DETAILED ACTION
The rejection below is maintained from the previous office action.
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 1, 4 to 9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/100965, as interpreted by the English language equivalent to Sawada et al., US 2022/0002591.
Sawada et al. teach an adhesive composition referred to therein as the adhesive
(A). As can be seen from paragraph 18, this includes polysiloxane (A1) which contains both SiH siloxanes and Si-vinyl siloxanes, as well as a platinum group catalyst (A2). In a similar manner the claimed are directed to an adhesive that includes a polysiloxane (A1) and a platinum catalyst (A2).
Both catalysts (A2) are platinum catalysts that initiate cure between SiH and vinyl siloxanes. As such Sawada et al. anticipate claimed (A2).
Claimed component (A1) requires an SiH siloxane as component (a2). Sawada et al. teach an SiH siloxane as component (a2) in paragraphs 21, 71 and 75, as well as other locations. This meets claimed (a2).
Claimed component (A1) requires an alkenyl containing siloxane as component (a1). Sawada et al. teach an Si-vinyl siloxane as component (a1) and includes combin-ations of such polymers. See paragraphs 55 to 61 and 69 to 77. This generally teaches polyorganosiloxanes that embrace claimed (a1), (V) and the MQ resin.
Of particular importance the Examiner draws specific attention to the composition in Preparation Example 1, paragraph 159. This shows a combination of a vinylated MQ resin having an Mw of 6,900. This meets the “polymer different from the polymer (V)” found in newly amended claim 1. and a polydimethylsiloxane having terminal vinyl units. From this the skilled artisan would have expected this combination of (a1) siloxanes to be a preferred embodiment and would have been motivated to experiment and optimize such a combination.
As such the composition in Preparation Example 1 differs from that claimed in that 1) the linear siloxane meeting claimed (V) does not have a Mw of 60,000 or greater and 2) this does not contain a release agent.
As for the first difference, see paragraph 77 which teaches that the Mw for these siloxanes is in the range of 500 to 1,000,000. This embraces the range of 60,000 or more such that the skilled artisan would have found the selection of a siloxane having an Mw within the claimed range to have been obvious. The Examiner acknowledges that the claimed range is outside the preferred range in Sawada et al. but patentees are neither limited to or by their preferred ranges.
As for the second difference, please see paragraphs 89 to 114 which teaches the addition of a polysiloxane that meets the claimed release modifier which regulates adhesion.
For instance paragraphs 102 to 107 teach polydimethylsiloxanes which meet claimed (B) as well as the structure in claim 6. Paragraph 112 teaches a molecular weight range that embraces the range found in claim 4.
In this manner each of the claimed requirements of claims 1, 4 and 6 are either anticipated by or are within the broader teachings of Sawada et al. As such, the skilled artisan would have found these claims to have been obvious at the time of the instant invention.
For claim 5 note that paragraph 106 teaches a viscosity as high as 2,000,000 mm2/s. While this is not the complex viscosity, one having ordinary skill in the siloxane art would recognize that this reflects a silicone having a gum consistency. Such a gum will necessarily meet the claimed viscosity requirement because it has very limited, if any, flow under ambient conditions. Note that applicants use a siloxane gum as the additive in the instant working examples.
For claims 7 to 9, see paragraph 24 which teaches a semiconductor substrate. See also paragraphs 155 and 156 which teach the method by which the semiconductor is prepared as well as the laminate.
Applicants’ remarks have been considered but are not deemed persuasive of unobviousness.
It is first argued that Sawada does not teach the linear polydimethylsiloxane hav-
ing vinyl at both terminal ends, as shown by the structure in claim 1. The Examiner does not agree. Paragraph 159 teaches a polydimethylsiloxane having vinyl groups. One having ordinary skill in the art and aware of siloxane nomenclature would recognize that “polydimethyl” refers to the backbone having only methyl groups. If a vinyl group were attached the siloxane would be referred to as “polydivinyl” or “polyvinymethyl”, but it is a polydimethylsiloxane which clearly indicates the presence of only dimethyl groups on the backbone. Since the polymer has vinyl groups, it necessarily follows that the groups will be present at the terminal. The polymer (V) is not shown structurally, but the skilled artisan would readily recognize that this is the structure of the vinyl siloxane in para 159.
Applicants then state that it is clear that the linear chain polydimethylsiloxane having vinyl groups does not have an Mx of 60,000 or higher. The Examiner agrees with this statement, as it is addressed in the rejection rationale. Again see paragraph 77 which teaches that the Mw can be as high as 1,000,000. Applicants state that this does not provide motivation to specifically select materials encompassed by the claims. The Examiner disagrees and again notes that this issue was addressed in the rejection rationale. Sawada specifically teaches Mw values as high as 1,000,000 and this gives the skilled artisan a reasonable basis to select values as high as that and ones well above 60,000.
A teaching that embraces the claimed range is not considered to be a teaching away.
Finally the mere allegation of unexpected results and advantages is not sufficient to render the claims unobvious.
Regarding claim 5, the rejection recognized that complex viscosity and kinematic viscosity are not the same, but the claimed range allows for a viscosity that embraces gums and plastics which have very limited, if any, flow under ambient conditions. The Examiner maintains her position regarding the obviousness of this claim as addressed in the rejection rationale supra, as both the claims and Sawada embrace gums.
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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