DETAILED ACTION
Claims 1 and 3-12 are pending. Claim 2 was previously canceled.
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 .
Response to Arguments
Applicant’s arguments, filed May 11, 2026, with respect to the rejection(s) of claim(s) 1 and 3-12 under 35 U.S.C. 103 over Watanabe in view of Fu, Watanabe in view of Fu and Sakamoto, and further in view of Zha have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art Lien and Kimura, see rejections below.
Therefore, this action is Non-Final.
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.
Claims 1-5, 7, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lien et al. (U.S. 4,528,081).
Lien et al. teaches a mixture, in parts by weight of: (a) 30-100 parts of a reactive polyorganosiloxane terminated with acrylic functional dialkoxysilyl or diaryloxysilyl groups and containing 0.1-5 parts of a silicone moisture curing catalyst; (b) 0-70 parts of a trimethylsilyl terminated silicone oil; and (c) an effective amount of a photosensitizer (photoinitiator) [col 1 lines 60-68] (claims 1 and 12) in which the principal ingredient in the formulations of the invention are polyorganosiloxanes terminated with acrylic functional dialkoxysilyl or diaryloxysilyl groups. These silicones may be represented by formula (1) [col 2 lines 7-11]:
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[col 2 lines 15-27] where for optimum moisture curing characteristics, R3 will preferably be alkyls which have 3 or less carbon atoms [col 2 lines 37-38]. Lien et al. also teaches in Example 3: A methacryloxypropyldimethoxysilyl terminated dimethylsiloxane was prepared from 101.7 g of a 20,000 cst silanol terminated dimethylsiloxane, 2.6 g methacryloxypropyltrimethoxysilane and 0.3 g tetraisopropylorthotitanate (catalyst) in a manner similar to that of Examples 1 and 2 except that 100.9 g of a 100 cst trimethylsilyl terminated silicone oil was added to the mixture prior to heating. The resulting product had a viscosity of 21,200 cps. 3.05 g of the 21,200 cps product were then mixed with 0.6 g of the same 100 cst silicone oil and 0.07 g dimethoxyacetophenone. This composition, containing 58% oil, cured to a soft gel 1/16" deep upon exposure to UV of about 70,000 microwatts/cm2 for 60 seconds. 193.8 g of the 21,200 cps product were mixed with 45 g of the 100 cst silicone oil (18 wt% claim 3) and 5 g dimethoxyacetophenone (photoinitiator). The mixture was cast into 1/8" thick open top molds and cured by UV light of the same intensity for six intervals of 20 seconds each, with a cooling period between each interval. The samples were then allowed to moisture cure overnight after which they were removed from the molds in 4"x4" square pieces, turned over, and the bottom surfaces subjected to three 20 second intervals of UV exposure to reduce tackiness [col 5 lines 35-60] which is equivalent to the composition of instant claim 12 and method of preparing a film comprising said composition of instant claims 1, 4, 7, and 11 when the (liquid) polysiloxane resin comprises siloxy units [R3SiO1/2], [(OZ)qSiO(4-q)/2] and at least one of [(OZ)tRMASiO(3-t)/2] or [(OZ)dRRMASiO(2-d)/2] in which R is a unsubstituted hydrocarbyl, RMA is
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where X is a divalent linking group and R1 is an alkyl group, Z is H or an alkyl group, q is 0-3, t is 0-2, and d is 0-1 obtained by reacting a silicone resin comprising SiO4/2 siloxy units and a silane component RMAR2xSi(OR2)3-x where RMA is an acryloxy functional group, R2 is an alkyl group having 1 carbon atom and x is 0 in the presence of a catalyst (claim 10).
Lien et al. does not explicitly teach the average concentration of OZ groups relative to moles of silicon atoms in the polysiloxane resin is at least 12 mole-percent.
However, the composition of Lien et al. is liquid at room temperature and dual UV and moisture curable due to the presence of both methacryloxy groups (RMA) and alkoxy groups (OZ) which, based on the instant specification, are intrinsic properties of a polysiloxane resin having a concentration of OZ groups of at least 12 mole-percent. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to calculate the concentration of OZ groups, and if necessary, appropriately adjust the concentration, to fall within the claimed range, through routine experimentation known in the art.
With regard to claim 5, Lien et al. teaches the inventive compositions may also contain other additives so long as they do not interfere with the UV and moisture curing mechanisms. These include adhesion promoters such as 2,3-epoxypropyltrimethoxy-silane [col 3 lines 34-38] which is equivalent to a functional diluent which is epoxy functional.
Claims 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lien et al. (U.S. 4,528,081) as applied to claims 1 and 5 above, and further in view of Kimura et al. (U.S. 2010/0019399).
With regard to claim 6, Lien et al. teaches the inventive compositions may also contain other additives so long as they do not interfere with the UV and moisture curing mechanisms. These include adhesion promoters such as 2,3-epoxypropyltrimethoxy-silane [col 3 lines 34-38] which is equivalent to a functional diluent which is epoxy functional.
Lien et al. does not teach the reactive diluent is a polyfunctional acrylate compound.
However, Kimura et al. teaches a polyorganosiloxane composition containing the following components (a)-(c). (a) 100 parts by mass of a polyorganosiloxane obtained by mixing at least one silanol compound represented by the general formula (1) below, at least one alkoxysilane compound represented by the general formula (2) below, and at least one catalyst selected from the group consisting of compounds represented by the general formula (3) below, compounds represented by the general formula (4) below and Ba(OH)2, and polymerizing the mixture without actively adding water thereinto [chemical formula 1] R2Si(OH)2 (1) [chemical formula 2] R'Si(OR'')3 (2) (chemical formula 3] M(OR''')4 (3) [chemical formula 4] M'(OR'''')3 (4) (b) 0.1-20 parts by mass of a photopolymerization initiator (c) 1-100 parts by mass of a compound other than the component (a) having two or more photopolymerizable unsaturated bonding groups [abstract], specifically, for improving film-forming characteristics, photosensitive characteristics and mechanical characteristics after curing, addition of a compound, other than the component (a), having two or more photopolymerizable unsaturated bond groups is important. As such monomers, polyfunctional (meth)acrylate compounds, which can polymerize by the action of a photopolymerization initiator, are preferable [0078].
Therefore, it would have been obvious to modify the composition of Lien et al. to additionally include a polyfunctional (meth)acrylate compound and arrive at the instant claims through routine experimentation of combining equally suitable components for the sought invention in order to improve film-forming characteristics, photosensitive characteristics and mechanical characteristics after curing.
With regard to claims 8 and 9, Lien et al. teaches the composition is UV and moisture cured. Lien et al. also teaches the composition may be used in electronic applications [abstract].
Lien et al. does not teach a photomask disposed on the composition to form a patterned film or removing the uncured regions from the patterned film with a solvent.
However, Kimura et al. teaches the composition is coated on various desired types of bases such as a silicon wafer, a ceramic substrate, an aluminum substrate and others. As a coating apparatus or a coating method can be used a spin coater, a die coater, a spray coater, immersion, printing, a blade coater, roll coating and the like. A coated base is soft-baked at 80 to 200°C for 1 to 15 min, and thereafter irradiated with active light rays through a desired photomask using an exposing projector such as a contact aligner, a mirror projector and a stepper [0096], thereafter, for improving the photosensitivity, as required, post-exposure baking (PEB) or pre-development baking may be performed in a combination of an arbitrary temperature and time [0098], then, development is performed by selecting a method such as an immersion method, a paddle method or a rotational spray method. As a developing solution, a good solvent for the composition of the present invention singly, or a suitable mixture of a good solvent and a poor solvent can be used [0099]. It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, both Lien et al. and Kimura et al. are directed to polysiloxane compositions suitable for electronic applications while Kimura et al. teaches additional method steps known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lien et al. and Kimura et al. through routine experimentation and arrive at the instant claims with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 5,300,608 and U.S. 5,663,269.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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