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 .
Election/Restrictions
Applicants’ election without traverse of Group II and the species comprising 2-hydroxybenzophenone in the reply filed on 5/5/2026 is acknowledged.
Claims 1-11 and 20-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/5/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed 7/2/2026 and 9/15/2026 have been fully considered.
Drawings
The drawings filed 9/29/2023 are accepted.
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.
Claim(s) 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Liao
(PG-PUB 2020/0239744) in view of WO92/20690 (herein referred to as” Frater”).
With regards to claims 12 and 14, Liao teaches a release agent composition comprising: 2 hydroxy,4-methoxybenzophenone (0065), a compound that has a structure for absorbing the light and contains at least one hydroxy group [0020], [0064]-[0066]; and polydimethylsiloxane, an organosiloxane polymer [0057]-[0059].
Liao teaches the composition comprises a 2 hydroxy,4-methoxybenzophenone (0065), a compound that has a structure for absorbing the light and contains at least one hydroxy group [0020], [0064]-[0066]; and polydimethylsiloxane, an organosiloxane polymer [0057]-[0059], but does not teach they should be part of the same compound. However, Frater teaches a UV absorbent material may be reacted with a organosiloxane in order to better retain the UV absorbent (see page 1). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a compound comprising a 2 hydroxy,4-methoxybenzophenone (0065) and polydimethylsiloxane. The motivation for doing so would have been such compounds better retain the UV absorbent material.
With regards to the limitations of claim 12 that the composition is "for forming a release layer of
laminate including a semiconductor substate, a support substrate, and an adhesive layer and a release
layer that are provided between the semiconductor substrate and the support substrate," and "used of
release the semiconductor substrate and the support substrate after the release layer absorbs light
emitted form a side of the support substrate," said limitations are understood to be intended use and
purpose limitations which do not define any of the claimed invention's limitations; thus, said preamble
limitations are not considered limitations and are of no significance to claim construction (see MPEP
2111.02).
With regards to claim 13, 2 hydroxy,4-methoxybenzophenone reads on the claimed benzophenone structure.
With regards to claim 15, 2 hydroxy,4-methoxybenzophenone read on formula 1.
With regards to claim 16, 2 hydroxy,4-methoxybenzophenone comprises a hydroxy group.
With regards to claim 17, Liao teaches the siloxane polymer may be polydimethylsiloxane,
[0057]-[0059] which reads on the claimed second structure units of claim 17.
With regards to claims 18 and 19, polydimethylsiloxane reads on the claimed second structure which “is bonded to Si of any one of the M unit, the D unit, and the T unit via a single bond or
a linking group.”
Response to Arguments
Applicants’ arguments filed 9/15/2026 have been fully considered but are moot in view of the new grounds of rejection. Specifically, with regards to the rejection of claims 12-19 under 35 U.S.C. 102(a)(1) as being anticipated by PG-PUB 2020/0239744 ("Liao"), Applicant notes claims 12 and 14 are amended to recite that the compound is an organosiloxane polymer. Applicant argues there is neither any description in the alleged anticipatory reference nor any specific examples in any of the alleged anticipatory reference that prove prior invention of the claimed subject matter (as amended). Specifically, applicant argues the claims (as amended) contain the recited compound (i.e., an organosiloxane polymer) having both the recited first structure and the recited second structure. As such, and at least because the recited compound is completely distinct from the materials disclosed in Liao, the amended claims are not anticipated by Liao, and the anticipation rejection should be withdrawn. Said argument is noted, but the pending rejection does not rely upon Liao for such a teaching.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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