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 .
The amendments filed 6/2/26 do not overcome the rejection set forth in the office action mailed 3/5/26, which are maintained below. The discussion of the rejection has been modified as necessitated by the amendments.
Claim Rejections - 35 USC § 103
Claims 1-4 and 6-13 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 amended claim 1, and (A2) or (A3) meets the limitations of the second silicone resin of amended claim 1. 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 greater than 50:50, overlapping the range recited in amended claim 1.
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 6-12, noting that a film can comprise multiple layers. Additionally, since the film of Zhang and Hirano meets the compositional limitations of the claims, and has a ratio of first silicone resin to second silicone resin overlapping the claimed range it will possess the properties recited in claims 1-4 in ranges at least overlapping the claimed ranges.
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 1-4 and 6-13 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.
Response to Arguments
Applicant's arguments filed 6/2/26 have been fully considered but they are not persuasive. Applicant argues that Zhang does not disclose the claimed ratio of first to silicone resin to second silicone resin. However, the upper endpoint of the claimed range is “about 50:50”, which will encompass at least some values of greater than 50:50. Zhang discloses that (A1), which corresponds to the first silicone resin, is present in a greater amount than (A2) or (A3), which correspond to the second silicone resin, indicating a range of greater than 50:50, which will therefore overlap the claimed range. Additionally, even if the upper endpoint of the claimed range were amended to remove the “about” language, it is noted that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), See MPEP 2144.05(I). Applicant’s argument is therefore unpersuasive regarding the ratio of first silicone resin to second silicone resin.
Applicant also argues that Zhang does not disclose the claimed modulus range at 25° C. As discussed in the rejection, Zhang and Hirano disclose a film meeting the compositional limitations of the claims, and has a ratio of first silicone resin to second silicone resin overlapping the claimed range, it will possess the properties recited in claims 1-4 in ranges at least overlapping the claimed ranges.
It is noted that the only examples in the specification having a modulus outside the claimed range have ratios of first silicone resin to second silicone resin far outside the claimed ranges, and that ratios slightly above 50:50 (within the scope of both Zhang and the claims) would be expected to have modulus values within the claimed range.
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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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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