DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 6/26/26 is acknowledged. However, noting that this application has been transferred, the new Examiner has opted to rejoin claim 22 at this stage of the prosecution because it clearly does not pose an undue burden on the Examiner to search and examine both sets of claims as one. Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 4/27/26 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Rejections - 35 USC § 112
Claim 22 is 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.
The word “such” in this claim renders it indefinite as it makes the breadth of the
claim unclear.
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 and 20 - 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2002/082717, as interpreted by the attached English language translation.
WO teaches a pressure sensitive adhesive composition containing a component (d). See claim 1 in the English language translation. Component (d) has a general formula as shown in page 6 of the translation and includes the specific structure
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which is a boroxine compound. In this manner claim 1 is anticipated.
For claim 20 note again claim 1 which teaches MQ resin and polyorganosiloxane gum. These are used in the working example as well. This anticipates claim 20.
For claim 21, note that page 4 of the translation states:
Another essential objective of the invention is to provide crosslinkable and / or polymerizable compositions cationically under heat treatment.
Additionally page 5 refers to the presence of a conventional initiator such as a cationic photoinitiator.
For claim 22, see the top of page 18 which refers to pressure sensitive adhesive tapes.
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.
Claims 2 to 18 are rejected under 35 U.S.C. 103 as being unpatentable over WO 02/092717 English language translation attached to this office action, in view of Oishi et al. 2020/0056046.
For claim 2 note that the WO reference teaches a general formula that embraces
Formula (I). The specific compound of Formula (I) differs from the boroxine compound cited in the anticipation rejection supra in that Formula (I) has R1-3 groups as claimed while that specifically shown in the WO reference has fluorinated phenyl groups.
This difference would have been obvious to one having ordinary skill in the art in view of the teachings on page 5 which indicate that various groups such as alkyl, alkoxy and hydrogen can be bonded to the B atom in the alternative with the fluorinated phenyl groups. From this one having ordinary skill in the art would have found the selection of a boroxine of Formula (I) to have been obvious over the teachings in the WO reference.
In addition to the above, and particularly considering the formula requirements in claims 3 and 4, the Examiner refers to the teachings in Oishi et al. This reference is directed to an adhesive silicone composition. As can be seen in paragraph 58, trimeth-oxylboroxine (meeting general formula (I-1) in claim 4 when R11-13 are methyl groups) is known as an additive that imparts self-adhesive properties to a cured silicone adhesive. Considering the fact that the WO reference is directed to an adhesive, the skilled artisan would have been motivated to select trimethoxylboroxine as the compound (D) in the WO reference in an effort to take advantage of the additional adhesive properties that is possesses. In this manner each of claims 2 to 4 is rendered obvious.
For claims 5 to 8, note that these claims limit the selection of borane compound but do not require that the borane compound to be present.
For claims 9 to 12, note that Oishi et al. teach boric acid and acyclic borate such as trimethyl and triethyl borate (i.e. trialkyl borates as found in claims 9 and 10) also improve the self-adhesive properties such that one having ordinary skill in the art would have found it obvious to include such a compound in the pressure sensitive adhesive of the WO reference in an effort to optimize and/or adjust the adhesive properties thereof.
More specifically, for claims 11 and 12, note that paragraph 59 teaches a mixing amount of the boric acid and boric acid compounds relative to the organopolysiloxane while the WO reference teaches using an “effective amount” of the boron containing initiator. Adjusting the amounts of both components in an effort to optimize the properties associated therewith while not having a deleterious effect on the composition would have been well within the skill of the ordinary artisan. In such a manner claims 11 and 12 are rendered obvious.
For claim 13, again note that the boron compound in the WO reference can be added in an effective amount such that determining this amount would have been within routine experimentation and optimization for the skilled artisan.
For claim 14, consistent with that noted supra for claims 9 - 12, Oishi et al. teach boric acid and acyclic borate such as trimethyl and triethyl borate (i.e. trialkyl borates as found in claims 9 and 10) to improve the self-adhesive properties such that one having ordinary skill in the art would have found it obvious to include such a compound in the pressure sensitive adhesive of the WO reference in an effort to optimize and/or adjust the adhesive properties thereof. In this manner a silicone pressure sensitive adhesive having a combination of i) and ii) and/or iii) would have been obvious.
For claims 15 to 18, these limitations were addressed supra.
Allowable Subject Matter
Claim 19 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. There is nothing in the prior art that teaches or suggests the compound of formula (III) in combination with an acyclic borate in a silicone PSA as claimed.
The Examiner notes that if the claims were amended to require the compound of
Formula (I-2) (claim 4) or any of the compounds in claims 5 to 8, such claims would likewise to allowable over the prior art as there is nothing that teaches or suggests such compounds in a silicone PSA as claimed.
The remaining references cited in the attached PTO-892 are cited as being of general interest. Park et al. 2019/0203078 (10,920,113) teach a pressure sensitive adhesion that contains a borane or a borate additive (paragraphs 80, 81) but these structures do not correspond to any of the required claims. For instance, while this shows a borane there is nothing that would lead the skilled artisan to select a borane having an B-N bond. The borate compound is acyclic while all of the claims directed to a borate require at least a cyclic borate. 2003/0049465 teaches silicone adhesive composition that contain trimethoxyboroxine as an adhesion promoting catalyst (paragraph 55) but this reference is no closer to the instant claims as those cited supra. 6,743,883 has teachings similar to the WO reference without a specific teaching of a silicone PSA. 3,203,928 teaches adhesive prepared from boron containing compounds but these compounds are polymeric rather than monomeric as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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/MARGARET G MOORE/Primary Examiner, Art Unit 1765
