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.
Claim(s) 1-2 and 4-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amako et al. (US 2015/0001567).
Regarding claims 1-2: Amako et al. (US ‘567) discloses organosiloxane compositions [abstract; 0165], wherein the composition has melt flow temperatures of from 25 oC to 200 oC [0030]. Amako et al. (US ‘567) discloses the solid compositions can contain a resin-linear organosiloxane block copolymer and a superbase catalyst [0125; 0318], such as 1,8-diazabicyclo[5.4.0]undece-7-ene (DBU) [0134-0135; 0142] in an amount of 0.1 to 1000 ppm (0.00001-0.1 wt%) [0143]. Amako et al. (US ‘567) discloses the resin-linear organosiloxane block copolymer contains T-units (R2SiO3/2) [0099; 0101; 0195], silanol and/or alkoxy (hydrolyzable) groups [0198], and has a glass transition temperature (Tg) of about 50 oC to about 100 oC [0099], wherein R2 can be phenyl and/or methyl [0104]. Amako et al. (US ‘567) discloses the solid composition can contain additional components [0224; 0318] such as a silicon-containing small molecule stabilizer [0153; 0156] having a molecular weight not exceeding 1,000 g/mol {corresponding to x = 1-12 with R1 = Me} [0155] in an amount of about 0.1 wt% to about 0.5 wt% [0157].
Amako et al. (US ‘567) does not specifically disclose a pre-mix of superbase catalyst (ex. DBU) and silicon-containing small molecule, at a mass ratio of 1:99 to 90:10 However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared a pre-mix containing superbase catalyst and silicon-containing small molecule based on the invention of Amako et al. (US ‘567), and would have been motivated to do so since Amako et al. (US ‘567) suggests that the composition can contain 0.1 wt% (1000 ppm) superbase catalyst [0134-0135; 0143; 0318] and 0.1 wt% silicon-containing small molecule [0153; 0157; 0318] (corresponding to a 50:50 mass ratio). Additionally, “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) [see MPEP 2144.06].
Regarding claims 4-6: Amako et al. (US ‘567) discloses the solid composition contains a phosphor, wherein the phosphor is incorporated using 3-roll mixing [0085-0087; 0307-0309].
Regarding claim 7: Amako et al. (US ‘567) discloses the solid composition is suitable for injection transfer molding [0226].
Regarding claims 8-9: Amako et al. (US ‘567) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Amako et al. (US ‘567) discloses the solid composition in the form of a film or pellets [0185] [instant claim 8] and can be ink-jet printed [0227] [instant claim 9].
The claimed effects and physical properties, i.e. the complex melt viscosity of the entire composition at 130 °C is 500,000 Pa·s or less [instant claims 8-9] would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 10: Amako et al. (US ‘567) discloses curing the composition [0229] to form an encapsulant [0319].
Regarding claim 11: Amako et al. (US ‘567) discloses applying the composition to a release film [0185].
Regarding claims 12-13: Amako et al. (US ‘567) discloses laminates [0226], wherein the composition is layered on a LED [0225].
Regarding claim 14: Amako et al. (US ‘567) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Amako et al. (US ‘567) discloses adding the superbase catalyst and stabilizer to the solid composition by stirring, vortexing, mixing, and/or 3-roll milling [0224; 0307-0308; 0318]. Amako et al. (US ‘567) discloses the solid composition is suitable for injection transfer molding for the production of a layered body [0225-0226]. Amako et al. (US ‘567) discloses forming the composition without solvent [0184; 0307; 0318].
Amako et al. (US ‘567) does not disclose process steps in the same order of instant claim 14. However, a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
Regarding claim 15: Amako et al. (US ‘567) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Amako et al. (US ‘567) discloses the solid composition is suitable for injection transfer molding for the production of a layered body [0225-0226-0228]. Amako et al. (US ‘567) discloses curing the composition [0229; 0319].
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: While Amako et al. (US 2015/0001567) discloses the composition can contain a superbase catalyst and a silicon-containing small molecule stabilizer [0125; 0153-0156; 0318], applicant has shown unexpected results of the claimed pre-mixture of catalyst (ex. DBU) and chain or cyclic organopolysiloxane with respect to melt curability at a reduced (relatively low) concentration of catalyst.
Response to Arguments
Applicant's arguments filed 6/11/26 have been fully considered but they are not persuasive. The rejection of claims based upon Amako et al. (US 2015/0001567) is maintained.
Amako et al. (US 2015/0001567) was relied on for disclosing organosiloxane compositions [abstract; 0165], wherein the composition has melt flow temperatures of from 25 oC to 200 oC [0030]. Amako et al. (US ‘567) discloses the solid compositions can contain a resin-linear organosiloxane block copolymer and a superbase catalyst [0125; 0318], such as 1,8-diazabicyclo[5.4.0]undece-7-ene (DBU) [0134-0135; 0142] in an amount of 0.1 to 1000 ppm (0.00001-0.1 wt%) [0143]. Amako et al. (US ‘567) discloses the resin-linear organosiloxane block copolymer contains T-units (R2SiO3/2) [0099; 0101; 0195], silanol and/or alkoxy (hydrolyzable) groups [0198], and has a glass transition temperature (Tg) of about 50 oC to about 100 oC [0099], wherein R2 can be phenyl and/or methyl [0104]. Amako et al. (US ‘567) discloses the solid composition can contain additional components [0224; 0318] such as a silicon-containing small molecule stabilizer [0153; 0156] having a molecular weight not exceeding 1,000 g/mol {corresponding to x = 1-12 with R1 = Me} [0155] in an amount of about 0.1 wt% to about 0.5 wt% [0157]. Amako et al. (US ‘567) discloses the composition can include the superbase and stabilizer [0318].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) [see MPEP 2113].
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) [see MPEP 2113].
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that pre-mixing the catalysts with the liquid organopolysiloxane stabilizes the catalyst and suppresses interactions with solid phases, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Amako et al. (US ‘567) discloses the composition can include the superbase and stabilizer [0318].
A prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
While Examples 1-7 listed in Tables 2-1 & 2-2 appear to provide unexpected results over Comparative Example 1-2, however, Examples 1-7 employed in Tables 2-1 & 2-2 represent specific compositions and are not commensurate in scope with the breadth of compositions included in claim 1. It is unclear if the combination and amounts of the species contained in catalyst B-c (mixture 1% DBU with cyclic phenylmethylsiloxane) provide the unexpected results, or if any combination and amount of condensation catalyst and chain or cyclic organopolysiloxane in the claimed mass ratio (1:99 to 90:10) yield comparable results.
As the data obtained from Ex. 1-7 in Tables 2-1 & 2-2 was obtained from compositions of narrower scope than the broad genus of claim 1, it is not possible for the examiner to conclude the data from Tables 2-1 & 2-2 represent unexpected results over the prior art of record [see also MPEP 716.01(c), 716.02(d), 2145; In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972)].
Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) [see MPEP 716.02(d)]. See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) [See MPEP 716.02(d)].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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