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 amendments filed 4/29/26 overcome the rejections set forth under 35 USC 112(b) in the office action mailed 12/29/25, but do not overcome the rejection set forth under 35 USC 102, which is maintained below.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DeGroot (WO 2020/121930 A1) .
An English-language equivalent of DeGroot, U.S. PG Pub. No. 2022/0282142, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language equivalent.
In paragraph 10, DeGroot discloses a silicone adhesive composition comprising components (A), (B), (D), and (E) which are identical to components (A), (B), (D), and (E) of claim 1. In paragraph 9 DeGroot indicates that the silicone adhesive composition is pressure sensitive, as recited in claim 1. The silicone adhesive composition of DeGroot further comprises an organopolysiloxane resin (C). In paragraph 52 DeGroot discloses that the component (C) preferably has a hydroxyl content within the range recited for component (C) of claim 1. In paragraph 134 DeGroot discloses a specific suitable component (C) having a hydroxyl content of 4.5 mol% and having a weight average molecular weight of 4500, meeting the limitations of component (C) of claim 1. In paragraph 81 DeGroot discloses that the composition can comprise an organic solvent in an amount of less than 20% by weight, as recited in claim 1, and can be essentially free of organic solvent. While DeGroot does not specifically disclose the glass transition temperature of a pressure-sensitive adhesive layer obtained by curing the composition, since the composition of DeGroot meets the compositional limitations of the claims, it will be capable of producing a pressure-sensitive adhesive layer having such a glass transition temperature. Claim 1 is therefore anticipated by DeGroot.
In paragraph 72 DeGroot discloses that the ratio of silicon-bonded hydrogen atoms in (B) to the aliphatic unsaturated carbon-carbon bond-containing groups in (A) and (D) ranges from 0.70 to 1.30, within the range recited in claim 2. It is noted that DeGroot teaches in paragraphs 42-43 DeGroot discloses that the component (C) comprises monovalent organic groups which are preferably free of (“non-containing”) aliphatic unsaturated carbon-carbon bonds, therefore leading to a vinyl content within the range recited in claim 3, and indicating that component (C) does not significantly affect the ratio recited in claim 2. DeGroot does not disclose any other required components containing silicone-bonded hydrogen atoms besides component (B) and therefore meets the proviso of claim 2 that the composition be substantially free of such components.
In paragraph 11 and the reference’s claim 2, DeGroot discloses that (A), (B), (C), and (D) are present in the amounts recited in claim 4. In paragraph 57 DeGroot discloses that component (D) can be the types (D1) and (D2) recited in claim 5. In paragraph 88 DeGroot discloses that a pressure-sensitive adhesive layer obtained by curing the composition has an adhesive force of 100 to 2,500 gf/inch, within the range recited in claim 6. A pressure-sensitive adhesive layer obtained by curing the adhesive composition of DeGroot also meets the limitations of claim 7.
In paragraphs 101-106 DeGroot discloses a laminate body comprising a pressure-sensitive adhesive layer obtained by curing the adhesive composition and meeting the limitations of claims 8-10. In paragraph 12 (items 10-11) and 98, as well as the reference’s claims 10-11, DeGroot discloses elastic adhesive members obtained by curing the composition, as recited in claim 11, and electronic equipment or electrical devices, as recited in claim 12.
In light of the above, claims 1-12 are anticipated by DeGroot.
Response to Arguments
Applicant's arguments filed 4/29/26 have been fully considered but they are not persuasive. Applicant argues that the English translation of the priority document perfects the priority claim to the Japanese application filed 12/25/20, and also presents a declaration by Iimura stating that the subject matter relied upon in the DeGroot reference, of which Iimura is listed as a co-inventor, was invented solely by Iimura. However, this declaration is not sufficient to disqualify the DeGroot reference as prior art under the 35 USC 102(b)(1)(A) exception. See the discussion in MPEP 2155.01 (in particular Example 2) and EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). While declaration of Iimura contains an unequivocal statement from Iimura was the inventor of the subject matter of the disclosure, the declaration does not contain an explanation of the presence of additional authors. Applicant’s remarks state that “the other inventors were involved with other aspects of D1, and they obtained knowledge from Tomohiro IIMURA.”, but this is not mentioned in the declaration, and there is no statement in either the declaration or the remarks of what other aspects of the DeGroot reference the other inventors were involved with.
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.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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