DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 Applicant’s previous election of group I, claims 1-9, still applies and claims 10-14 are withdrawn.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 response of 05/04/26 has been entered. Applicant’s remarks are not persuasive and the previous rejection(s) are maintained.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 remarks are not persuasive.
Applicant argues against the inclusion of the MQ resin from Allen in Dohler on the grounds that Dohler is directed to a release coating, not a pressure sensitive adhesive, and that Dohler mentions adhesion only in the context of anchorage to the substrate, not as release control. However, Dohler does not need to call out for tackiness additives or release control agents for them to be rendered obvious in view of the secondary references. Nor does the secondary reference need to address adhesion/release solely via the acrylate siloxanes mentioned by Dohler (contrary to Applicant’s argument).
Here, Allen provides its own motivation for the MQ resin. First, it is obvious to include as a reinforcing agent (a motivation that Applicant ignores). Second, it provides tackiness which is obvious both in terms of the adhesion to the substrate but also because it will affect the release properties of the composition. Contrary to Applicant’s remarks, “release” coatings as claimed are not intended to have only release properties without any adhesion. Dohler explicitly seeks to use the “release” coating to temporarily adhere an adhesive (see, e.g., col. 7, lines 10-25) which indicates that Dohler seeks some balance of adhesion/release forces at the surface of the coating opposite to the substrate (i.e., adhesion is not solely discussed with respect to the interface between the coating and the substrate as argued by Applicant). This is confirmed by Applicant own disclosure and remarks, noting that the present “release coating” (like in Dohler) is intended to have temporary adhesion/bonding with the adhesive that is applied to the release coating (prior to the adhesive being released). If the release coating was purely “release” functional without any adhesion functionality, the adhesive discussed in Applicant’s remarks would not temporarily adhere to the release coating. This is further confirmed by Applicant’s citation to the specification, stating that the Si-OH MQ resin controls adhesion to the adhesive to obtain smooth release profile. Thus, a release coating and a pressure sensitive adhesive are not mutually exclusive, as argued by Applicant because both coatings have some adhesion properties.
Thus, even if Allen does not explicitly discuss the tackiness in the context of a “release control” as noted by Applicant, the tackiness imparted by the MQ reinforcing filler in Allen would still be obvious to adjust (by adjusting OH content as taught by Allen) to control the balance of release and adhesive properties in Dohler. Further to the above, Sherman confirms that pressure sensitive adhesives, like release coatings, have a balance of adhesive/tackiness and release properties ([0079]). As indicated above, this is not necessary for the combination of Dohler and Allen to be obvious because Dohler explicitly seeks adhesion and release functionality between the coating and the applied adhesive, such that adjusting the tackiness of the reinforcing filler from Allen would have been obvious.
Based on the above, the inclusion of the OH functional MQ resin from Allen in Dohler is demonstrably not based on hindsight but rather the prior art.
Applicant then argues that including the MQ resin is a “substantial reformulation” of Dohler. However, Dohler does not discuss the formulation as some fragile composition that may not be adjusted/altered in any way. To the contrary, Dohler envisions additives and fillers. Furthermore, as explained above, Allen (and Sherman) indicate that the effect on the adhesive/release properties of the release coating of Dohler with respect to the subsequently applied adhesive would be adjustable via the OH content variable. Thus, the secondary references provide a mechanism for accounting for the effect of the reinforcing MQ filler on the adhesive/release properties of the coating in Dohler. Applicant argues that this tackiness/adhesion of the release surface is not a “known variable” in Dohler. While Dohler is not required to recognize the benefits taught by the secondary references, as indicated above, Dohler does indeed recognize that the release coating is intended to have both release and adhesion properties to some degree with respect to the subsequently applied adhesive.
Applicant then argues that Dohler’s teachings are too broad to render obvious claims 3-5. The examiner maintains that the overlapping formula, as explained in the rejection, render obvious claims 3-5 and are not overly broad, especially compared to the breadth of claims 3-5.
Applicant then argues against the rejection of claim 7 on the grounds that the tackiness based optimization of OH content, as taught by Allen and Sherman, is irrelevant/non-obvious in Dohler on the grounds that tackiness is mutually exclusive to release properties. As indicated above, this is an overly simplistic and mischaracterizing interpretation of the release coatings of Dohler and the present invention, which seek a balance of adhesion/tackiness and release properties.
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 extension fee 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights