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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1, 2, 4, 6, 8-15 are pending. Applicant’s previous election of Group I, claims 1, 2, 4, 6, 8-10, 13-15, still applies and claims 11-12 remain withdrawn.
Response to Amendment
Applicant’s amendment of 03/27/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 2, 4, 6, 8-10, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (U.S. 2019/0119531) in view of Hamada (U.S. 5,356,719).
Regarding claims 1, 2, 4, 6, 8-10, 13-15, Kim teaches a release layer composition comprising a mixture of linear and branched fluoroalkyl groups-containing, alkenyl group-containing organopolysiloxanes, corresponding to the claimed A and B ingredients, with overlapping formula ([0221], [0225]-[0227], [0052]), as well as a linear fluoroalkyl group containing and Si-H containing polysiloxane, corresponding to the claimed D ingredient, with an overlapping formula and amount ([0228], [0052], [0222]), as well as a fluorinated silicone resin which may lack alkenyl and Si-H groups ([0230]), as well as a platinum hydrosilation catalyst which is included for such catalysis and therefore is included in an effective amount as claimed and also is disclosed with an overlapping amount relative to claim 13, with the amount also being obvious to optimize to within the range of claim 13 to provide sufficient catalyzing effect ([0208]-[0209]), as well as an inhibitor and solvent as in claims 8 and 9 ([0235]). The amount of fluorine atoms in each of the above fluorine containing ingredients overlaps the ranges of claims 2, 4, 14, based on the disclosed formula, the ranges of variables in such formula, and the variables corresponding to the length and number of fluorine atoms in each fluoroalkyl group ([0052]).
The total amount of A and B equivalents in Kim is disclosed with a range overlapping the combined amounts as claimed ([0225]), but the amount of each of the A and B equivalents in Kim is not disclosed. However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Such a 1:1 ratio of the alkenyl and fluorosilicone compounds (linear and branched), combined with [0225], would result in the amounts of Kim overlapping the claimed ranges for the A and B ingredients.
Further to the above, See MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Kim teaches a non-reactive fluoroalkyl silicone as explained above but does not disclose that it is linear or the fluorine content (due to undefined variables) or the amount. However, Hamada is also directed to release compositions based on alkenyl functional fluoroalkyl silicones and teaches that non-reactive fluoroalkyl silicones (like in Kim) may be linear (overlapping the claimed formula) with at least one fluoroalkyl group (and a remainder of, e.g., methyl groups) and with the degree of polymerization being obvious to adjust based on the disclosed effect on viscosity (col. 4, lines 5-55) such that the disclosed formula of Kim overlaps and renders obvious the claimed C ingredient and the fluorine content of claims 1, 6, and 15 (since the R groups may be almost entirely C1-20 fluoroalkyl groups based on the disclosed amount of fluoroalkyl groups, col. 2, lines 10-45), with such a non-reactive fluorosilicone being included in an overlapping amount to provide optimized strength and release performance stability (and with such benefits also making the amount obvious to adjust as an art-recognized result effective variable). Thus, it would have been obvious to have included such a non-reactive fluorosilicone in Kim as taught by Hamada to provide optimized strength and release performance stability. Hamada also discloses that reaction inhibitors are included to provide storage stability (col. 5, lines 20-30) such that the amount of claim 8 would be obvious to arrive at as part of the optimization of the degree of storage stability.
The pressure sensitive adhesive property of claim 10 is inherently present in the composition of modified Kim to at least some extent due to the overlapping type and amount of ingredients compared to the present disclosure (as explained above).
Claim 1 recites “consisting essentially of” which is treated as “comprising” (as explained below) even though Kim teaches formula that would read on the claimed formula even if they were recited with “consisting of” language for the claimed repeating units. As set forth in MPEP 2111.03, and because there is no evidence in the record of the "basic and novel” characteristics of the claimed subject matter, this phrase will be interpreted as “comprising.”
The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. . . . For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” . . . If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Hamada’s disclosure is highly generalized and thus appears to argue that Hamada teaches so many possible types of fluorinated silicone compounds that the embodiments that fall within the claimed scope would not be obvious to try. This is not persuasive because the disclosure of Hamada is not so broad as to render the claimed subject matter therein non-obvious. Applicant then similarly argues that Hamada does not render obvious the claimed fluorine atom content range because the amount of fluorine atoms suggested by Hamada so broadly overlaps the claimed range. Again, this is not persuasive because Hamada’s suggestion of at least one fluorine containing group (as well as the suggestion of perfluoroalkyl groups as the fluorine containing group) indicates that the R groups of the siloxane compound may be entirely fluorine containing groups with a very high fluorine content. Thus, the assertion in the office action regarding overlapping fluorine content is indeed grounded in the teachings and direction of Hamada based on overlapping subject matter.
Applicant refers to Hamada’s teachings of the amount of non-reactive fluorosilicone ingredient to make the amount of fluorine atoms in that ingredient non-obvious. However, as indicated above, Hamada’s fluorine atom content overlaps the claimed content and therefore a particular motivation for that fluorine content (i.e., separate from the motivation from the amount of the overall ingredient) is not necessary. Furthermore, the Examiner asserts that it is well known that increasing fluorine content increases release properties because carbon bonded fluorine atoms are known to impart better release properties that carbon bonded hydrogen atoms. Even so, this well-known aspect of the release properties of fluorinated hydrocarbon groups compared to non-fluorinated hydrocarbon groups is not necessary to render the claimed subject matter prima facie obvious in view of the overlapping fluorine group content discussed above.
Applicant then argues that Kim does not indicate any deficiency that would motivate the inclusion of the compound from Hamada and does not mention Hamada despite being filed many years after Hamada’s publication. However, a primary reference does not need to call out for improvement from a secondary reference, nor is the timing of two publications relevant in evaluating the obviousness of combining the teachings of those publications (i.e., a later published reference is not considered to render non-obvious all the earlier published teachings of other references merely by failing to explicitly discuss such references or their teachings).
Applicant also argues that the non-reactive fluoro silicone would dilute the reactive functionality, but there is no evidence to support this as a concern, let alone such a concern that would make such an ingredient non-obvious to include in a hydrosilation cured fluorosilicone composition. To the contrary, Hamada discloses that such non-reactive fluoro silicone compound can indeed be included in a reactive fluoro silicone composition (and Kim also suggests various non-reactive ingredients/additives).
Applicant argues hindsight but Hamada clearly teaches a motivation for such non-reactive fluorosilicone ingredients.
Applicant then argues that the fluorine atom content of ingredient C causes unexpected results. However, there does not appear to be any comparative examples showing the effect of fluorine atom content outside the claimed range. Furthermore, the claims generally appear to be non-commensurate in scope with the examples in the present specification in terms of the amount of the ingredients in the composition and the type of those ingredients (and more specifically for the polymer ingredients, the type and amount of repeating units) being far broader in the claims than the examples.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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 on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights