present application that the second polymer comprises silicon atoms” (see paragraph bridging pages 9-10 of the response), however, the Examiner notes that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Hence, given that the specification does not define the second polymer as such and that the claims, aside from claims 38-39 assuming claim 38 was meant to refer to the “second” polymer and not the “first” polymer, do not limit the second polymer as being an “organic” entity and/or free of silicon atoms, Applicant’s arguments in the paragraph bridging pages 9-10, including the data from Tables 3 and 4 of the present application showing differences between the two example polymers and the effects thereof on the release and readhesion properties, are not persuasive.
In the paragraph bridging pages 10-11, the Applicant argues that the “present application is directed toward identify release coatings that can be coated and then dried and/or activated at lower temperatures while still providing good release properties,” wherein “[a]s discussed in paragraphs [0002] and [0064] and exemplified in the present application, the coatings of the present disclosure can be dried at lower temperatures with the presence of the second polymer,” arguing that in Examples 2-18 of Donovan, the coatings were dried by passing over rollers heated to 118°C, while “[i]n the present application, the examples were dried at 30°C, which is a substantial difference in temperature.” The Applicant argues that “[i]t is the addition of the second polymer, which unexpectedly enables the silicone-containing (meth)acrylic polymer to be dried at a lower temperature” and that “[f]urthermore, the addition of the second polymer still allows good release properties of the adhesive,” referring to Tables 3 and 4 of the present application and arguing that “Donovan has not been shown to be concerned with lowering the processing temperature for making the release coating nor has Donovan been shown to disclose or suggest that its release composition can be dried at temperatures lower than 118°C.” However, the Examiner respectfully disagrees and first notes that the “lower temperatures” argued by the Applicant with respect to drying of the release coating composition is a process limitation that is only recited in process claim 44, and given that Donovan does not limit the drying temperature to the approximately 118°C as utilized in their non-limiting examples nor to any particular drying temperature range, and that Applicant’s alleged showing of “unexpected” results relies upon data that is not commensurate in scope with the claimed invention, including as in claim 44, given that all of the examples of the present application utilize specific first and second polymers polymerized from specific monomers, applied only to a polypropylene film as the substrate, and dried only at 30°C, such that one skilled in the art could not reasonably extend the probative value thereof to any blend of any first polymer comprising any silicone-containing (meth)acrylic polymer, and any second polymer or (meth)acrylate polymer comprising any polymerization reaction product of any first monomer (i), any second monomer (ii), with or without any free-radically polymer surfactant (iii); nor could one determine any criticality and/or unexpected results with respect to the claimed drying temperature range of at least 20°C and at most 50°C based upon examples only dried at 30°C. Hence, Applicant’s arguments over Donovan taken alone, as applied to the new claims, are not persuasive.
With respect to the obviousness rejection over Donovan in view of Tseng, the Applicant argues that “Tseng in the background of the patent mentions that there are 3 types of polymers known to lower critical surface tension: silicones, fluorine-containing polymers and long alkyl chain branched polymers” and that “Tseng appears directed toward identifying a waterborne long alkyl chain polymer release agent.” The Applicant argues that “Tseng [allegedly] never discloses or suggests combining their long alkyl chain branched polymers with silicones” and that although the Office Action cited page 11, lines 3-11 of Tseng as teaching that “the latex can be used in combination with one or more other latexes”, the Applicant asserts that the above cited section of Tseng (page 11, lines 3-11) allegedly “does not disclose the mixing with silicone latex or any other latex, but instead appears to teach that the latex can be applied to various substrates” (see last full paragraph on page 11 and paragraph bridging pages 11-12). However, the Examiner respectfully disagrees and first notes that the passage copied by the Applicant corresponds to page 11, lines 3-11 of Tseng published as EP 0 448 399 B1 not EP 0 448 399 A2 as utilized in the rejection as evidenced by both sections copied below.
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Hence, as noted in the rejection, Tseng, EP 0 448 399 A2, clearly states at page 11, lines 3-11, i.e., under the section entitled “I.F. Additives” (or see also page 10, lines 48-56 of EP 0448 399 B1 – the Tseng document referenced by the Applicant) that the latex “may be used in combination with one or more other latexes” as evident from the copied section above, such that Applicant’s arguments from the bottom of page 11 through the top of page 12 against the teachings of Tseng are not persuasive. In the first full paragraph on page 12, the Applicant further “submits that Example P1A in the present application, which comprises 100% of the second polymer has an excessively high peel force,” referring to Table 3 of the present application, and that in other words, “P1A is not a low adhesion backsize as discussed in Tseng,” and argues that the “present application is teaching the [alleged] unexpected benefit of combining a copolymer of Tseng with the silicone-containing (meth)acrylic polymer of Donovan,” arguing that “[n]either Tseng nor Donovan disclose or suggest the combination nor the benefits of combining…the [alleged] unexpected ability to use lower drying/activating temperatures to make the release coating, while still providing good release properties,” referring again to paragraphs [0002] and [0064] of the present application. However, the Examiner respectfully disagrees and first notes that both Tseng and Donovan provide a clear teaching and/or suggestion of combining the respective latices with other latices and/or polymers and given again that per MPEP § 2144.06, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose,” Applicant’s arguments with respect to a suggestion as well as motivation for combining the two polymers are not persuasive. In terms of Applicant’s arguments with respect to alleged unexpected results, Applicant’s statement that “P1A is not a low adhesion backsize as discussed in Tseng” while also stating that P1A “comprises 100% of the second polymer” appears to indicate that the P1A second polymer of the examples of the present application cannot be equated to the teachings of Tseng, and hence, any comparison between P1A and the blends of P1B-P1J containing the same second polymer cannot be utilized to support a showing of unexpected results over the cited prior art. However, even if the second polymer of P1A could be equated to the (meth)acrylic copolymer of Tseng, the Examiner again notes that the data and results relied upon by the Applicant are not commensurate in scope with the instant claims, and given that the claimed invention does not require any particular level of “good” release properties, Applicant’s arguments as recited on page 12 are not persuasive.
Hence, absent any clear showing of criticality and/or unexpected results, the Examiner maintains that the claimed invention would have been obvious over the cited prior art for the reasons discussed in detail above with respect to new claims 25-44.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s amendments and arguments filed 10/23/2025.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787