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 1-20 are pending. Applicant’s previous election of Group I, and the following species, claims 1-11, 16-20, still applies and claims 12-15 remain withdrawn.
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Response to Amendment
Applicant’s amendment of 03/16/26 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) 1-5, 7-11, 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otake (U.S. 2020/0131408) in view of Lee et al. (U.S. 5,188,864).
Regarding claims 1-5, 7-11, 16-18, Otake teaches pressure sensitive adhesive that is UV curable and comprises a linear polysiloxane with methacryloxy groups represented by present formula II-1 (as in the elected species and claims 5, 7, 9, see abstract, [0031]-[0052], with a polydimethylsiloxane backbone of overlapping degree of polymerization, and when R2 in formula 1 is a C2 alkylene, corresponding to the elected Z2 of present example 1, p is 2, all R1’s are methyl, a is 1, and R3 is the first formula in [0039] with b being 3), as well as acrylate monomers corresponding to the claimed B ingredient at a weight amount overlapping claim 8 to control viscosity ([0053]-[0058]), as well as an initiator as in claim 17 ([0064]), as well as a resin overlapping claim 3 ([0059]-[0063]), as well as a polydimethylsiloxane as in claim 4 ([0073]).
Otake does not disclose the elected B ingredient or the D ingredient. However, Lee is also directed to UV curable adhesives based on acrylate functional polysiloxanes (see abstract, col. 15, lines 25-30) and discloses that the elected D ingredient (as in claims 2 and 18, col. 2, lines 45-68, when X is a C6 alkylene group) was known to provide the benefit of enhanced adhesion for such adhesives, and also discloses that ethylhexyl acrylate was a known acrylate monomer that may provide the benefit of being a reactive diluent in such adhesives (as in claim 10 and the elected species, col. 18, line 5-25), such that it would have been obvious to have included the adhesion promoter in Otake to provide the benefit of improved adhesion as taught by Lee and to have used ethylhexyl acrylate as the acrylate monomer called for in Otake to provide the benefit of being a reactive diluent (control viscosity) as taught by Lee.
The amount of acrylate monomer in modified Otake overlaps the claimed range (of claim 8) and the acrylate functional polysiloxane and acrylate monomer ingredients of modified Otake overlap the corresponding ingredients in the present application, such that the corresponding molar amount of acrylate groups provided by such ingredients in such amounts (using MW and number of acrylate groups of each ingredient to convert wt% to moles of acrylate groups) would also overlap the claimed molar ratio of claims 1 and 16. Furthermore, given that the acrylate monomer is recognized as effecting viscosity as a reactive diluent, the amount of the acrylate monomer relative to the acrylate functional polysiloxane, and the resulting molar ratio of respective acrylate groups, would have been obvious to adjust, including to values within the claimed range, as part of optimizing the degree of viscosity control/dilution.
The adhesive in modified Otake is disclosed as being a pressure sensitive adhesive and is inherently “optical,” as in claim 11, based on the overlapping type and amount of ingredients compared to the present application (additionally, claim 11 is directed to an immaterial intended use that is not given patentable weight).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otake (U.S. 2020/0131408) in view of Lee et al. (U.S. 5,188,864), as applied to claim 1 above, and further in view of Jin (WO 2019/070866).
Regarding claim 19, modified Otake teaches all of the above subject matter, but does not disclose a vinyl functional polydimethylsiloxane ingredient. However, Jin is also directed to UV cured acrylate functional polysiloxane adhesives and teaches that a combination of acrylate (UV curable) polydimethylsiloxanes (as in Otake) and vinyl (thermally curable) polydimethylsiloxanes (as in claim 19) may provide the benefit to the overall adhesive of being both UV and thermally cured so that heat may cure any spots that the light cannot reach ([0002], [0008], [0009], [0029], [0036]), such that it would have been obvious to have used vinyl functional polydimethylsiloxanes in modified Otake for the above benefit taught by Jin.
Claim(s) 6 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otake (U.S. 2020/0131408) in view of Lee et al. (U.S. 5,188,864), as applied to claim 1 above, and further in view of Sakita (U.S. 2010/0121013).
Regarding claims 6 and 20, modified Otake teaches all the above subject matter but does not disclose the claimed thiol compounds. However, Sakita is also directed to photocurable adhesives based on acrylate functional siloxanes (see abstract, [0084]-[0086]) and teaches that the compound of claims 6 and 20 may be added with the benefit of enhancing the photocurability of the composition ([0110]), such that it would have been obvious to have included such a compound in modified Otake to provide the above benefit taught by Sakita.
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 Otake already teaches a pressure sensitive adhesive that cannot be improved by the addition of additional ingredients. This is not persuasive and nothing in the reference suggests that further improvement is impossible. Indeed, Otake seeks to adjust bonding force ([0009]) and suggest additional silane coupling agents ([0074]).
Applicant argues Otake does not seek adhesive having cohesive failure while Lee supposedly seeks cohesive failure. However, Otake describes cohesive failure as resulting from too much bonding force and Lee does not ascribe cohesive failure levels of bonding to the adhesion promoter in general but instead to certain embodiments of Lee’s coating (the adhesion promoter is generally described as providing excellent unprimed adhesion, col. 3, lines 5-10, not specifically cohesive failure levels of bonding). In other words, there is nothing in the two references, or the prior art in general, to indicate that including any amount (since the claims do not limit the amount) of the presently elected adhesion promoter would result in bonding strength that produces cohesive failure. To the contrary, Otake discloses (as would be obvious to one of ordinary skill anyway) that adhesive strength may be adjusted, and suggests silane coupling agents (see citations above), such that it would have been obvious to have adjusted the amount of such silane coupling agents (like the compound from Lee) to adjust/improve adhesion without resulting in cohesive failure. Furthermore, one of ordinary skill would recognize that cohesive failure of a particular composition would be dependent on the substrate that the adhesive is applied to. This is yet another reason that cohesive failure would not be expected to result from the mere inclusion of the adhesion promoter from Lee.
Applicant also points to the age of the Lee reference which is irrelevant. A reference (Otake) is not assumed to have mentioned all possible obvious combinations with other references that were published prior to the reference.
Applicant argues hindsight but the adhesion promoter of Lee has a motivation from the prior art, not based on hindsight. Applicant also mentions a lack of predictability but there is nothing unpredictable about including an adhesion promoter to promote adhesion in an adhesive composition.
Applicant then argues that the a/b ratio as claimed is critical based on the examples and comparative examples in the present specification. However, at best, the examples show criticality of a range that is narrower than the range as claimed. Furthermore, even if the claimed ratio was narrowed to match the endpoints used in the examples, the claims would still be too broad compared to the examples, in terms of the type and amount of the ingredients, to be considered commensurate in scope for the purposes of unexpected results.
Applicant then argues that the cohesive failure teachings of Otake and Lee constitute teaching away but as explained above, nothing in the discussion of cohesive failure in the two references is applicable to the adhesive promoter compound in general (irrespective of amount) or to any substrate.
Applicant then argues against the Jin reference on the grounds that incorporating the vinyl polydimethylsiloxane of Jin would introduce a different chemistry including a platinum catalyst. However, Jin provides a compelling motivation (i.e., not based on hindsight) to include such a compound and shows that the combination of different curing mechanism (actinic, like already taught in Otake, and hydrosilylation) was known and predictably achieves the disclosed benefits, with nothing in Otake to teach away from or preclude a second cure mechanism. Furthermore, regarding the additional compounds needed to effectuate the dual cure benefit (e.g., vinyl polysiloxane/platinum catalyst/hydride crosslinker) nothing in the claims precludes these ingredients and therefore the prima facie obviousness of achieving a second cure mechanism based on these compounds from Jin is proper.
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.
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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).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights