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 .
This communication responds to the application and amended claim set filed June 23, 2023. Claims 2 and 5 were cancelled. Claims 11-12 were withdrawn with traverse in the reply filed on 02/09/2026. Claims 1, 3-4 and 6-10 are currently under examination.
The rejections of claims 1-10 under 35 USC 112 set forth in the Office Action dated 04/06/2026 are WITHDRAWN due to Applicant's responsive amendments.
The rejections of the claims over Gray et al. and Gray et al. in view of Araki et al. are WITHDRAWN due to Applicant's responsive amendments. Although the Examiner believes that these rejections were proper and could be maintained, an additional search has produced a more relevant prior art reference. Because prior art rejections should ordinarily be confined strictly to the best available prior art (see MPEP 706.02), the Examiner has withdrawn the previous rejections (though still believed to be proper) in favor of rejections based on the newly-discovered best available prior art.
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.
Claims 1 , 3-4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Azechi et al. hereinafter Azechi (US PG Pub. 2002/0049274).
Regarding claim 1, Azechi teaches a self-adhesive silicon rubber composition ([0006]-[0007]) exhibiting improved adhesion to resins such as polycarbonate and metals substrates (abstract, [0128]), wherein the composition comprises (A) 100 parts by weight of an organopolysiloxane having at least two aliphatic unsaturated groups in a molecule, (B) 0.1 to 100 parts by weight of finely divided silica, (C) 30 to 700 parts by weight of a metal powder or an electrically conductive metal-plated powder, (D) 0.1 to 20 parts by weight of an adhesive aid, and (E) a curing agent in an amount sufficient to cure the organopolysiloxane (claim 1), thereby reading on the liquid silicone rubber base and the self-adhesive modifier additive (adhesive aid);
wherein the self-adhesive modifier additive is selected from tetraalkylorthosilicates including tetrabutoxysilane ([0088], [0098]); epoxytrialkoxysilane including glycidoxypropyltrimethoxysilane (GPTMS) ([0088], [0094]-[0095], [0098]), as required by the instant claim;
wherein the self-adhesive modifier additive (D) is added in an amount of 0.2 to 15 parts by weight per 100 parts by weight of the organopolysiloxane (A) [0112], therefore the ratio of the liquid silicone rubber base to the additive ranges from 100:0.2 to 100: 15. Azechi exemplifies the silicone rubber composition comprising dimethylpolysiloxane, silica fine powder, dicumyl peroxide and GPTMS (formula 7) (example E1,[0145]-[0149]) , wherein the mass ratio of the liquid silicone rubber base to the adhesive modifier is 100:8 ( [0145], Table 1, [0162]), as required by the instant claim.
Azechi is silent on the tunable adhesion strength property and the plastic substrate being a polyetheretherketone or polyphenylsulfone. However, in view of the substantially identical self-adhesive silicon rubber composition of Azechi, the composition of Azechi will possess the claimed tunable adhesion strength property to plastic substrates including polyetheretherketone or polyphenylsulfone. 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, Azechi teaches the silicone rubber composition, wherein the curing agent (E) is an addition reaction-type curing agent comprising an organohydrogenpolysiloxane having at least two SIH groups in a molecule and a platinum group metal catalyst (claim 8). Azechi further exemplifies a liquid silicone rubber base comprising an dimethylpolysiloxane capped at both ends with dimethylvinylsiloxy groups and dimethylhydrogenpolysiloxane (example 2 [0150], as required by the instant claim.
Regarding claim 4, Azechi teaches the liquid silicone rubber composition is prepared by uniformly mixing the above-described components (A) to (E) and other, optional, components at room temperature. However, if necessary, it is possible to heat-treat all the components other than component (E) in a suitable apparatus such as a planetary mixer or kneader at a temperature of about 100 to 200.degree. C. for a period of about 30 minutes to 4 hours, especially about 2 to 4 hours, and subsequently mix in component (E) to effect curing and molding and there is not subsequent post-curing step [0126], thereby reading on the non-post curing liquid silicon rubber grade.
Regarding claim 6, Azechi teaches the self-adhesive modifier additive is tetraalkylorthosilicates including tetrabutoxysilane ([0088], [0098]). This disclosure of the claimed subject matter is sufficiently specific to constitute anticipation under 35 USC 102.
Regarding claim 7, Azechi teaches the self-adhesive modifier additive is an epoxytrialkoxysilane including glycidoxypropyltrimethoxysilane (GPTMS) ([0088], [0094]-[0095], [0098], formula 7), as required by the instant claim.
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Regarding claim 8, the organoacrylate is an optional component in the Markush group of instant claim 1. Azechi teaches tetraalkylorthosilicates and (epoxy-organo) trialkoxysilane as set forth above for claims 1 and 6-7. Azechi is considered to meet the claim 8 since claim 8 is further limiting the optional organoacrylate component.
Regarding claim 9, Azechi teaches dicumyl peroxide as the organic peroxide (claim 7, example 1 [0149]), as required by the instant claim.
Regarding claim 10, Azechi teaches a platinum group metal catalyst (claim 8) such as a solution of chloroplatinic acid in 2-ethylhexanol ([0150], example 2), thereby reading on the chloroplatinic acid.
Response to Arguments
Applicant’s arguments with respect to the claims over Gray et al. and Gray et al. in view of Araki et al. have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached 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, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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