DETAILED ACTION
In view of applicants’ amendment to the claims, the rejection under 35 USC 102 has bene withdrawn. The rejection under 35 USC 103 and the request made in the prior office action are maintained. Applicants’ responses to these issues have been consider-ed but are not deemed persuasive for reasons noted below.
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 to 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ogino et al. 2019/0164802.
The teachings in Ogino et al. were noted in the previous office action. They
include components that meet those found in the claims with the exception of a specific teaching of the complex viscosity.
Ogino et al. is directed to an adhesive composition, as are applicants’ claims. The skilled artisan would recognize that one has to adjust the viscosity of an adhesive to reflect the intended use. For instance an application which requires impregnation or filling gaps would be most appropriate for an adhesive having a low viscosity that allows it to flow. On the other hand an adhesive that serves as a sealant or encapsulant, and needs to stay in place, would require a higher viscosity. An adhesive on a vertical surface would be required to have a viscosity that does not allow it to flow after application.
With these considerations in mind, one having ordinary skill in the art would have been motivated to adjust the viscosity of the adhesive in Ogino et al. such that it falls within the claimed range during routine experimentation and/or optimization. This is true particularly because the viscosities of the starting materials and the final use of both adhesives are the same. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In this manner each of claims 1 to 8 is rendered obvious.
With regard to the newly added requirement of a material having a complex viscosity of 1,000 Pa.s to 10,000 Pa.s in an amount of from 20 to 80 parts per 100 parts mass, please note the following. Ogino et al. teach various p0olyorganosiloxanes that have a viscosity range of from 10 to 1000,000 mPa.s. See for instance paragraph 65 which teaches (a1) and (a2). See also the viscosity range in paragraph 70 and amounts of each component in paragraph 72 which allow for 20 to 80 parts of each component. Again, this differs from that claimed only in that it does not specifically refer to the complex viscosity but given the final utility of the composition as well as the broad range of operable and useful viscosities, the skilled artisan would have found the selection of such a viscosity to have been obvious and within routine experimentation of the teach-ings in Ogino et al.
Applicants argue that the rejection does not supply motivation to modify Ogino in the manner necessary to arrive at the claimed combination of features. The Examiner disagrees, as the rejection pointed to such motivation, i.e. the motivation to optimize viscosity based on the final utility and desired properties of the final adhesive.
Applicants further refer to improvements and advantages/superior effects found in the specification. This brief statement is not sufficient to render the claims unobvious, specifically in view of their breadth and the limited number of results. One simply cannot extrapolate the results in the specification as being representative of that claimed. Also it is unclear what the differences between the working and comparative example are in relation to the breadth of the claims.
Request for Information
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
In response to this requirement applicants are required to submit information
regarding the specific siloxane materials referenced in the specification and used in the working examples. For instance many of the working examples refer to the products as being commercially available through Wacker Chemie. Applicants are requested to supply the specific type of product and any data including, but not limited to, chemical structure and viscosity, that is available. This will aid the Examiner in determining relevant prior art.
In response to this request applicants state that they do not need to perform new experiments to uncover the exact structure/composition. The Examiner is not placing such a burden on applicants. Rather, as noted above, the examples in the specification use commercially available products. The Examiner would be surprised and perplexed if applicants used polysiloxanes manufactured by Wacker Chemie AG in their examples but had no idea what they were and no idea how to obtain information. Applicants know who manufactured the products and, in the case of paragraph 245 of the specification, know the concentration of MQ resin in a solution and the viscosity of the SiH siloxane. The Examiner would not expect obtaining further information such as viscosity, general formula or even the name by which the products are sold to be a hardship.
As such this request remains. The Examiner stresses that this is important for
prior art determination. There could very well be teachings of compositions containing the same polysiloxanes as found in the working examples but the Examiner is unable to unearth them because it is unclear what is being used in the inventive composition.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 to 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 7 of copending Application No. 17/787,663 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because 17/787,663 contains the same reactants and, chemically, appears to be the same adhesive composition as claimed. Also the claims in ‘663 have a complex viscosity within the claimed range. As such the viscosity reduction rate would have expected to be either inherently present in this adhesive composition, or would have been obvious for reasons noted supra regarding optimizing viscosity values.
Applicants’ response fails to address this rejection in any manner.
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.
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Mgm
2/19/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765