DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/26/2026 has been entered.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed 5/13/2026 has been fully considered. An initialed cope of said IDS is enclosed herein.
Drawings
The drawings filed 9/29/2023 are accepted.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 10-15, in the reply filed on 6/26/2025 is acknowledged.
Claims 1-9 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/26/2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 10, 11, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liao (PG-PUB 2020/0239744).
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]. The 2 hydroxy,4-methoxybenzophenone taught by Liao is understood to anticipate the structure of claim 10 because it is one of the claimed species of compound listed in claim 10.
With regards to the limitations of claim 10 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 11, 2 hydroxy,4-methoxybenzophenone is a compound represented by formula (1) comprising two or more aromatic rings constituting an electron conjugate system.
With regards to claim 13, 2 hydroxy,4-methoxybenzophenone has a structure comprising benzophenone. Liao teaches the release agent composition further comprising polydimethylsiloxane, an organosiloxane polymer [0057]-[0059].
With regards to claim 15, the polydimethylsiloxane reads on the claimed siloxane units.
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 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liao (PG-PUB 2020/0239744), as applied to claims above, and further in view of Itoh (US 2014/0323652).
Liao is relied upon as above. Specifically, Liao teaches the 2 hydroxy,4-methoxybenzophenone may be utilized as a UV-absorbent in an organopolysiloxane curable composition, but does not teach other UV-absorbent compounds may be used. However, Itoh teaches a process from producing a plastic lenses composition wherein the UV absorbent compound comprising an anthrocenedione compound of formula 1 or 2 (abstract) is added to the composition (abstract). Said compound read on formula 2 of claim 14. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to add the anthrocenedione additive taught in Itoh to the composition of Liao in order to enhance the UV absorbance and clarity of said composition.
Claim(s) 10, 11, 13, and 15 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Liao (PG-PUB 2020/0239744) in view of Eng (US 2016/0145427).
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]. The 2 hydroxy,4-methoxybenzophenone taught by Liao is understood to anticipate the structure of claim 10 because it is one of the claimed species of compound listed in claim 10.
With regards to the limitations of claim 10 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).
Liao teaches the 2 hydroxy,4-methoxybenzophenone may be utilized as a UV-absorbent in However, Eng teaches that many of said members are known UV absorbents including other orthohydroxybenzophenones one or more of 2-hydroxy-4-methoxybenzophenone; 2,2′-dihydroxy-4-methoxybenzophenone; 2-hydroxy-4-octyloxybenzophenone; 2,2′-dihydroxybenzophenone; 2,2′,4,4′-tetrahydroxybenzophenone; 2,2′-dihydroxy-4,4′-dimethoxybenzophenone; and 2,2′-dihydroxy-4,4′-diethoxybenzophenone. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize any of the compounds disclosed in Eng in the composition disclosed in Laio. The motivation for doing so would have been said compounds are known to be functionally equivalent to the UV absorbent benzophenone compounds disclosed in Laio.
With regards to claim 11, the benzophenone compounds disclosed in Eng read on Formula (1) and comprise two or more aromatic rings constituting an electron conjugate system.
With regards to claim 13, the benzophenone compounds disclosed in Eng has a structure comprising benzophenone. Liao teaches the release agent composition further comprising polydimethylsiloxane, an organosiloxane polymer [0057]-[0059].
With regards to claim 15, the polydimethylsiloxane reads on the claimed siloxane units.
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are moot in view of the new grounds of rejection.
With respect to the rejection of claims 10-15 under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0239744 ("Liao"), applicant argues the rejection should be withdrawn because the Office Action has not met the initial burden of presenting a prima facie case of unpatentability with respect to the amended claims. Applicant notes the Office Action finds that Liao teaches a release agent composition comprising: 2,4-dihydroxydibenzophenone, 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]. Applicant argues said findings are not germane to the claimed features as amended (particularly, in view of 2,4-dihydroxybenzophenone now being excluded from the
scope of the amended claims). Said argument is noted but is not persuasive with regards to claim 10 as 2, 4, dihydroxybenzophenone has not been excluded from the scope thereof. Said argument is persuasive with regards to claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US2014/0349125 teaches a photocurable polysiloxane release composition.
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.
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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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