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.
Election/Restrictions
Applicant's election with traverse of Group I, and the following species, claims 1-11, 16-20, in the reply filed on 12/05/25 is acknowledged. The election requirement for ingredient E is withdrawn. Applicant also elected a species for (C) but no election was required for this ingredient.
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The traversal is on the ground(s) that the claimed invention provides unexpected results. However, the claims are not commensurate in scope at least with respect to the type and amount of repeating units in, and overall amount of, the A ingredient, and the type and amount of the B ingredient.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 12-15 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/05/25.
Claim Objections
Claim(s) 1 and 5 is/are objected to because of the following informalities: the claims recite “a methacryloyl… expressed by formula…” even after this group has already been recited (i.e., subsequent recitation should refer to “the methacryloyl….”). Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-3, 4-11, 16-20 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites “bonded to a silicon atom configuring a main chain of a polysiloxane represented by *” which is vague because it is unclear what “configuring a main chain” means. It would appear remedial to recite something like “* represents a silicon atom in the organopolysiloxane represented by formula (I-1) or (I-2))”.
Claim 1 recites “which is bonded to a main chain of a polysiloxane via a linking group of a certain chain length or longer” which is vague because it is unclear what a “certain” chain length means and it is also unclear if this “linking group” is referring to the already recited Z2 group or is referring to an additional linking group. Also, it appears that the * symbol for formula II-2 is not defined, whereas it is defined in formula II-1. It would appear remedial to recite something like “* represents a silicon atom in the organopolysiloxane represented by formula (I-1) or (I-2))” for formula II-2.
Claim 1 recites y2+z2 = 0 which is vague because it implies these repeating units are omitted, (in which case why are they in the formula at all?), whereas the specification appears to indicate it is intended that one or both of y2 and z2 may be zero ([0052] of the present PGPub) which contradicts the above equation, such that the intended interpretation is unclear.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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.
Conclusion
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 Callie Shosho whose direct telephone number is (571)272-1123 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 Monday-Friday, 6:00 am - 5:00 pm.
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, Srilakshmi Kumar can be reached on (571) 272-7769. 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