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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/6/2026 has been entered.
The amendment filed 4/6/2026 has been entered. Claims 1-24 and 38 have been canceled. Claims 25-37 and 39-44 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 § 103
Claims 25-37 and 39-44 are rejected under 35 U.S.C. 103 as being unpatentable over Donovan (WO01/85865A1) in view of Tseng (EP0448399A2), or alternatively, over Tseng in view of Donovan (each of which is discussed in detail in the prior office action and incorporated herein by reference).
As discussed in the prior office action, 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 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) Hence, Donovan teaches a release layer disposed on a substrate wherein the release layer comprises a silicone-containing (meth)acrylic polymer reading upon the claimed first polymer, and although Donovan teaches that the nitrogen containing monomers (4) 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 that the one or more short chain alkyl (meth)acrylate monomers (2) taught by Donovan may read upon the claimed second free-radically polymerizable monomer of the second (meth)acrylate polymer, particularly as in instant claim 32, and 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, Donovan does not specifically teach that the release layer is formed from a blend of the silicone acrylate latex as the claimed first polymer with a second polymer that is free of silicone atoms as recited in amended claim 25.
As also discussed in the prior office action, 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). 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 release coating composition can be applied to a suitable substrate by means of conventional coating techniques such as wire-wound rod, direct gravure, offset gravure, reverse roll, air-knife, and trailing blade coating (similar to Donovan), wherein after application of the aqueous latex release coating composition, the coated substrate or coated web is typically dried to form the release layer thereon (similar to Donovan) 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 11, lines 21-32), resulting in a release coating possessing effective release for a wide variety of conventional pressure sensitive adhesives (page 4; page 11, lines 21-32; e.g., the same end use as in Donovan, paragraph bridging pages 1-2), and can be applied to similar substrates as in Donovan and the instantly claimed invention (Tseng: Page 11). Further, given that Tseng teaches that the latex can be used in combination with one or more other latexes (Page 11, lines 3-11), the Examiner takes the position that Tseng clearly teaches a release-coated substrate comprising a release layer disposed on a substrate wherein the release layer comprises a blend of a (meth)acrylate polymer reading upon the claimed second polymer that is free of silicon atoms with one or more other latexes, but does not specifically teach that the one or more other latexes that may be blended with the (meth)acrylate polymer reading upon the claimed second polymer is a silicone-containing (meth)acrylic polymer as recited in the instantly claimed invention.
Hence, both Donovan and Tseng are of the same field of endeavor as the instantly claimed invention, with Donovan teaching a release layer comprising the instantly claimed first polymer and Tseng teaching a release layer comprising the instantly claimed second polymer, and given that per MPEP § 2144.06, “‘[i]t is “prima facie obviousness 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.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960)…Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992)…; and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023),” the Examiner maintains her position that the claimed invention comprising a release layer comprising a blend of a silicone-containing polymer as taught by Donovan (reading upon the claimed “first polymer” as recited in instant claims 25, 33-36, 40, and 42-43), with a (meth)acrylate polymer as taught by Tseng (reading upon the instantly claimed “second polymer” and monomers thereof as recited 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) would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, and given that a 50/50 (by weight) “blend” or admixture, reading upon the weight percentage range of instant claim 26, is an obvious species of admixture/blend of two components in the art, and/or that Tseng specifically teaches that the release coating latex composition comprises about 5 to about 70 wt% of the (meth)acrylate polymer reading upon the second polymer that is free of silicon atoms with one or more other latexes such that Tseng renders the claimed weight content of instant claim 26 obvious, the claimed invention as recited in instant claims 25-37, 39-40, and 42-43 would have been obvious over the teachings of Donovan in view of Tseng, or alternatively, Tseng in view 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); while Tseng similarly teaches “paper, metal sheets and foils, nonwoven fabrics, and films of thermoplastic resins such as polyesters, polyamides, polyolefins, polycarbonates, polyvinyl chloride, etc.” (Page 11, lines 15-19); 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 in view of Tseng, or alternatively, Tseng in view of Donovan given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claim 44, in addition to the discussion above with respect to instant claim 43 from which instant claim 44 depends, wherein each of Donovan and Tseng 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); it is noted that Donovan teaches examples utilizing a slot die and heated rollers maintained at approximately 118°C, 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 (page 11, lines 26-29), however, neither Donovan nor Tseng 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 again takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 44 would have been obvious over the teachings of Donovan in view of Tseng, or alternatively, Tseng in view of Donovan.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Donovan in view of Tseng, or Tseng in view of Donovan, as discussed above, and in further view of DiZio (US2007/0100306A1). The teachings of Donovan and 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 in view of Tseng, or alternatively, Tseng in view of Donovan, 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 4/6/2026 have been fully considered but they are not persuasive and/or moot in view of the additional remarks above with respect to the combined teachings of Donovan and Tseng. More specifically, the Applicant argues that the Office’s asserted “blend” rationale is allegedly “insufficient because it does not identify a reference-based reason to combine Tseng’s long-chain (meth)acrylate latex with Donovan’s silicone-acrylate latex in the manner claimed,” arguing that there must be a reason for a skilled person to combine the elements in the way as claimed (referring to KSR Int’l Co. v. Teleflex Inc.), that there must be “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness” (referring to In re Kahn), and that “the inquiry requires identifying a reason that would have prompted a skilled artisan to combine the references (referring to Adapt Pharma Operations Ltd. v. Teva Pharms. USA, Inc.), see page 9 of the response. The Applicant argues that Tseng’s disclosure with respect to combining the latex with one or more other latexes “is generic and open-ended” and “does not single out silicone latexes, does not identify Donovan-type silicone polymers as preferred co-latexes, and does not explain that blending with such a silicone latex would provide improved release performance” (see page 9 of the response), arguing that the “rejection also improperly assumes that, because both references concern release coatings, their polymers could simply be mixed with predictable success” but that “KSR teaches that the relevant inquiry is whether the proposed combination would represent a predicable use of prior-art elements according to the established functions” (see page 9 of the response). The Applicant also argues that the claimed weight percentage range of instant claim 26 is not obvious over the combined teachings of cited references, particularly given that as “shown in the chart shown on page 10 of Applicant’s last response, there is a noticeable drop in readhesion from the samples that were 100% of the silicone-containing (meth)acrylic polymer (i.e., first polymer) [versus] those that comprised less than 100%” (see page 10 of the response). However, the Examiner respectfully disagrees and again notes that the data relied upon by the Applicant is not commensurate in scope with the claimed invention as discussed in the prior office action (and incorporated herein by reference). The Examiner also again notes as discussed in detail above, both Donovan and Tseng are of the same field of endeavor as the instantly claimed invention, with Donovan teaching a release layer comprising the instantly claimed first polymer and Tseng teaching a release layer comprising the instantly claimed second polymer, and given that per MPEP § 2144.06, “‘[i]t is “prima facie obviousness 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.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960)…Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992)…; and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023),” the Examiner maintains her position that absent any clear showing of criticality and/or unexpected results with respect to the claimed invention (wherein , the claimed invention comprising a release layer comprising a blend of a silicone-containing polymer as taught by Donovan (reading upon the claimed “first polymer” as recited in instant claims 25, 33-36, 40, and 42-43), with a (meth)acrylate polymer as taught by Tseng (reading upon the instantly claimed “second polymer” and monomers thereof as recited 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) would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the detailed reasons above.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Von Jakusch (EP1710287A2) teaches a curable silicone release coating composition comprising (i) a polydialkylsiloxane having acrylate and/or methacrylate groups and (ii) an organic compound free of silicon and comprising at least two reactive (meth)acrylate groups, wherein said organic compound free of silicon has a viscosity of at least 500 mPa-s at 25°C and may be a polymeric compound. Culbertson (US2002/0058758A1) teaches a release coated polymer film wherein the release coating includes a cross-linkable acrylic (co)polymer and/or a polyolefin wax, and further preferably comprises a polysiloxane for beneficial results.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights