CTNF 18/281,610 CTNF 83935 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Objections 07-29-01 AIA Claim s 25-26 are objected to because of the following informalities: the structure of formula (1) is blurry . Appropriate correction is required. 07-30-03-h AIA Claim Interpretation Claims 15 and 18: the limitation “the curable perfluoropolyether adhesive composition does not contain any organic solvent in the composition” is interpreted as the composition is free of organic solvent, including any organic solvent associated with component (C) (i.e. component (C) is free of organic solvent, as the composition of claims 15 and 18 does not contain any organic solvent). Claim Rejections - 35 USC § 112 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA Claim s 23-24 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 23-24 recite component (C) does not contain any organic solvent. However, claim 15 and 18, respectively, recite the curable perfluoropolyether adhesive composition does not contain any organic solvent in the composition {see also claim interpretation above} . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA 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, 23 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] . 07-37-09 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: PNG media_image1.png 144 718 media_image1.png Greyscale [0125]; C-2: PNG media_image2.png 94 334 media_image2.png Greyscale [0125]. Regarding claims 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. 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 10 9 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]. 07-37-09 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 ]. 07-37-09 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]. 07-21-aia AIA Claim (s) 18-21, 24, 26, 28, 30, 32, and 34 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, 24 and 26: 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] . 07-37-09 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: PNG media_image1.png 144 718 media_image1.png Greyscale [0125]; B: PNG media_image3.png 142 426 media_image3.png Greyscale [0125]; C-5: PNG media_image4.png 168 452 media_image4.png Greyscale [0125]. Regarding claims 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. 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 10 9 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]. 07-37-09 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 ]. 07-37-09 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]. 07-21-aia AIA 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, 24 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): PNG media_image5.png 136 722 media_image5.png Greyscale [0076]; formula (4): PNG media_image6.png 126 424 media_image6.png Greyscale [0076]; formula (5): PNG media_image7.png 98 508 media_image7.png Greyscale [0076]. Regarding claims 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. 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 10 9 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]. See attached form PTO-892. 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. 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, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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 F PEPITONE/Primary Examiner, Art Unit 1767 Application/Control Number: 18/281,610 Page 2 Art Unit: 1767 Application/Control Number: 18/281,610 Page 3 Art Unit: 1767 Application/Control Number: 18/281,610 Page 4 Art Unit: 1767 Application/Control Number: 18/281,610 Page 5 Art Unit: 1767 Application/Control Number: 18/281,610 Page 6 Art Unit: 1767 Application/Control Number: 18/281,610 Page 7 Art Unit: 1767 Application/Control Number: 18/281,610 Page 8 Art Unit: 1767 Application/Control Number: 18/281,610 Page 9 Art Unit: 1767 Application/Control Number: 18/281,610 Page 10 Art Unit: 1767 Application/Control Number: 18/281,610 Page 11 Art Unit: 1767 Application/Control Number: 18/281,610 Page 12 Art Unit: 1767