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 .
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 (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 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) 15-17, 23, 25, 27, 29, 31, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiono et al. (US 2004/0021209) in view of Kondo et al. (US 2017/0009022).
Regarding claims 15-17 and 25: Shiono et al. (US ‘209) discloses fluorochemical materials for semiconductors [abstract; 0007], wherein Rubber Composition 4 [0120-0128; Table 1, Rubber Comp. 4] contains 100 parts by weight A-2, 1.1 parts by weight C-2, 1.7 parts by weight C-3, 25 parts by weight E-1, 4.0 parts by weight R-972 (hydrophobic finely divided silica [0112]), 1.0 parts by wight G-1, 0.15 part of a 50% toluene solution of ethynyl cyclohexanol, and 0.015 part of an ethanol solution containing a vinylsiloxane complex of chloroplatinic acid [0120-0128; Table 1, Rubber Comp. 4]. Shiono et al. (US ‘209) discloses platinum catalysts [0105-0106]. Shiono et al. (US ‘209) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol) [0119].
Shiono et al. (US ‘209) does not specifically disclose a platinum catalyst without solvent. However, Kondo et al. (US ‘022) discloses silicone resin compositions for semiconductors [abstract; 0001], wherein the catalyst can be a platinum catalyst, such as chloroplatinic acid, in a solventless system [0036-0037]. Shiono et al. (US ‘209) and Kondo et al. (US ‘022) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of siloxane compositions for semiconductors. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a platinum catalyst, such as chloroplatinic acid, in a solventless system, as taught by Kondo et al. (US ‘022) in the invention of Shiono et al. (US ‘209), and would have been motivated to do so since Kondo et al. (US ‘022) suggests platinum catalysts, such as chloroplatinic acid, in a solventless system [0036-0037].
Shiono et al. (US ‘209) does not specifically disclose the regulator (ethynyl cyclohexanol) without toluene. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed a regulator, such as ethynyl cyclohexanol, without forming a 50% solution in toluene, and would have been motivated to do so since Shiono et al. (US ‘209) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol); i.e. a solvent-free regulator [0119].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Note A-2:
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144
718
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[0125];
C-2:
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94
334
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[0125].
Regarding claims 23, 27 and 29: Shiono et al. (US ‘209) and Kondo et al. (US ‘022) disclose the basic claimed composition [as set forth above with respect to claim 15].
The claimed effects and physical properties, i.e. when heat-cured at 130 °C for 5 minutes to form a cured coating film, the cured coating film surface has no observable voids under an optical microscope [instant claim 23]; the curable perfluoropolyether adhesive composition, when cured, forms an adhesive having an adhesion of 0.001 N/25 mm to 10.0 N/25 mm [instant claim 27]; a cured product of the curable perfluoropolyether adhesive composition is a non-conductive adhesive having a volume resistivity of 1 x 109 Ω·cm or more [instant claim 29], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 31: Shiono et al. (US ‘209) discloses curing the composition [0122].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claim 33: Shiono et al. (US ‘209) discloses Example 2 [Ex. 2; 0134-0135] fills a cavity 3 with the rubber composition 7a and gel material 7b and curing the composition {corresponding to a substrate and cured product layer laminated thereon} [0045; 0050; 0134-0135; Ex. 2; FIG. 2].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 18-21, 24, 26, 28, 30, 32, and 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiono et al. (US 2004/0021209) in view of Kondo et al. (US 2017/0009022).
Regarding claims 18-21, 26 and 35: Shiono et al. (US ‘209) discloses fluorochemical gel materials for semiconductors [abstract; 0007], wherein Gel Composition 2 [0125-0129; Table 2, Gel. Comp. 2] contains 64 parts by weight A-2, 36 parts by weight B, 20 parts by weight C-5, 10 parts by weight E-1, 0.15 part of a 50% toluene solution of ethynyl cyclohexanol, and 0.015 part of an ethanol solution containing a vinylsiloxane complex of chloroplatinic acid [0125-0129; Table 2, Gel. Comp. 2]. Shiono et al. (US ‘209) discloses platinum catalysts [0105-0106]. Shiono et al. (US ‘209) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol) [0119].
Shiono et al. (US ‘209) does not specifically disclose a platinum catalyst without solvent. However, Kondo et al. (US ‘022) discloses silicone resin compositions for semiconductors [abstract; 0001], wherein the catalyst can be a platinum catalyst, such as chloroplatinic acid, in a solventless system [0036-0037]. Shiono et al. (US ‘209) and Kondo et al. (US ‘022) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of siloxane compositions for semiconductors. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a platinum catalyst, such as chloroplatinic acid, in a solventless system, as taught by Kondo et al. (US ‘022) in the invention of Shiono et al. (US ‘209), and would have been motivated to do so since Kondo et al. (US ‘022) suggests platinum catalysts, such as chloroplatinic acid, in a solventless system [0036-0037].
Shiono et al. (US ‘209) does not specifically disclose the regulator (ethynyl cyclohexanol) without toluene. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed a regulator, such as ethynyl cyclohexanol, without forming a 50% solution in toluene, and would have been motivated to do so since Shiono et al. (US ‘209) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol); i.e. solvent-free regulator [0119].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Note A-2:
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144
718
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[0125];
B:
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142
426
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Greyscale
[0125];
C-5:
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168
452
media_image4.png
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[0125].
Regarding claims 24, 28 and 30: Shiono et al. (US ‘209) and Kondo et al. (US ‘022) disclose the basic claimed composition [as set forth above with respect to claim 18].
The claimed effects and physical properties, i.e. when heat-cured at 130 °C for 5 minutes to form a cured coating film, the cured coating film surface has no observable voids under an optical microscope [instant claim 24]; the curable perfluoropolyether adhesive composition, when cured, forms an adhesive having an adhesion of 0.001 N/25 mm to 10.0 N/25 mm [instant claim 28]; a cured product of the curable perfluoropolyether adhesive composition is a non-conductive adhesive having a volume resistivity of 1 x 109 Ω·cm or more [instant claim 30], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 32: Shiono et al. (US ‘209) discloses curing the composition [0122; 0126].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claim 34: Shiono et al. (US ‘209) discloses Example 2 [Ex. 2; 0134-0135] fills a cavity 3 with a rubber composition 7a and the gel material 7b and curing the gel material {corresponding to a substrate and cured product layer laminated thereon} [0045; 0050; 0134-0135; Ex. 2; FIG. 2].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 18-22, 24, 26, 28, 30, 32, and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (US 2003/0158295) in view of Kondo et al. (US 2017/0009022).
Regarding claims 18-22 and 26: Fukuda et al. (US ‘295) discloses fluorinated curable compositions for electronics [abstract; 0001-0002], wherein Example l [Ex. 1; 0075-0077] contains 40 parts by weight formula (3), 60 parts by weight formula (4), 3.0 parts by weight Cabosil TS-720 (hydrophobic treated finely divided silica [0056-0058]), 14 parts by weight formula (5), 0.15 part of a 50% toluene solution of ethynylcyclohexanol, and 0.015 part of an ethanol solution containing a chloroplatinic acid-vinylsiloxane complex [Ex. 1; 0075-0077]. Fukuda et al. (US ‘295) discloses platinum catalysts [0053-0055]. Fukuda et al. (US ‘295) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol) [0069].
Fukuda et al. (US ‘295) does not specifically disclose a platinum catalyst without solvent. However, Kondo et al. (US ‘022) discloses silicone resin compositions for semiconductors [abstract; 0001], wherein the catalyst can be a platinum catalyst, such as chloroplatinic acid, in a solventless system [0036-0037]. Fukuda et al. (US ‘295) and Kondo et al. (US ‘022) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of siloxane compositions for electronics. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a platinum catalyst, such as chloroplatinic acid, in a solventless system, as taught by Kondo et al. (US ‘022) in the invention of Fukuda et al. (US ‘295), and would have been motivated to do so since Kondo et al. (US ‘022) suggests platinum catalysts, such as chloroplatinic acid, in a solventless system [0036-0037].
Fukuda et al. (US ‘295) does not specifically disclose the regulator (ethynyl cyclohexanol) without toluene. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed a regulator, such as ethynyl cyclohexanol, without forming a 50% solution in toluene, and would have been motivated to do so since Fukuda et al. (US ‘295) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol); i.e. solvent-free regulator [0069].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Note formula (3):
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136
722
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[0076];
formula (4):
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126
424
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[0076];
formula (5):
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98
508
media_image7.png
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[0076].
Regarding claims 24, 28 and 30: Fukuda et al. (US ‘295) and Kondo et al. (US ‘022) disclose the basic claimed composition [as set forth above with respect to claim 18].
The claimed effects and physical properties, i.e. when heat-cured at 130 °C for 5 minutes to form a cured coating film, the cured coating film surface has no observable voids under an optical microscope [instant claim 24]; the curable perfluoropolyether adhesive composition, when cured, forms an adhesive having an adhesion of 0.001 N/25 mm to 10.0 N/25 mm [instant claim 28]; a cured product of the curable perfluoropolyether adhesive composition is a non-conductive adhesive having a volume resistivity of 1 x 109 Ω·cm or more [instant claim 30], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 32: Fukuda et al. (US ‘295) discloses curing the composition to afford a gel [Ex. 1; 0077].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claim 34: Fukuda et al. (US ‘295) discloses coating a substrate with the composition and curing thereon {corresponding to a substrate and cured product layer laminated thereon} [0072].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Response to Arguments
Applicant's arguments filed 7/6/26 have been fully considered but they are not persuasive. The rejection of claims based upon Shiono et al. (US 2004/0021209) in view of Kondo et al. (US 2017/0009022) and Fukuda et al. (US 2003/0158295) in view of Kondo et al. (US 2017/0009022) are maintained.
Shiono et al. (US ‘209) was relied on for disclosing fluorochemical materials for semiconductors [abstract; 0007], wherein Rubber Composition 4 [0120-0128; Table 1, Rubber Comp. 4] contains 100 parts by weight A-2, 1.1 parts by weight C-2, 1.7 parts by weight C-3, 25 parts by weight E-1, 4.0 parts by weight R-972 (hydrophobic finely divided silica [0112]), 1.0 parts by wight G-1, 0.15 part of a 50% toluene solution of ethynyl cyclohexanol, and 0.015 part of an ethanol solution containing a vinylsiloxane complex of chloroplatinic acid [0120-0128; Table 1, Rubber Comp. 4]. Shiono et al. (US ‘209) discloses Gel Composition 2 [0125-0129; Table 2, Gel. Comp. 2] contains 64 parts by weight A-2, 36 parts by weight B, 20 parts by weight C-5, 10 parts by weight E-1, 0.15 part of a 50% toluene solution of ethynyl cyclohexanol, and 0.015 part of an ethanol solution containing a vinylsiloxane complex of chloroplatinic acid [0125-0129; Table 2, Gel. Comp. 2]. Shiono et al. (US ‘209) discloses platinum catalysts [0105-0106]. Shiono et al. (US ‘209) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol); i.e. a solvent-free regulator [0119].
Kondo et al. (US ‘022) discloses silicone resin compositions for semiconductors [abstract; 0001], wherein the catalyst can be a platinum catalyst, such as chloroplatinic acid, in a solventless system [0036-0037].
In response to applicant's argument that the adhesive composition not containing organic solvent results in a smooth coating film without any voids on the cured film surface, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Kondo et al. (US ‘022) discloses silicone resin compositions for semiconductors [abstract; 0001], wherein the catalyst can be a platinum catalyst, such as chloroplatinic acid, in a solventless system [0036-0037].
Shiono et al. (US ‘209) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol) (i.e. a solvent-free regulator [0119]), and Kondo et al. (US ‘022) discloses platinum catalysts, such as chloroplatinic acid, in a solventless system [0036-0037]. Obviousness does not require absolute predictabil-ity, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) [see MPEP 2143.02].
In response to applicant's argument that Kondo et al. (US ‘022) allows for the composition to contain an organic solvent in any given situation, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Fukuda et al. (US ‘295) was relied on for disclosing fluorinated curable compositions for electronics [abstract; 0001-0002], wherein Example l [Ex. 1; 0075-0077] contains 40 parts by weight formula (3), 60 parts by weight formula (4), 3.0 parts by weight Cabosil TS-720 (hydrophobic treated finely divided silica [0056-0058]), 14 parts by weight formula (5), 0.15 part of a 50% toluene solution of ethynylcyclohexanol, and 0.015 part of an ethanol solution containing a chloroplatinic acid-vinylsiloxane complex [Ex. 1; 0075-0077]. Fukuda et al. (US ‘295) discloses platinum catalysts [0053-0055]. Fukuda et al. (US ‘295) discloses regulators such as 1-ethynyl-1-hydroxycyclohexane (ethynyl cyclohexanol) [0069].
Kondo et al. (US ‘022) discloses silicone resin compositions for semiconductors [abstract; 0001], wherein the catalyst can be a platinum catalyst, such as chloroplatinic acid, in a solventless system [0036-0037].
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Kondo et al. (US ‘022) discloses silicone resin compositions for semiconductors [abstract; 0001], wherein the catalyst can be a platinum catalyst, such as chloroplatinic acid, in a solventless system [0036-0037].
While Examples 1-5 {i.e. 0% organic solvent} listed in Table 1 appear to provide unexpected results over Comparative Examples 3-5 {i.e. with organic solvent}, however, Examples 1-5 employed in Table 1 represent specific compositions and are not commensurate in scope with the breadth of compositions included in claims 15 and 18.
As the data obtained from Ex. 1-5 in Table 1 was obtained from compositions of narrower scope than the broad genus of claims 15 and 18, it is not possible for the examiner to conclude the data from Table 1 represents unexpected results over the prior art of record [see also MPEP 716.01(c), 716.02(d), 2145; In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972)].
Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) [see MPEP 716.02(d)]. See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) [See MPEP 716.02(d)].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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