DETAILED ACTION
This is an Office action based on application number 18/294,142 filed 31 January 2024, which is a national stage entry of PCT/US2022/038800 filed 29 July 2022, which claims priority to US Provisional Application No. 63/228,246 filed 2 August 2021. Claims 85-105 are pending. Claims 1-84 are canceled. Claims 85-89, 95-99, and 101 are withdrawn from consideration due to Applicant’s election.
Amendments to the claims, filed 6 July 2026, have been entered into the above-identified application.
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 .
Examiner Note
Applicant indicates claim 90 as “Currently Amended”. The amended portion of the claim is reproduced below:
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The same portion of claim 90 from the claim set filed 15 May 2024 is reproduced below:
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There are no apparent differences between the previous claim and the allegedly amended claim.
Claim Objections
Claims 94 and 105 are objected to because of the following informalities:
Claim 94 recites “the silica is a fumed silica” in lines 1-2. This limitation is redundant as claim 93, from which the instant claim depends, establishes that the silica is a fumed silica.
Claim 105 recites “the silica is a fumed silica” in lines 1-2. The limitation is redundant as claim 14, from which the instant claim depends, establishes that the silica is a fumed silica.
Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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.
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.
Claims 90-94 and 100 are rejected under 35 U.S.C. 103 as being unpatentable over Lipman (US Patent Application Publication No. US 2007/0078448 A1) (Lipman) in view of Balijepalli et al. (US Patent Application Publication No US 2015/0065613 A1) (Balijepalli).
Regarding instant claim 90-94:
Lipman discloses a fluid-absorbing pressure sensitive adhesive material comprising at least one continuous phase (paragraph [0025]).
Lipman further discloses the continuous phase comprises at least 10 to about 60 wt% of a low-molecular weight polyisobutylene (PIB) having a viscosity average molecular weight of about 30,000 to about 70,000 (paragraph [0043]). This corresponds to Component (b) of claim 90.
Lipman further discloses that the continuous phase comprises a high molecular weight PIB having a viscosity average molecular weight of about 200,000 to about 600,000 in an amount of from 0% to 50% of the total weight of the continuous phase (paragraph [0045]). This corresponds to component (a) of claim 90.
It is noted that the amounts and molecular weights disclosed by Lipman overlap or include the ranges recited by claim 90; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lipman further discloses that fumed silica is useful as an additional optional to increase the shear strength of the continuous phase and improve cold flow performance (paragraph [0074]).
Lipman does not explicitly disclose the surface-treated silica and the amount thereof.
However, Balijepalli discloses an adhesive composition comprising at least a first filler to improve the viscosity of the composition (paragraph [0049]).
Balijepalli further discloses that said fillers are inclusive of fumed silica and fumed silica that has been reacted with a compound (usually an organosilicon compound such as dimethylchlorosilane, trimethoxyoctylsilane, polydimethylsiloxane, or hexamethyldisilazane) (paragraph [0050]).
Balijepalli further discloses that the amount of the first filler is used in an amount of from 1 wt% to 40 wt% based on the total weight of the composition (paragraph [0054]). It is noted that the amount of filler disclosed by Balijepalli includes the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the fumed silica reacted with the organosilicon compound in the amount prescribed by Balijepalli in the composition of Lipman. The motivation for doing so would have been that the fumed reacted fumed silica is a functionally equivalent adhesive filler to the fumed silica desired by Lipman that also provides improved viscosity.
Therefore, it would have been obvious to combine Balijepalli with Lipman to obtain the invention as specified by the instant claims.
Regarding instant claim 100 and 102-105:
Lipman discloses a fluid-absorbing pressure sensitive adhesive material comprising at least one continuous phase (paragraph [0025]).
Lipman further discloses the continuous phase comprises at least 10 to about 60 wt% of a low-molecular weight polyisobutylene (PIB) having a viscosity average molecular weight of about 30,000 to about 70,000 (paragraph [0043]). This corresponds to Component (b) of claim 90.
Lipman further discloses that the continuous phase comprises a high molecular weight PIB having a viscosity average molecular weight of about 200,000 to about 600,000 in an amount of from 0% to 50% of the total weight of the continuous phase (paragraph [0045]). This corresponds to component (a) of claim 90.
It is noted that the amounts and molecular weights disclosed by Lipman overlap or include the ranges recited by claim 90; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lipman further discloses that fumed silica is useful as an additional optional to increase the shear strength of the continuous phase and improve cold flow performance (paragraph [0074]).
