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 .
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Armstrong (Us Patent No. 6,124,419) in view of Duffy (US 2003/0149166 A1).
Regarding claim 1, Armstrong teaches a release modifier composition comprising an alkenyl functional polyorganosiloxane (Abstract). The formulation of Armstrong includes:
The aforementioned alkenyl-functional siloxane (i) having the formula MD1aD2bTcM, wherein M is R3SiO1/2, D1 is (CH3)2SiO2/2, D2 is R2SiO2/2, and T is RSiO3/2, and wherein R is independently selected from the group consisting of alkyl groups, aryl groups, and alkenyl groups, at least one R group is an alkenyl group (Which may be a hexenyl group), and wherein a, b, and c are the same or different and may be zero or integers, and wherein the combined value of a, b, and c preferably ranges from 20 to 750 (col. 3, lines 12-27). This alkenyl-functional siloxane (i) reads on the claimed “(A1)” and “(A2)” as claimed because it falls within the scopes of said materials when, within Armstrong, c is zero, all terminal R groups are methyl groups, one of each of the two R groups attached to each silicon atom within the D2 block is methyl while the other is a hexenyl group, a is within the range of 1 to 400, and b is within the range of zero to 50, with the proviso that the sum of a and b is at least 20. Armstrong particularly states that more than one alkenyl-functional siloxane may be used (col. 2, lines 65-66).
At least one organohydrogensiloxane (ii) (col. 5, lines 62-64), which reads on the claimed component “(B).”
A platinum group metal-containing catalyst (iii) (col. 5, lines 64-65), which reads on the claimed component “(C).”
An inhibitor for preventing the curing of the coating below a predetermined temperature (col. 8, lines 62-64), which reads on the claimed component “(D).”
Water (col. 8, lines 13-15), which reads on the claimed component “(E).”
At least one surfactant (col. 8, lines 13-15), which reads on the claimed component “(G).”
A preferred surfactant which is polyvinyl alcohol (col. 8, lines 20-21), which reads on the claimed component “(H).”
Furthermore, the formulation of Armstrong does not require the incorporation of an aliphatic polyethers, (co)polyacrylamides, polysaccharides, and polyacrylates, and doesn’t require the incorporation of unreactive organopolysiloxanes. Therefore, the formulation of Armstrong meets the claimed limitation requiring that the claimed emulsion is free of these stabilizers.
Regarding the compositional amounts of the above-recited components which read on the claimed formulation, Armstrong teaches that, generally, any amount of each of components (i)-(iv) (which read on the claimed components “(A) – (D)”) may be included in the formulation (col. 8, lines 28-33). Armstrong further states that these components may comprise about 1 to about 75 parts each, for example (col. 8, lines 30-31). These amounts overlap the claimed amounts of “25 weight parts to 100 weight parts” and “0 to 75 weight parts,” establishing prima facie cases of obviousness. Furthermore, Armstrong teaches that the ratio of Si-H groups to Si-Vinyl groups may most preferably range from 1:1 to 3:1 (col. 6, lines 61-67), which encompasses the claimed range of “1.2/1 to 3.0/1,” establishing a prima facie case of obviousness. Armstrong further teaches that the amount of catalyst is sufficient to provide 10-500 ppm of with respect to components (i) and (ii) (col. 7, lines 40-44), which overlaps the claimed range of “10 to 1000 ppm,” establishing a prima facie case of obviousness. Furthermore, Armstrong teaches that the reaction inhibitor is present in amounts ranging from 0.1 to 10 parts per 100 parts of component (i) (col. 9, lines 55-58), which overlaps the claimed range of “0.02 weight part to 0.8 weight part,” establishing a prima facie case of obviousness. Furthermore, Armstrong teaches that between 1 and 5 weight percent, based on the total weight of components (i)-(iv) of surfactant is included in the formulation (col. 8, lines 33-35). Given the above compositional amounts of said components, which together comprise a total of about 5 to about 375 parts of the formulation (1-75 parts each of components (i)-(iv), wherein component (i) includes two polyorganosiloxanes as claimed and as explicitly allowed by Armstrong, as described above), the formulation of Armstrong may therefore include between about 0.25 and about 18.8 parts of surfactant, which encompasses the claimed range of “0 to 3.0 weight parts,” establishing a prima facie case of obviousness. Furthermore, as described above, Armstrong regards polyvinylalcohol as one of the surfactants within the formulation, which may be included alone or in combination with other surfactants. The polyvinyl alcohol of Armstrong may therefore be included in amounts ranging from about 0.25 and 18.8 parts by weight, which overlaps the claimed range of “0 to 10.0 weight parts,” establishing a prima facie case of obviousness. Based on the above, the formulation of Armstrong may therefore also meet the claimed limitations requiring that the combined amounts of surfactant and polyvinyl alcohol are greater than 0.1 part per 100 parts of the polyorganosiloxane.
Armstrong differs from claim 1 because it is silent with regard to the incorporation of a buffer.
In the same field of endeavor, Duffy teaches an aqueous silicone emulsion for the preparation of an anti-adherent coating (abstract), which may be used for paper applications (Abstract). This purpose aligns closely with that of Armstrong, which also particularly contemplates the use of the inventive composition for paper coating applications (col. 10, lines 44-45). Duffy teaches that the inventive composition comprises emulsions containing polyorganosiloxanes containing vinyl units, which are crosslinkable via polyaddition with Si-H units in the presence of a platinum catalyst (Abstract), and further teaches the incorporation of a buffer within the inventive emulsion (Abstract). It therefore would have been obvious to one having ordinary skill I in the art at the time of filing to incorporate the buffer of Duffy into the formulation of Armstrong for the purpose of controlling the pH thereof. Duffy teaches that the incorporation of buffer is useful for maintaining a desired pH range between 5 and 9, and teaches a preferred buffer system comprising sodium bicarbonate (Abstract). Duffy does not explicitly disclose the claimed range of parts by weight of buffer, but does state that the amount of buffer used is directly responsible for the pH of the emulsion ([0071]). It is prima facie obvious to optimize a result-effective variable to achieve a recognized result (see MPEP 2144.05.II.B). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to optimize the amount of buffer within the formulation of Armstrong as taught by Duffy for the purpose of specifically controlling the pH of the inventive emulsion. One would have had a reasonable expectation of success in doing so because Duffy states that doing so allows for a desirable pH range of 5 to 9 to be achieved. Furthermore, the buffer capacity of a composition will be concentration-dependent, while the pH of a buffered solution will remain relatively constant with respect to buffer concentration. The buffer system contemplated by Armstrong as modified by Duffy is based on sodium bicarbonate, which is the same as one of those contemplated by the instant Application (c.f. instant Specification at [0044]).
Furthermore, as described above, Armstrong teaches a composition which contains all of the same components in all of the same amounts as claimed, with the sole exception of the buffer. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. It is therefore expected that NaHCO3 buffered emulsions of the formulation of Armstrong as modified by Duffy will inherently require the same amounts of buffer as the claimed composition to maintain a desired pH level (which is the same reason the buffer is added to the claimed formulation, as explained by [0044] of the instant Specification). The claimed amounts of buffer are therefore prima facie obvious in view of Armstrong as modified by Duffy.
Regarding claim 2, Armstrong teaches that the inventive organohydrogensiloxanes may be trimethylsiloxy-terminated polymethylhydrogensiloxanes (p. 21, claim 13), and teaches that the organohydrogensiloxanes may have between 2 and 100 or more hydrogen atoms per molecule (col. 6, lines 32-45). These components read on the claimed “polyorganohydrogensiloxane” because they are identical said component when, within claim 2, all R1 groups are methyl groups, x and y are both zero, w is 2, and z is 3 to 100.
Regarding claim 3, Armstrong specifically states that the catalyst may comprise a platinum-group catalyst including ruthenium, rhodium, palladium, osmium, iridium, and platinum (col. 7, lines 1-6), and specifically teaches the incorporation of , inter alia, tetrachloroplatinate and completexes of platinum halides with unsaturated compounds (col. 7, lines 21-31), which reads on the claimed group “(C2).”
Regarding claim 4, Armstrong teaches the preferred use of, inter alia, acetylenic alcohols and silylated acetylenic alcohols (col. 9, lines 20-40), which read on the claimed list.
Regarding claim 5, as described above, Duffy teaches that the buffer is preferably based on sodium bicarbonate. The buffer system therefore involves at least a monoprotic acid and its conjugate base, which reads on the claimed limitation.
Regarding claim 6, Armstrong teaches that the inventive surfactants may be nonionic (col 8, lines 15-17).
Regarding claim 7, as described above, Armstrong teaches the incorporation of polyvinyl alcohol (col. 8, lines 20-21).
Regarding claim 8, Armstrong as modified by Duffy teaches all of the limitations of claim 1, as described above. Armstrong teaches the incorporation of a biocide (col. 8, lines 38-40), but is silent with regard to the incorporation of the particularly claimed amounts of biocide.
