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 .
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 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.
Claims 1-14 are pending. Applicant’s previous election of group I, claims 1-9, still applies and claims 10-14 are withdrawn.
Response to Amendment
Applicant’s amendment of 01/15/26 has been entered. The remarks regarding the rejection based on Allen as a primary reference are persuasive and this rejection is withdrawn. However, a new rejection is presented below. This action is accordingly non-final.
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dohler et al. (U.S. 6,268,404) in view of Allen (U.S. 2003/0064232) in view of Sherman (U.S. 2007/0148475).
Regarding claims 1-9, Dohler teaches coating having adhesion and release properties (see object of the invention) that comprises a mixture of acrylate functional polysiloxanes, each of which overlaps the scope of claim 1 and has an overlapping concentration of acrylate groups as in claims 3-4 (discussed below), which may be free-radical cured via photons and a photoinitiator as in claim 2 (col. 4, lines 45-65), and may have additional organic acrylate compounds as in claim 9 (see claim 12, organic because acrylate groups are organic). The formula I and II compounds overlap the claimed formula and have overlapping ranges of acrylate content: for formula I, if R1 and R3 are methyl, and R2 is a (CH2)3OCOCHCH2 acrylate group, there may be zero a groups and 25 b groups yielding a acrylate concentration of over 500 mmol acrylate/100g polymer, or there may be 300 a groups (each having a MW of about 74) and 1 b group (having a MW of about 172) yielding a acrylate concentration of about 4 mmol/100 g polymer; for formula II, if R1 is methyl and R2 is a (CH2)3OCOCHCH2 acrylate group, there may be 5 c groups, yielding an acrylate concentration of over 300 mmol/100 g polymer, or there may be 500 c groups, yielding an acrylate concentration of about 5 mmol/100 g polymer (col. 3 line 1-col. 4, line 45). Thus, each of the two formula overlaps the acrylate concentrations of claims 3 and 4, and each may be the claimed A1 and A2 organopolysiloxane, with the ratio of the two formula (10:90-90:10) resulting in an amount of A2 that overlaps claim 5 (after accounting for the other ingredients in the composition).
Dohler does not disclose the claimed OH siloxane additive (though additives/fillers are generally suggested, col. 4, lines 45-60). However, Allen is also directed to an acrylate functional polysiloxane composition having adhesion and release properties (i.e., pressure sensitive adhesive, [0109]) and teaches that hydroxy functional MQ resin, as in claim 8 may be included as a reinforcing agent, at an amount overlapping claim 6, with the silanol functionality also providing tackiness (a benefit to Dohler given the desired adhesion properties), (see abstract, [0068]-[0096]), such that it would have been obvious to have included such an MQ resin from Allen in Dohler to provide reinforcing effect and to have adjusted the OH content in such MQ resin to values within the range of claim 7 because Allen recognized the OH content as contributing to tackiness. In addition to the amount of OH MQ resin being overlapped as explained above, it is also a result effective variable that would have been obvious to optimize to within the claimed range as part of adjusting the amount of reinforcement/tackiness provided to the composition.
Allen also discloses more details regarding the benefits of additional acrylate compounds (i.e., co-curing/crosslinkers, [0090]), as already generally suggested in Dohler, such that Allen provides additional obvious motivation for including the more particular acrylate compounds from Allen, as in claim 9, in Dohler to improve crosslinking (even though the general additional acrylate compounds from claim 12 of Dohler is already sufficient to render obvious claim 9).
Regarding the OH concentration of claim 7, as explained above, Allen in modified Dohler already renders obvious optimization of such a range as a result effective variable in order to control tackiness, but Sherman makes the range of claim 7 further obvious because Sherman is also directed to OH functional MQ resins added for tackiness to a pressure sensitive adhesive (an adhesive with release properties) and teaches that suitable OH concentrations to achieve these effects overlaps claim 7 such that it would have been obvious to have used such an OH concentration for the OH functional MQ resin of modified Dohler because Sherman indicates it provides the sought after tackiness property (see abstract, [0011], [0079]-[0084]).
Response to Arguments
Applicant’s arguments are moot because of the new ground of rejection.
Applicant notes that claim 14 was inadvertently omitted from the withdrawn claims, even though only claims 1-9 were elected. The examiner confirms that Applicant is correct in determining that claim 14 is also withdrawn. Applicant also asks that the previous restriction requirement be withdrawn for the same reasons that the previous rejection in the last office action was withdrawn. However, as indicated above, claim 1 still fails to make a contribution over the art in view of the new rejection above and thus the restriction requirement is maintained.
It is noted that while Applicant’s remarks are persuasive against Allen as a primary reference, the reference is still applicable as a secondary reference. The high MW silicone in Allen does not affect the teachings regarding the MQ resin, which is obvious to include in Dohler as explained above. Furthermore, while Applicant indicates that Dohler does not report acrylate concentrations in mmol/100g, this is not necessary and the scope of the respective formula in Dohler results in an acrylate concentration that overlaps all the claimed ranges.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787