Prosecution Insights
Last updated: April 18, 2026
Application No. 18/336,055

VERSATILE SELF-ADHESIVE MODIFIERS ON SILICONE RUBBER FOR BONDING PLASTIC AUTOMATICALLY

Non-Final OA §102§103§112
Filed
Jun 16, 2023
Examiner
DONAHUE, OLGA LUCIA
Art Unit
1763
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Nano And Advanced Materials Institute Limited
OA Round
1 (Non-Final)
75%
Grant Probability
Favorable
1-2
OA Rounds
3y 4m
To Grant
87%
With Interview

Examiner Intelligence

Grants 75% — above average
75%
Career Allow Rate
78 granted / 104 resolved
+10.0% vs TC avg
Moderate +12% lift
Without
With
+11.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
38 currently pending
Career history
142
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
56.1%
+16.1% vs TC avg
§102
16.9%
-23.1% vs TC avg
§112
17.3%
-22.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 104 resolved cases

Office Action

§102 §103 §112
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. This communication responds to the application and amended claim set filed June 16, 2023 . Claims 1-1 2 are currently pending Election/Restrictions Applicant’s election wit h traverse of Group I, claims 1-10 in the reply filed on February 09, 2026 is acknowledged. . The traversal is on the grounds that an undue burden does not exist since the groups encompass similar subject matter which could be readily searched and examined together. The traversal is not found persuasive because the groups have divergent subject matter as recited in the restriction requirement. Each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. The prior art applicable to one invention would not likely be applicable to another invention. Specifically, group I and group II are related as process of making and product made. The inventions are distinct since the product as claimed can be made by another and materially different process (MPEP 806.05 (f). Therefore, the requirement is still deemed proper and is therefore made FINAL. It is noted that the examiner w ould consider the rejoinder of the withdrawn claims that are commensurate in scope with the allowable claims of group I . Claim Rejections - 35 USC § 112 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 -10 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites “commercially available liquid silicone rubber base” , which renders the claim indefinite . Commercially available where? What if someone prepares a siloxane in the lab that is not "commercially made" but is comparable to one that is? . Claim 1 recites “the mass ratio of the silicone rubber substrate to the self-adhesive modifier additive ranges from 100:0.5 to 100:10” in lines 10-11. There is insufficient antecedent basis for “the silicone rubber substrate” in the claim. For examination purposes, the recitation of “ the silicone rubber substrate ” is interpreted as “ the liquid silicone rubber base”. Claims 2-10 are rejected as being dependent on a rejected base claim. Claim Analysis Summary of Claim 1: A self-adhesive silicone rubber composition having a tunable adhesion strength to plastic substrates, comprising: a commercially available common liquid silicone rubber base; and a self-adhesive modifier additive selected from: a crosslinker selected from organosilane, organoacrylate or their derivatives; a curing agent selected from a platinum-based complex, an organic peroxide or its derivatives ; or a mixture or combination thereof; wherein the mass ratio of the silicone rubber substrate to the self-adhesive modifier additives ranges from 100:0.5 to 100:10 . Claim Rejections - 35 USC § 102 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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim s 1 and 3-10 are rejected under 35 U.S.C . 102(a)(1) as being anticipated by Gray et al. ( US Patent No. 5,248,715 ) . Regarding claim 1 , Gray et al. teach self-adhe sive liquid silicon rubber (LSR) compositions having adhesion to a variety of substrates including plastic materials (abstract and title ) comprising an alkenyl-containing polydiorganosiloxane , an organohydrogensiloxane , a hydrosilation catalyst including platinum compounds (col.6:12-22) , 0.05 to 0.40 parts epoxytrialkoxysilane per 100 parts polydiorganosiloxane where the alkoxy radicals of the epoxytrialkoxysilane have 1 to 4 carbon atoms (claim 1 , 13 ) and 0.1 to 2 parts of an acrylate or methacrylate compound , thereby reading on the commercially available common liquid silicon rubber base and the modifier additive (abstract, col.3:28-31,68; col.4:2-4, claim s 7 , 11-12 ) . Gray et al . further teach a two-part addition liquid silicone rubber composition was prepared as follows: p art A was prepared by mixing 100 parts of dimethylvinylsiloxy endblocked polydimethylsiloxane (PDMS) , fillers and platinum catalyst and p art B was prepared by mixing 100 parts of the same base dimethylvinylsiloxy endblocked polydimethylsiloxane (PDMS), fillers, 1.7 part of dimethylhydrogensiloxy-SiO 2 copolymer , along with adhesion promoting materials including 2.06 parts of methyl methacrylate, and an amount of ethylpolysilicate (EPS) and glycidoxypropyltrimethoxysilane (GPS) in a 4 to 1 ratio by weight , wherein the com bined concentration was varied from 0.33 part to 1.7 part per 100 parts of polydimethylsiloxane . The composition was prepared by mixing parts A and B in a 1:1 ratio (example 1, col. 9-10) . Thus, the LSR base components are 101.7 parts and the parts of the acrylate compound and the GPS (adhesion promoting materials) are 2.126 to 2.4 parts, therefore the ratio is from 101.7:2.126 to 101.7: 2.4 (42.4-44.8), as required by the instant claim. Gray et al. are silent on the tunable adhesion strength property. However, in view of the substantially identical self-adhesive silicon rubber composition of Gray et al. , the composition of Gray et al. will possess the claimed tunable adhesion strength property to plastic substrates . Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).) Regarding claim 3, Gray et al. teach the liquid silicon rubber base comprises an alkenyl -containing polydiorganosiloxane and an organohydrogensiloxane (claim 1), as required by the instant claim. Regarding claim 4, Gray et al. are silent on the grade of the liquid silicone rubber base (LSR) . However, Gray et al. teach the LSR base comprises silicon polymer curable by hydrosylation reaction (abstract), wherein the curing is complete in the mold in a single step and there is not subsequent post-curing step (col.10:33-50), thereby reading on the non-post curing liquid silicon rubber grade. Regarding claims 5 and 7 , Gray et al. teach an epoxytrialkoxysilane (claim 1) including 3-glycidoxypropyltrialkoxysilanes (claim 3, example 1), thereby reading on the (epoxy- organo ) trialkoxysilane of instant claim 5 and the formulae of instant claim 7. Regarding claim 6 , the tetraalkylorthosilicate is an optional component in the Markush group of instant claim 5. Gray et al. teach the (epoxy- organo ) trialkoxysilane as set forth above for claim 5. Gray et al. are considered to meet the claim 6 since claim 6 is further limiting the optional tetraalkylorthosilicate component. Regarding claim 8 , Gray et al. teach acrylate and meth acrylate compounds are selected from alkyl, alkenyl and aryl esters of acrylate and meth acrylate where the alkyl and alkenyl groups have from 1 to 10 carbon atoms and the aryl groups have from 6 to 10 carbon atoms , which implies the acrylate is ethyl acrylate, butyl acrylate, propyl acrylate, as required by the instant claim. Regarding claim 9 , the organic peroxide is an optional component in the Markush group of instant claim 1. Gray et al. teach the platinum-based complex as set forth above for claim 1. Gray et al. are considered to meet the claim 9 since claim 9 is further limiting the optional organic peroxide component. Regarding claim 10 , Gray et al. teach platin um compounds such as hexachloro platin ic acid (col.6:12-22) as the platinum-based complex, thereby reading on the chloroplatinic acid. 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 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. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Gray et al. (US Patent No. 5,248,715) in view of Araki et al. (US 2006/0293445 A1) . Regarding claim 2 , Gray et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference. Gray et al. further teach a polyester as the substrate material (example 1). Gray et al. are silent on the polycarbonate, polybutylene terephthalate, polyetherketone or polyphenylsulfone substrate s as recited in the instant claim . However, Araki et al. teach a self-adhesive silicone rubber composition comprising an organopolysiloxane containing at least two silicon-bonded alkenyl groups, (B) an organohydrogenpolysiloxane containing at least two SiH groups, (C) a hydrosilylation catalyst such as a platinum based complex , and (D) an adhesive component containing a silane coupling agent , wherein the silane agent include (meth)acryloyl-containing silane coupling agents, epoxy-containing silane coupling agents such as γ - glycidoxypropyltrimethoxysilane (claim 1 and [0037], [0050]-[0053]) . Araki et al. further teach self-adhesive silicone rubber composition firmly bond to plastic without the need of primers [0 048] and demonstrate good adhesion to polybutylene terephthalate (PBT) substrates (Table 1 ,[0061]). Thus, considering the composition of Araki et al. is similar to Gray et al.’s composition with epoxy containing silanes as adhesion promoters, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the generic polyester of Gray et al. for the PBT of Araki et al. as the substrate material, thereby arriving to the claimed invention. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure : US Patent No. 4087585 A by Schulz , cite at the IDS dated 8/1/2023 US 2002/0049274 A1 by Azechi et al. US Patent No. 8748553 B2 by Bortenschlager et al. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT OLGA L. DONAHUE whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-1152 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8:00-5:00 . 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, FILLIN "SPE Name?" \* MERGEFORMAT JOSEPH DEL SOLE can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1130 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /OLGA LUCIA DONAHUE/ Examiner, Art Unit 1763 /CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763
Read full office action

Prosecution Timeline

Jun 16, 2023
Application Filed
Mar 31, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
75%
Grant Probability
87%
With Interview (+11.9%)
3y 4m
Median Time to Grant
Low
PTA Risk
Based on 104 resolved cases by this examiner. Grant probability derived from career allow rate.

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