Duffy also teaches the incorporation of a biocide within the inventive formulation (Abstract), and teaches the incorporation of between 0 and 10 ppm of biocide with respect to the combined amounts of polyorganosiloxane and polyorganohydrogensiloxane ([0058]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 214.406). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate between 0 and 10 ppm of biocide with respect to components (i) and (ii) into the formulation of Armstrong, as Duffy recognizes these as suitable biocide concentrations within silicone release paper coatings. In doing so, the biocide would be incorporated in amounts of 0-10 ppm per 2-150 parts of components (i) and (ii), which falls within the claimed range of “up to 1.0 weight parts, per 100 weight parts of starting material (A),” establishing a prima facie case of obviousness.
Regarding claim 9, as described above, Armstrong teaches an alkenyl-functional siloxane (i) having the formula MD1aD2bTcM, wherein M is R3SiO1/2, D1 is (CH3)2SiO2/2, D2 is R2SiO2/2, and T is RSiO3/2, and wherein R is independently selected from the group consisting of alkyl groups, aryl groups, and alkenyl groups, at least one R group is an alkenyl group (Which may be a hexenyl group), and wherein a, b, and c are the same or different and may be zero or integers, and wherein the combined value of a, b, and c preferably ranges from 20 to 750 (col. 3, lines 12-27). This alkenyl-functional siloxane (i) reads on the claimed “(A1)” and “(A2)” as claimed because it falls within the scopes of said materials when, within Armstrong, c is zero, all terminal R groups are methyl groups, one of each of the two R groups attached to each silicon atom within the D2 block is methyl while the other is a hexenyl group, a is within the range of 1 to 400, and b is within the range of zero to 50, with the proviso that the sum of a and b is at least 20. Armstrong particularly states that more than one alkenyl-functional siloxane may be used (col. 2, lines 65-66).
Regarding claim 10, as described above, Armstrong teaches that component(s) (i) may be included in amounts ranging from 1-75 parts (col. 8, lines 30-31), and teaches an alkenyl-functional siloxane (i) having the formula MD1aD2bTcM, wherein M is R3SiO1/2, D1 is (CH3)2SiO2/2, D2 is R2SiO2/2, and T is RSiO3/2, and wherein R is independently selected from the group consisting of alkyl groups, aryl groups, and alkenyl groups, at least one R group is an alkenyl group (Which may be a hexenyl group), and wherein a, b, and c are the same or different and may be zero or integers, and wherein the combined value of a, b, and c preferably ranges from 20 to 750 (col. 3, lines 12-27). This alkenyl-functional siloxane (i) reads on the claimed “(A1)” and “(A2)” as claimed because it falls within the scopes of said materials when, within Armstrong, c is zero, two of the three terminal R groups on each terminal Siloxy group is a methyl, while the remaining terminal R group is a hexenyl/alkenyl group, a is within the range of 20 to 400, and b is zero. Armstrong particularly states that more than one alkenyl-functional siloxane may be used (col. 2, lines 65-66).
Regarding claims 11, 13, and 15, as described above, Armstrong teaches that component(s) (i) may be included in amounts ranging from 1-75 parts (col. 8, lines 30-31), and teaches an alkenyl-functional siloxane (i) having the formula MD1aD2bTcM, wherein M is R3SiO1/2, D1 is (CH3)2SiO2/2, D2 is R2SiO2/2, and T is RSiO3/2, and wherein R is independently selected from the group consisting of alkyl groups, aryl groups, and alkenyl groups, at least one R group is an alkenyl group (Which may be a hexenyl group), and wherein a, b, and c are the same or different and may be zero or integers, and wherein the combined value of a, b, and c preferably ranges from 20 to 750 (col. 3, lines 12-27). This alkenyl-functional siloxane (i) reads on the claimed “(A1)” and “(A2)” as claimed because it falls within the scopes of said materials when, within Armstrong, c is zero, two of the three terminal R groups on each terminal Siloxy group is a methyl, while the remaining terminal R group is a hexenyl/alkenyl group, a is within the range of 0 to 400, and b in the range of 2 to 50. Armstrong particularly states that more than one alkenyl-functional siloxane may be used (col. 2, lines 65-66).
Regarding claim 16, as described above, Armstrong teaches that component(s) (i) may be included in amounts ranging from 1-75 parts (col. 8, lines 30-31), and Armstrong particularly states that more than one alkenyl-functional siloxane may be used (col. 2, lines 65-66).
Regarding claims 17-18, Armstrong teaches (I) applying the inventive composition to the surface of a substrate (col. 10, lines 8-12), (II) curing said coating via the application of heat (col. 10, lines 39-43). Armstrong further teaches that this dries the composition (e.g., col. 17, lines 18-20). Finally, Armstrong teaches that the substrate is preferably a flexible substrate such as paper (col. 10, lines 44-45).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762