DETAILED ACTION
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.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-5 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi et al. (US 2018/0105692, “Imaizumi”) in view of Ooms et al. (US 2007/0275255, “Ooms”).
Regarding claim 1, Imaizumi teaches a curable granular silicone composition comprising an arbitrary number of M units ([0024], [0029], corresponding to the claimed MRA unit), Q units ([0024], [0029], corresponding to the claimed Q unit), and D units ([0024], [0029], corresponding to the claimed block Y components). Imaizumi additionally teaches that the composition may include on the range of from 0.1 to 5 parts by mass of radical initiator ([0060]). Imaizumi additionally teaches these groups may include a broad range of reactive groups, including acrylic reactive groups (see [0024], [0025]) and it would have been within the skill or the ordinarily skilled artisan at the time of filing to have included such reactive groups in the M and Q units in order to crosslink the composition and decrease cure shrinkage ([0025]). The Examiner notes that in the case where the claimed ranges "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). Please see MPEP 2144.05. Imaizumi fails to specifically describe that the RA group contains a (meth)acryl group or a specific range of MRA to Q units, however in the field of hot-melt silicone compositions such a feature is well known and would have been obvious to the ordinarily skilled artisan. For example, Ooms provides expansive teachings regarding the combination of different siloxane groups in a hot-melt silicone resin and the ordinarily skilled artisan would have found the modification of various components with such a resin to be conventional in view of Ooms’ teachings in order to modify various properties of such a resin (Ooms [0001] – [0020], describing the prior art; [0022] – [0100] describing many different combination of resin units in order to balance properties; and see e.g., [0241, [0242]). Ooms teaches M groups wherein the R component corresponding to RA is bound to a (meth)acryl group ([0109] – [0112]; see also generally Oom [0028] – [0050]). It therefore would have been obvious to have provided such a feature to the composition of Imaizumi in order to improve cure performance and substrate adhesion (see, Ooms, e.g., [0106]). Ooms further teaches to modify the ratio of individual units within the silicone resin in order to modify the release force and adhesive properties of the resin ([0008], and see [0326], noting a suitable ratio of M to Q units, corresponding to the claimed MRA to Q units, should be on the range of from 0.3 to 4:1 to 0.6 to 1.1:1).
Regarding claim 2, Imaizumi additionally teaches that the organopolysiloxane copolymer may have a resin-linear portion of the composition and may be connected with siloxane or silalkylene bonds (e.g., [0010], [0023], [0026], [0029]).
Regarding claim 3 and 5, Imaizumi additionally teaches the inclusion of multiple M units ([0024]) and the sum of M units may be on the range of from 0.5 to 2.0 moles ([0042], [0043]).
Regarding claim 4, Imaizumi additionally teaches that a resinous block may be included ([0068]) and an additional D block comprising a monovalent organic group may be included in from 100 to 300 units ([0068]).
Regarding claim 8, Imaizumi additionally teaches the inclusion of an additional component a3 which may include multiple M units ([0064]) and the sum of M units may be on the range of from 0.5 to 2.0 moles ([0064], [0065]) and may be included, for example, in an amount of on the range of from 0.1 to 50 parts by mass (see [0089], [0090]).
Regarding claim 9, Imaizumi additionally teaches the inclusion of an additional component a3 which may include multiple M units ([0064]) and the sum of M units may be on the range of from 0.5 to 2.0 moles ([0064], [0065]) and may be included, for example, in an amount of on the range of from 0.1 to 50 parts by mass (see [0089], [0090]).
Regarding claim 10, Imaizumi additionally teaches the inclusion of a polydimethylsiloxane ([0083], dimethylsiloxane oligomer) and an organic solvent (e.g., [0081]).
Regarding claim 11 Imaizumi additionally teaches that the composition should have a viscosity of lower than 8000 Pa*s, and it therefore would have been obvious to have adjusted the complex viscosity to lower than this in order to provide good adhesion (e.g., [0076]).
Regarding claim 12, Imaizumi teaches the composition may be molded into any desired shape and thus the ordinarily skilled artisan would have found it obvious to have molded the composition into a film or sheet (e.g., [0105], [0111], [0115], [0149]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi in view of Ooms as applied to claim 1, above, and further in view of Otaki et al. (PCT/JP2018/017581, for which English language equivalent US 2020/0131408 will be used as the citation copy, hereafter “Otake”).
Regarding claim 6, Imaizumi fails to specifically teach the acrylic functional groups reading on the claimed unit, however in the same field of endeavor of organopolysiloxane compositions (), Otake teaches to include such a functional group (Otake, e.g., [0073]) and that doing so may allow the practitioner to adjust flexibility and adhesiveness of the composition (Otake, [0067]). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have used such an acrylic functional group in order to adjust flexibility and adhesiveness of the composition (Otake, [0067]).
Claim(s) 7, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi in view of Ooms as applied to claim 1, above, and further in view of Liu et al. (US 2018/0208799, “Liu”).
Regarding claims 7 and 19, Imaizumi fails to teach that the radical initiator is a photoinitiator however such initiators are well known in the prior art. For example, in the same field of endeavor of siloxane-based adhesives (e.g., [0011] – [0015]), Liu teaches that UV polymerization initiators are well known and suitable in order to initiate polymerization and cure the adhesive (e.g., [0100], [0101]) and the substitution of a photoinitiator for the initiators of Imaizumi would have been obvious to the ordinarily skilled artisan as an acceptable method of polymerizing the composition of Imaizumi (see Liu, [0100] – [0104]) and because the simple substitution of known element or compound that would have provided predictable results (in this case effectively initiating polymerization) would have been obvious to the person of ordinary skill in the art at the time of filing. Please see MPEP 2143.
Regarding claim 20, modified Imaizumi (Liu) additionally teaches that the photoinitiator may comprise, for example, 2-hydroxy-2-methylpropiophenone (see, e.g., Liu [0101]).
Response to Arguments
Applicant’s arguments filed 7/24/26 are considered moot in light of the new grounds of rejection, which were necessitated by Applicant’s amendments. Arguments that are relevant to the current rejections are addressed below.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Therefore, claims 1-12, 19, and 20 are rejected as described above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