Lipman further discloses that the composition is pressed between two sheets of silicone release paper (paragraph [0111]).
The structure of the composition pressed between two sheets meets the claimed tape.
One sheet of silicone release paper meets the claimed substrate necessarily comprising an upper and lower surface.
The other sheet of silicone release paper meets the claimed release liner having a surfaced that contacts at least a portion of the composition.
Lipman does not explicitly disclose the surface-treated silica and the amount thereof.
However, Balijepalli discloses an adhesive composition comprising at least a first filler to improve the viscosity of the composition (paragraph [0049]).
Balijepalli further discloses that said fillers are inclusive of fumed silica and fumed silica that has been reacted with a compound (usually an organosilicon compound such as dimethylchlorosilane, trimethoxyoctylsilane, polydimethylsiloxane, or hexamethyldisilazane) (paragraph [0050]).
Balijepalli further discloses that the amount of the first filler is used in an amount of from 1 wt% to 40 wt% based on the total weight of the composition (paragraph [0054]). It is noted that the amount of filler disclosed by Balijepalli includes the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the fumed silica reacted with the organosilicon compound in the amount prescribed by Balijepalli in the composition of Lipman. The motivation for doing so would have been that the fumed reacted fumed silica is a functionally equivalent adhesive filler to the fumed silica desired by Lipman that also provides improved viscosity.
Therefore, it would have been obvious to combine Balijepalli with Lipman to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant traverses the combination of the references because both are from fundamentally different technologies and purposes, and Applicant concludes that one of ordinary skill in the art would not look to Balijepalli to address any alleged deficiencies in Lipman. Specifically, Applicant points out that Lipman is directed to a PSA wound dressing utilizing a PSA based primarily on polyisobutylene and related elastomeric materials, whereas Balijepalli employs chemically reactive epoxy resins.
Applicant’s argument is unpersuasive. Both Lipman and Balijepalli disclose the use of fumed silica as a filler material for an adhesive composition. Lipman teaches that said fumed silica increases both shear strength and improves cold flow performance of the composition. Balijepalli discloses both fumed silica and fumed silica reacted with an organosilicon compound that is useful to affect the rheology of the composition. Cold flow performance and rheology are considered analogous properties. Therefore, it would have been obvious to replace the generic fumed silica with the fumed silica reacted with the organosilicon of Balijepalli because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Applicant further argues that Lipman provides no motivation to increase silica concentration beyond the very small amounts disclosed therein. Applicant contends that the actual silica concentrations disclosed by Lipman are very small, i.e., Examples 1 and 2 contain only about 3 wt.% and 2 wt.% silica, respectively, Example 6 contains approximately 0.5 wt.% silica, and Example 7 contains none.
Applicant further argues that the examples of Lipman involve a dilution; therefore, even if one of ordinary skill in the art may include the amount disclosed by Balijepalli, performing a dilution would take the amount below the range of the claims.
Applicant’s argument is unpersuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123(II). In the instant case, the discrete amount of silica used in those examples of Lipman do not teach away from the general disclosure that the simple addition of fumed silica provides the benefits proffered. Further, the specific dilution in the examples of Lipman does not appear critical to the invention of Lipman. Therefore, one of ordinary skill in the art would be readily motivated to add the modified fumed silica in the absolute amounts disclosed by Balijepalli to obtain a composition having the purported benefits.
Finally, Applicant argues that the claimed invention demonstrates criticality and unexpected results to overcome any prima facie case of obviousness. Applicant relies upon the Declaration of Tyson C. Davis under 37 C.F.R. §1.132 (Davis Declaration) to support such a position. Specifically, Applicant argues that the shear static strength does not increase linearly with increasing silica concentration, rather a surprising and unexpected static shear strength occurs from approximately 8 wt.% to approximately 15 wt.% when a ten-fold increase in static shear performance occurs.
Applicant’s arguments are unpersuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02(d).
The Davis Declaration does not appear to identify, specifically, the type of surface-treated fumed silica used in the experiments. Further, the experiments use specific high and low molecular weight PIB resins, whereas the claims are related to a broad range of each PIB resin. Therefore, it is not readily apparent that the evidence relied upon by Applicant to show unexpected results are commensurate in scope with the claimed invention.
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 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.
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/TAM/Examiner, Art Unit 1788 07/23/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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