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/Restriction
Newly submitted claims 12-16 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group 1, claims 1-11, drawn to an addition reaction curable organopolysiloxane.
Group 2, claims 12-20, drawn to a release paper or release film.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups 1 and 2 lack unity of invention because even though the inventions of these groups require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Kato in further view of Griswold. This is elaborated below in the rejection of claim 1.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 12-16 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments filed 7/16/2026 have been fully considered but they are not persuasive.
Specifically, the Applicant has argued that the claimed C component is completely different from component (B) of Kato. The Applicant has argued that the organopolysiloxane (C) of the present invention is an organopolysiloxane and has an -Si-O- bond as part of its main structure but does not have a phenylene skeleton as its main structure.
The Applicant argues that (B) of Kato comprises at least one phenylene skeleton per molecule. The Applicant argues that (B) does not have a phenylene skeleton and this is demonstrated by the new dependent claim 9.
It is acknowledged that Kato does not read on the limitations of dependent claim 9. However, Kato in view of Griswold still reads on the limitations of claim 1-8. The (C) of claims 1-8 does not explicitly exclude the structure of Kato.
The Applicant further argues that the difference in structure is evident from the difference in function. The Applicant argues that the component (C) of the present invention makes it possible to reduce the amount of catalyst required in an addition type silicone composition while component B of Kato functions as contributing for the adhesion and acting as a crosslinking agent.
The Examiner notes that while Kato does not explicitly teach the Applicant’s function of component (C) as argued in the Applicant’s arguments, this does not exclude Kato from reading on the limitations of the claimed structure of (C) in claims 1-8.
The Applicant argues that Kato does not teach that (B) comprises an acrylic group. However, Kato does teach the compound comprises an acryloyl group (Paragraph [0050]).
Kato also does not disclose the problem of sedimentation and phase separation of the claimed component (C). The Applicant argues that acrylic group containing organopolysiloxanes exhibit poor compatibility with other siloxanes and tend to undergo sedimentation and phase separation over time. This argument is not presented as an affidavit with evidence indicating the specific advantages of the claimed component (C) to avoid these pitfalls. An Affidavit with additional documentation indicating the structure of claimed structure (C) is specifically advantageous would benefit the Applicant in proving the nonobviousness of the composition.
The Applicant argues that Kato does not disclose the linear olefin (D) having a melting point of up to 20C and a flash point of at least 40C.
This is acknowledged as being supplemented by Griswold.
The Applicant argues Griswold teaches a composition comprising reactive diluents. The Applicant argues Giswold fails to disclose the specific selection of a linear olefin for the purpose of improving compatibility of an acrylic group containing organopolysiloxane.
However, the purpose in the Application of the inclusion of the linear olefin does not prevent Griswold from reading on the claimed olefin. This is an intended use of the linear olefin. The argued intended use limitation does not require steps to be performed or limit the claims to a particular structure. Therefore, this feature does not further limit the scope of the claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02.
Additionally, the selection of a specific olefin of Griswold, octadecene, is obvious because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kato US 20140179863A1 in view of Griswold US 20130150535A1.
Regarding claims 1 and 7, Kato teaches 100 parts by weight of an organopolysiloxane containing at least 2 alkenyl groups bonded to silicon atoms per molecule (Abstract). This reads on the claimed (A). Kato also teaches the composition is addition curable (Title). Kato also teaches the composition comprises (B) 0.05 to 10 parts by weight of an organosilicon compound containing 1 to 100 silicon atoms which has at least 1 phenylene skeleton per molecule, and which has at least 1 hydrogen atom bonded to a silicon atom (Abstract) . Kato also teaches the compound (B) can comprising an acryloyl group structure (Paragraph [0045-0050]). It would have been obvious for group (B) of Kato to have an acryloyl group because it is prima facie obvious to select a known material based on its suitability for its intended use.
This reads on the claimed limitation (C). Kato also teaches the composition comprises a 0.1-1,000 ppm or a catalytic amount of platinum catalyst based on component A (Abstract, Paragraph [0076-0077]). This reads on the claimed (E).
Kato also teaches the composition comprises (C) 0 to 30 parts by weight of an organohydrogenpolysiloxane containing at least 2 hydrogen atoms bonded to silicon atoms per molecule, and containing no phenylene skeleton in the molecule.
However, Kato does not expressly teach the ratio of moles of Si-H to moles of alkenyl groups. Kato teaches an adhesive composition (Title). Griswold also teaches an addition curable silicone adhesive composition (Title, Paragraph [0001]). Griswold teaches the composition comprises an alkenyl-containing polydiorganosiloxane (Paragraph [0037]). Griswold teaches the composition also comprises a platinum catalyst (Paragraph [0041]). Griswold also teaches the composition can comprise an acetylenic inhibitor (Paragraph [0044]). Griswold teaches a similar composition used for similar application. In Examples 1 and 2 of Griswold teach adhesive preparations comprising ratios of Si-H and vinyl groups of 1.0 to 4.9 (Paragraph [0089] and [0091]). This overlaps with the claimed range of (B).
It would have been obvious to use the ratio of Si-H and vinyl groups taught in Griswold in the composition of Kato because Griswold teaches a suitable amount of Si-H to vinyl group ratio for compositions and applications similar to that of Kato. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
Therefore component (C) of Kato reads on the claimed (B).
Regarding the linear olefin component. Kato is silent on the composition comprising a linear olefin component. Griswold also teaches the composition comprises reactive diluents such as octadecene (Paragraph [0045]). Griswold teaches in Example 25 that the amount of unsaturated diluent used in the composition is 1.2 g, the amount of component (A) used was 30 grams, component A comprised 96% polyorganosiloxane (Paragraph [0148]), this corresponds to 4 parts by weight of reactive diluent. Kato teaches optional components may be added at an amount commonly used in the art and to the extent not adversely affecting the merits of the invention. This overlaps with the claimed range of 0.01 to 20 parts by weight (D). It would have been obvious to select octadecene as the reactive diluent because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Octadecene has a melting point of up to 20°C and a flash point of at least 40°C (Instant Specification, Paragraph [0045]). This reads on the claimed (D). Octadecene also has a vinyl value (that is, moles of unsaturated functional group in 100 g) of 0.30 to 0.58 mol/100 g, a melting point of up to 20°C and a flash point of at least 70°C and containing at least one unsaturated functional group at a molecular end (Instant Specification, Paragraph [0045]). This reads on the limitations of claim 7.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the reactive diluent of Griswold in the composition of Kato using the amounts taught as suitable Griswold because Griswold identifies a suitable additive component, a reactive diluent (including the specific type of reactive diluent) for applications similar to that of Kato. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
Regarding claim 2, Kato also teaches the composition comprises a reaction inhibiting component (G) (Paragraph [0082]). Kato teaches the composition comprises 0.001 to 1 parts by weight of component G based on total amount of component (A). This reads on the limitations of claim 2.
Regarding claim 3, Kato teaches in the example 1 (Paragraph [0098]) a suitable component (B) can have a molecular weight of 789.44 g/mol (Formula (1). It would have been obvious for the component B of Kato to have a molecular weight of 789.44 g/mol because 789.44 g/mol is shown in the examples to be a suitable molecular weight for compositions identical to those taught in the specification of Kato. This falls within the claimed range of claim 3.
Regarding claims 4-6, Kato teaches a component (B) comprising a methacryloyl group (Paragraph [00050]). Kato teaches the structure of B is
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(Paragraph [0045]). Kato teaches R’’ is
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110
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and Rw and Rx can be a methacryloyl group. Kato also teaches y can be 0-100. That allows for up to 200 (meth)acryloyl groups which reads on the claimed range of at least three.
It would have been obvious for component B to have this structure because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the claimed polyorganosiloxane having the methacryloyl groups on its side chain.
Kato also teaches component Y is
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185
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where n is a number from 1-4 (Paragraph [0046]). This reads on the claimed cyclic polyorganosiloxane.
Allowable Subject Matter
Claims 9-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As indicated in the Remarks of 7/16/2026, Kato specifically teaches the organosilicon compound (B) has a phenylene in its main structure (Paragraph [0043). Kato does not teach that the compound (B) has the structure of formula (3), (4), or (5). Therefore, Kato does not read on the limitations of claims 9-11.
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 LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights