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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9 in the reply filed on March 16, 2026 is acknowledged. Applicant argues that claim 1 expressly recites the value of [Tg + 120]/[Tg’ + 120] is less than 1.0. Further, according to applicant, Itoh is silent as to disclosing the Tg value of the PSA layer resulting from its curable composition and high MW organopolysiloxane resin component (B1). This is not found persuasive because Itoh discloses identical PSA layer forming organopolysiloxane composition as claimed except for the property of the Tg. See page 4 of the restriction requirement mailed on January 15, 2026. Further, the claimed PSA does not require (b1) (see claim 1 reciting “(B) an organopolysiloxane or a mixture thereof, containing the following components (b1) and (b2) at a mass ratio of 1:99 to 0:100”). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). As such, the claimed Tg would inherently be present in the PSA of Itoh.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 16, 2026.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
As to claim 1, at lines 18 and 20, insert “the” before “component (b2)”.
Further, as to claim 1, at line 20 “mass ratio of component (B) component” should be recited as “mass ratio of component (B)”.
As to claim 2, at lines 3 and 4, insert the” before “component (b1)” and “component (b2)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claims 1, 2, 3, 4, 5, these claims recite “component (A)”, “component (B)” , “component (B) component”, “component (C)” and “component (D)”. It is unclear whether these components refer to “(A)”, “(B)”, “(C)”, and “(D)” of claim 1. In order to overcome this rejection, after “comprising” at line 2 in claim 1, applicant should recite “the following components”, and then insert “the” before each of “component” mentioned in the claims.
Further, as to claim 1, at lines 17-18, the claim recites “Tg’ (°C) represents the glass transition temperature of a pressure-sensitive adhesive layer obtained by curing a composition in which component (b2) is substituted…”. It is unclear whether “a composition” refers to the “organopolysiloxane composition” recited at lines 1-2 except that component (b2) is substituted. For purpose of examination, “a composition” as recited is interrupted to be the same organopolysiloxane composition recited at lines 1-2, except, the component (b2) is substituted.
Further, as to claim 3, this claim recites “raw rubber-like”. It is unclear what is meant by this recitation. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). The examiner respectfully submits that applicant should delete “raw rubber-like”.
Further, as to claim 7, this claim at line 3 recites “the composition”. There is a lack of antecedent basis for this limitation in the claim. This recitation is interpreted as “organopolysiloxane composition” recited in claim 1.
Further, as to claim 8, the scope of this claim is unclear. Specifically, the meaning of the recitation “stronger pressure-sensitive adhesive strength is provided as compared to….have a glass transition temperature (Tg’) consistent with the pressure sensitive adhesive layer…” is not clear. The examiner respectfully submits that the claim language is confusing.
Claim Rejections - 35 USC § 102/103
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 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.
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 4-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Itoh et al. (WO 2020032285 A1; US 20210284888 A1 is relied upon as equivalent reference in the Office action).
As to claim 1, Itoh teaches a claimed pressure sensitive adhesive (PSA) layer forming organopolysiloxane composition comprising components (A), (B)(b2), (C), and (D) (0017, claim 1, and Table 1 disclosing component b2 with Mw 3300, and OH content 4.5 mol%).
Further, as to claim 1 limitation “an organopolysiloxane or a mixture thereof, containing the following components (b1) and (b2) at a mass ratio of 1:99 to 0:100, the examiner submits a person having ordinary skill in the art would recognize that the claimed component (b1) is optional in the PSA layer forming organopolysiloxane composition, because the amount of (b1) can be zero. Given that Itoh discloses component (b2) (0017), a person having ordinary skill in the art would recognize that it meets claimed b1 to b2 mass ratio of 0:100 (i.e. component b2 alone is 100).
As to claim 1, Itoh teaches claimed invention except for the property “the value [Tg+120] / [Tg’+120]…is the same”. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Itoh as set forth previously discloses claimed PSA adhesive layer forming organopolysiloxane composition. As such, absent any factual evidence on the record, it is clear that the aforementioned claimed property would inherently be present in the PSA of Itoh. Alternatively, said property would obviously be present, once the PSA of Itoh is provided.
As to claim 2, Itoh as set forth previously discloses 100 parts by mass of the component (b2) and the Mw of the component (b2) is 3300 (Table 1).
As to claim 4, Itoh discloses this claim at 0017 (see “[4]”).
As to claim 5, Itoh discloses this claim at 0017 (see [5] wherein the molar ratio disclosed by Itoh of 20 to 60 is within the claimed range of 11 to 60).
As to claim 6, Itoh discloses that the PSA layer includes (A’) a chain organopolysiloxane which does not contain carbon-carbon double bond containing reactive group (which would encompass alkenyl group because it contains C=C) (see “[2](C)” at 0017). Further, this organopolysiloxane is without S-H bond as Itoh is silent as to disclosing presence of such S-H bond.
As to claim 7, Itoh discloses this claim at 0017 (see “[3]”).
As to claim 8, Satoh does not explicitly teach property “wherein stronger pressure-sensitive adhesive strength is provided as compared to…or more”. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Itoh as set forth previously discloses claimed PSA adhesive layer forming organopolysiloxane composition. As such, absent any factual evidence on the record, it is clear that the aforementioned claimed property would inherently be present in the PSA of Itoh. Alternatively, said property would obviously be present, once the PSA of Itoh is provided.
As to claim 9, Satoh discloses this claim at 0017 (see [6] on left hand column on page 3).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (WO 2020032285 A1; US 20210284888 A1 is relied upon as equivalent reference in the Office action) as applied to claim 1 above.
As to claim 3 limitation of the mass ratio B/A, Itoh discloses mass ratio of 0.9 to 1.8 (0017 at “[D]”). Claimed range of mass ratio 1.0 to 2.5 overlaps or lies within the range disclosed by Itoh such that prima facie case of obviousness exists. See MPEP 2144.05 (I). It would have been obvious to arrive at the claimed ratio which is rendered obvious from Itoh, motivated by the desire to form PSA with desired curability, cohesive strength, and storage elastic modulus (0042 of Itoh).
As to claim 3, Itoh does not explicitly disclose the Tg of the PSA layer in the range of from -70°C to 45°C. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Itoh as set forth previously renders obvious claimed PSA layer. As such, absent any factual evidence on the record, it is clear that the PSA layer of Itoh would inherently have the claimed Tg.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Itoh et al. (US 12503630 B2) discloses organopolysiloxane composition having PSA layer forming properties.
Greer et al. (US 20120045629 A1) discloses vinylhdrogenpolysiloxane adhesive composition.
Han et al. (US 20200208032 A1) discloses silicone based adhesive protective film.
Itoh et al. (US 20220224069 A1) discloses organopolysiloxane composition for forming PSA layer.
Itoh et al. (US 20220275262 A1) discloses PSA layer.
Itoh et al. (US 20220275251 A1) discloses PSA layer.
Yamazaki et al. (US 12134697 B2) discloses curable hot-melt silicone composition.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 April 2, 2026