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 .
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.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (U.S. PG Pub. No. 2019/0375937) in view of Hirano (JP 2019-196437 A)
In paragraphs 6-14, Zhang discloses an addition-curable silicone rubber composition comprising at least one polyorganosiloxane having at least two hydrocarbyl residues (A), which is a silicone resin as recited in claim 1, at least one polyorganohydrogensiloxane (B), which is both a silicone resin and a crosslinking agent (see paragraphs 175 and 227 of Zhang), a hydrosilylation catalyst (C), which is a curing catalyst as recited in claim 1. In paragraph 249 Zhang discloses that the organosilicon compound (D) can comprise acryl or methacryl groups, meeting the limitations of the silicone (meth)acrylate adhesive resin of claim 1, noting that Zhang teaches in paragraph 248 that the organosilicon compound (D) can be an adhesion promoter, and also that claim 1 does not require that the silicone (meth)acrylate be a separate component from the crosslinking agent.
In paragraphs 140, 152, and 165 Zhang discloses that the polyorganosiloxane (A) is preferably a mixture, in which case the polyorganosiloxane (A1) meets the limitations of the first silicone resin of claim 5, and (A2) or (A3) meets the limitations of the second silicone resin of claim 5. In paragraph 170 Zhang discloses that (A1) is present in a higher amount than (A2) or (A3), indicating that the ratio of the first silicone resin to the second silicone resin is at least 50:50, overlapping the range recited in claim 5.
In paragraphs 138-139 Zhang discloses that the polyorganosiloxane (A1) can have a structure (1a) and specifically (1b) corresponding to that of the first silicone resin of claims 6-7, where n in claim 6 is 0, m is 10 to 2000, overlapping the claimed range, the R, R1, and R2 groups are alkyl or alkenyl groups (paragraphs 125-129 of Zhang), particularly preferably methyl and vinyl respectively, and p is 4. In paragraphs 142-151, Zhang discloses that the polyorganosiloxane (A2) can have a structure (1d) or (1e), corresponding to the second silicone resin of claim 8, where the b1 and b1x values of Zhang overlap or encompass the m and n values of claim 8, the R groups are methyl, and the R1 groups can be various alkenyl groups, including vinyl and/or hexenyl, leading to structures meeting the limitations of claim 9.
The composition of Zhang further comprises at least one organosilicon compound containing at least one polyvalent aromatic group and at least one Si-H group (D), which acts in particular as an adhesion promoter, meeting the limitations of the anchoring agent of claim 10.
The composition of Zhang does not require the silicone resins recited in claims 11-12.
The differences between Zhang and the currently presented claims are:
i) The difference between Zhang and the currently presented claims is that Zhang does not disclose the further inclusion of a (meth)acrylic adhesive resin.
ii) Zhang does not disclose an optical member comprising an optical film and the silicone-based composition.
With respect to i), an English-language machine translation of Hirano, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation. Hirano, in paragraph 1, discloses a primer composition that bonds a substrate on which an optical semiconductor element is mounted to a cured product of an addition reaction curable silicone composition. In paragraph 27 Hirano discloses that the primer composition comprises a copolymer consisting of at least one of an acrylic acid ester or methacrylic acid ester having one or more SiH groups per molecule, meeting the limitations of the silicone (meth) acrylate adhesive resin of claim 1, and at least one of an acrylic acid ester or methacrylic acid ester having neither an SiH group nor an alkoxy group, meeting the limitations of the (meth)acrylic adhesive resin of claim 1. The use of the primer of Hirano to bind the addition reaction curable silicone composition of Zhang to a substrate therefore forms a protective film meeting the compositional limitations of claims 1 and 5-12, noting that a film can comprise multiple layers. Additionally, since the film of Zhang and Hirano meets the compositional limitations of the claims, it will possess the properties recited in claims 1-4.
It would have been obvious to one of ordinary skill in the art to use the primer of Hirano to bind the addition reaction curable silicone composition of Zhang to a substrate, since Hirano teaches in paragraphs 20 and 25 that the primer imparts advantages regarding adhesiveness and corrosion resistance, while also having improved heat resistance and flexibility. Hirano teaches in paragraph 63 that the substrate can be formed from polyamide, and Zhang discloses in paragraph 380 that polyamide is a suitable substrate to be coated by the addition reaction curable silicone.
With respect to ii), in paragraph 8 Hirano discloses that the primer improves adhesion between a substrate on which an optical semiconductor element is mounted and the cured addition reaction silicone composition that encapsulates the optical semiconductor element, forming an optical member as recited in claim 13.
It would have been obvious to one of ordinary skill in the art to use the protective film of Zhang and Hirano in the optical member of Hirano, since Hirano teaches in paragraph 8 that that the use of the primer composition in the optical member imparts various desirable properties.
In light of the above, claims 1-13 are rendered obvious by Zhang in view of Hirano.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771