Prosecution Insights
Last updated: April 19, 2026
Application No. 18/549,253

FILM-FORMING COMPOSITIONS

Non-Final OA §103
Filed
Sep 06, 2023
Examiner
HESTER, HOLLEY GRACE
Art Unit
1766
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Ddp Specialty Electronic Materials US 9 LLC
OA Round
1 (Non-Final)
66%
Grant Probability
Favorable
1-2
OA Rounds
3y 3m
To Grant
99%
With Interview

Examiner Intelligence

Grants 66% — above average
66%
Career Allow Rate
33 granted / 50 resolved
+1.0% vs TC avg
Strong +44% interview lift
Without
With
+44.4%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
37 currently pending
Career history
87
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
51.5%
+11.5% vs TC avg
§102
19.4%
-20.6% vs TC avg
§112
22.2%
-17.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 50 resolved cases

Office Action

§103
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 Status Claims 1-15 are pending. Claim Interpretation B ased on the use of “and/or” in claim 2 , claim 2 has been interpreted as further limiting the film-forming composition of claim 1 to having one or more of the following: the composition comprises from 35 to 85% (w/w) of i), based on the weight of i) and ii), the hydroxyl content of i) is from 1.5 to 12.0% (w/w), based on the weight of i), and/or the blend is homogeneous. Based on the use of “and/or” in claim 3 , claim 3 has been interpreted as further limiting the film-forming composition of claim 1 to having one or more of the following: wherein the composition comprises from 15% (w/w) to 65% (w/w) of ii), wherein the composition further comprises more than 35% (w/w) of a water-soluble plasticizer, wherein the film-forming composition forms films on skin that once formed only require water to remove from the skin, wherein the one or more hydroxyl groups are part of a silanol, polyether, hydroxy- substituted hydrocarbyl, or a combination of two or more of a silanol, polyether, and hydroxyl-substituted hydrocarbyl group, and/or wherein the polysiloxane is hydroxy-terminated polydiorganosiloxane ; a hydroxyl-substituted hydrocarbyl-terminated polydiorganosiloxane ; or a polydiorganosiloxane -polyether copolymer. Claim Objections Claim 3 objected to because of the following informalities: In lines 5-7 of claim 3, applicants recite : “ … wherein the one or more hydroxyl groups are a part of a silanol, polyether, hydroxy-substituted hydrocarbyl, or a combination of two or more of a silanol, polyether, and hydroxyl-substituted hydrocarbyl group… ”. It is evident from [p. 0025-0026] of the PG-Publication that these recited groups are part of the polysiloxane having one or more hydroxyl groups . However, this is not evident from the claim language. Appropriate correction is required. Claim 6 is directed towards a film formed from the film-forming composition of claim 1. Claim 7 is directed towards a film composition. Although the film of claim 6 optionally contains a solvent, it is understood that if a solvent was present in the film-forming composition, it is likely not present in the film formed from the composition. Applicant is advised that should claim 6 be found allowable, claim 7 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 8 is objected to because of the following informalities: a typographical error in line 2, “(w/w / )” . Appropriate correction is required. Claim 11 is objected to because of the following informalities: claim 11 is directed toward a wearable product comprising the film-forming composition of claim 1. In light of the claim 11 being directed toward a wearable (film) product, claim 11 has been interpreted as being directed toward a wearable product comprising the film of claim 6 . Appropriate correction is required. 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. Claim(s) 1 - 7 , 10 -11, and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al ( herein ‘Wang’; US 2016 / 0120822 A1) . Regarding claims 1 - 4, 6- 7 , 10 - 11, and 13-15 ; Wang is directed toward a transdermal patch for drug delivery comprising a matrix mixture that is formed from a combination of an acrylic pressure-sensitive adhesive, a silicone pressure-sensitive adhesive, and a polyvinylpyrrolidone [claim 1]. Wang exemplifies a matrix mixture composition comprising 65 wt. % of a silanol containing silicone pressure-sensitive adhesive (BIO-PSA 7-4302) , 15 wt. % of an acrylic pressure sensitive adhesive, and 1 wt. % polyvinylpyrrolidone [ p. 0034; table 1, example 3]. Wang teaches the acrylic pressure sensitive adhesive was prepared from a (meth)acrylate copolymer comprising (meth)acrylamide or an N,N-substituted monomer thereof [p. 0065] . The general disclosure of Wang teaches a matrix mixture composition comprising: (1) the acrylic pressure-sensitive adhesive is present in an amount of about 1-25% by weight in the matrix mixture system, (2) the silicone pressure-sensitive adhesive is present in an amount of about 65-98% by weight in the matrix mixture system, and (3) the polyvinylpyrrolidone is present in an amount of about 1-10% by weight in the matrix mixture system [p. 0009-00011] . Wang teaches polyvinylpyrrolidones are water-soluble [p. 0035]. Wang teaches the polyvinylpyrrolidone used in the matrix mixture is useful as a crystallization inhibitor and is water soluble. Although Wang et al is silent with respect to the ability of the matrix to disintegrate in water. A skilled artisan would reasonably predict that embodiments of the general teachings of Wang would obviously disintegrate in water, resulting in a loss of adhesion to skin, as the compositions of Wang comprise 1-10% by weight of a readily water-soluble polymer . Regarding claim 5; Wang teaches permeation enhancers may be included in the matrix composition, wherein permeation enhancers include organic solvents such as alcohols [p. 0046, 0047]. In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to include an organic alcohol solvent as a permeation enhancer in the matrix composition of Wang. Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (herein ‘Wang’; US 2016/0120822 A1) in further view of Evans et al (herein ‘Evans’; US 2018 / 0002583 A1) The disclosure of Wang is above and is applied here as such. Wang teaches the use of a matrix composition used to prepare a transdermal patch. Wang is silent with respect to further wearable medical devices. Evans teaches a similar silicone acrylic hybrid composition that is used in transdermal drug delivery systems [abstract, p. 0052]. Evans teaches these pressure-sensitive-adhesives are also particularly suited for other electronic monitoring medical device attachment applications that require adhering medical devices to skin [p. 0054, 0060]. In light of this, it would have been obvious to use the composition of Wang to adhere medical device attachments, such as sensors, as Wang teaches it is suitable for use as a pressure-sensitive-adhesive transdermal patch. Claim(s) 1 - 4, 6-11, and 13 -15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pfister (US 5232702 A). Pfister is directed towards a silicone pressure sensitive adhesive composition that is useful in medical devices , wherein the silicone adhesive can be used to prepare a film that can be used as a transdermal drug delivery patch that adheres to human skin [c. 14, ll. 32-35; c. 15, ll. 40-43]. Pfister teaches the silicone pressure sensitive adhesive comprises (i) a silicone fluid, (ii) a silicate resin, and (iii) a cohesive strengthening agent. Pfister exemplifies the use of a resinous copolymeric siloxane having a silicon-bonded hydroxyl content of 2.5 weight percent [c. 9, ll. 64-65; c. 10, ll. 1-10]. Pfister teaches polyvinylpyrrolidones are useful as the cohesive strengthening agent [c. 6, ll. 53-57]. Pfister teaches the silicone pressure sensitive adhesive comprises (i) from about 60 to about 30 parts by weight of a silicon fluid; (ii) from about 40 to about 70 parts by weight of a silicate resin, wherein the total parts of the silicone fluid and silicate resin equal 100 parts; and (iii) from about 1.0 to about 20.0 weight percent , based on the weight of the silicone pressure sensitive adhesive , of a cohesive strengthening agent [c. 2, ll. 50-55; claim 1]. Considering components (i) and (ii) in weight percentage, Pfister teaches (i) from about 24 to 49 wt. %, and (ii) from about 32 to 69 wt. %. Although Pfister is silent with respect to the ability of the pressure sensitive adhesive to disintegrate in water, one having ordinary skill in the art at the time the invention was filed would reasonably predict that embodiments of Pfister would obviously disintegrate in water, resulting in a loss of adhesion to skin, as the general teachings of Pfister include embodiments which comprise 1-20 wt. % polyvinylpyrrolidone, which is known in the art to be a readily water-soluble polymer . Furthermore, regarding the ranges of instant claims 3 and 8, the general teachings of Pfister teach a composition that overlap or lie within the claimed ranges. 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). Conclusion Additional relevant prior art was cited in the Information Disclosure Statement: Emgenbroich et al (WO 2019/072997 A1). The US equivalent is US 2020 / 0315987 A 1. Emgenbroich is directed toward transdermal therapeutic system (TTS) for the transdermal administration of guanfacine [abstract]. Emgenbroich exemplifies a pressure-sensitive adhesive guanfacine-containing coating composition comprising [table 1.1a, ex. 1(a-d)]: - Amine-compatible silicone adhesive (silanol endblocked PDMS in n-heptane); - Polyvinyl caprolactam-polyvinyl acetate-polyethylene graft copolymer; and - Oleylalcohol . Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT HOLLEY GRACE HESTER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (703)756-5435 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Friday 9:00AM -5:00PM . 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 Randy Gulakowski can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 272-1302 . 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. /HOLLEY GRACE HESTER/ Examiner, Art Unit 1766 /MICHAEL J FEELY/ Primary Examiner, Art Unit 1766
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Prosecution Timeline

Sep 06, 2023
Application Filed
Mar 05, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

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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
66%
Grant Probability
99%
With Interview (+44.4%)
3y 3m
Median Time to Grant
Low
PTA Risk
Based on 50 resolved cases by this examiner. Grant probability derived from career allow rate.

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