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 .
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 1-8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (U.S. Patent Application Publication No. 2018/0044566 A1) in view of Benson (U.S. Patent No. 5,726,256, cited in IDS submitted November 21, 2023) and Nitzsche et al. (U.S. Patent No. 2,860,083).
Regarding claim 1, Brown discloses a method for fabricating a laminate article ([0059] of Brown, laminates prepared), the method comprising: (1) combining, under conditions to effect condensation reaction, starting materials comprising (P) a bis-hydroxyl-terminated polydiorganosiloxane (Abstract of Brown, polydiorganosiloxane which combined with MQ silicone resin; [0031] of Brown, polydiorganosiloxane can be hydroxyl terminated; [0035] of Brown, polydiorganosiloxane and MQ resin reacted with condensation catalyst); (R) a hydroxyl-functional polyorganosilicate resin (Abstract of Brown, MQ silicone resin which is combined with the polydiorganosiloxane); (S) a solvent; and optionally (N) a neutralizer (component is optional and therefore not required); thereby producing a reaction mixture ([0035] of Brown, reaction mixture of polydiorganosiloxane and MQ silicone resin provided); and (2) adding (C) a condensation reaction catalyst to the reaction mixture, thereby producing a catalyzed reaction mixture ([0035] of Brown, condensation catalyst added to reaction mixture); (3) heating the catalyzed reaction mixture ([0035] of Brown, reaction mixture heated) and removing water ([0052] of Brown, water removed during condensation reaction using a trap); optionally (4) recovering a condensation reaction product of (P) and (R) (step is optional and therefore not required); optionally (5) adding up to 4 weight %, based on combined weights of (R) and (P), of (X) a peroxide crosslinking agent (step is optional and therefore not required), thereby forming a silicone pressure sensitive adhesive composition ([0035] of Brown, pressure sensitive adhesive formed); optionally (6) treating a surface of a backing substrate (step is optional and therefore not required); (7) coating the silicone pressure sensitive adhesive composition on the surface of the backing substrate ([0059] of Brown, adhesive coated onto PET film), (8) drying the silicone pressure sensitive adhesive composition ([0059] of Brown, coated substrate dried), (9) curing the silicone pressure sensitive adhesive composition to form a silicone pressure sensitive adhesive having a surface adhered to the surface of the backing substrate ([0049] of Brown, adhesive cured by drying), where the silicone pressure sensitive adhesive layer further comprises an opposing surface opposite the surface of the backing substrate ([0059] of Brown, dried adhesive coated onto PET film would necessarily have an opposing surface opposite the film).
Brown does not specifically disclose that: starting material (P) (i.e., the polydiorganosiloxane) is present in an amount of > 20.5 weight % based on combined weights of starting materials (P) and (R); that starting material (R) (i.e., the MQ silicone resin) is present in an amount < 79.5 weight %, based on combined weights of starting materials (P) and (R); and that starting materials (R) and (P) and are present in a weight ratio (R)/(P) of 2.27/1 to < 3.88/1. Brown, however, discloses that the weight ratio of the MQ resin (R) to the polydiorganosiloxane (P) can be 0.5:1 to 4:1 ([0030] of Brown). Brown therefore clearly teaches a weight ratio range R:P (i.e., 0.5:1 to 4:1), a wt% R (i.e., 33-80 wt%) and a wt% P (20-67 wt%) that overlap with the ranges recited in claim 1 (i.e., R:P of 2.27-3.8, wt% R of <79.5 wt% and wt% P of >20.5 wt%) which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Brown also does not specifically disclose that the catalyzed reaction mixture heated is at a temperature of > RT to 145 °C. Brown, however, discloses that the adhesive can be can be cured by heating up to a temperature of 300 °C ([0049] of Brown). Brown therefore clearly teaches a heating temperature range (i.e., up to 300 °C) that overlaps with that recited in claim 1 (i.e., > RT to 145 °C) which would render the claimed temperature range obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Brown also does not specifically disclose that the bis-hydroxyl-terminated polydiorganosiloxane (P) has a weight average molecular weight of 10,000 g/mol to < 200,000 g/mol measured by GPC or that the the hydroxyl-functional polyorganosilicate resin (i.e., the MQ silicone resin) has a weight average molecular weight of 21,000 g/mol to 30,000 g/mol measured by GPC. Benson, however, discloses a method of producing a silicone pressure sensitive adhesive comprising reacting a hydroxy containing organopolysiloxane resin (i.e., an MQ resin) and a hydroxyl containing polydiorganosiloxane (Abstract of Benson) in the presence of a condensation catalyst (5:1-4 of Benson). According to Benson, suitable MQ resins have a Mw of 14,600 (Resin A, 6:14-19 of Benson), a Mw of 29,900 (Resin B, 6:20-25 of Benson), a Mw of 26,290 (Resin C, 6:26-30 of Benson) or a Mw of 17,810 (Resin D, 6:32-36 of Benson) and suitable OH terminated polydimethylsiloxanes have a Mw of 174,700 (Polymer A, 6:37-41 of Benson), a Mw of 138,600 (Polymer B, 6:42-46 of Benson), a Mw of 101,200 (Polymer C, 6:47-51 of Benson), a Mw of 68,470 (Polymer D, 6:52-56 of Benson), and a Mw of 37,950 (Polymer E, 6:57-61 of Benson). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use the MQ resins and the OH terminated polydimethylsiloxanes of Benson as the starting materials in the method of Brown since Benson establishes that it was known to use such starting materials to prepare silicone pressure sensitive adhesives. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Brown also does not disclose: optionally (10) treating a surface of a silicone rubber article; and (11) adhering the opposing surface of silicone pressure sensitive adhesive and the surface of the silicone rubber article. Moreover, Brown discloses adhering the silicone PSA to any known solid material ([0049] of Brown) but does not specifically disclose adhering the PSA to silicone rubber. Nitzsche, however, discloses bonding silicone rubber to other substrate materials using a silicone based adhesive comprising a polydiorganopolysiloxane and an MQ resin (2:7-25 of Nitszche). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to adhere the silicone adhesive in the modified process to silicone rubber since Nitsche establishes that it was known to use such adhesive to bond silicone rubber (2:7-25 of Nitszche). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Regarding claim 2, Benson discloses that the starting material (P), the bis-hydroxyl-terminated polydiorganosiloxane, has formula
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where each R1 is an independently selected alkyl group of 1 to 6 carbon atoms (6:37-62 of Benson, polydiorganosiloxane is OH-end blocked PDMS wherein R1 is a methyl group with 1 carbon atom) but does not specifically disclose that subscript a represents average number of difunctional siloxane units per molecule, and 250 < a <3,000 (i.e., polymers having a molecular weight of about 19,000 to about 222,000). Benson, however, discloses OH-end blocked PDMS polymers which would have an average number of difunctional siloxane units per molecule a in the claimed range (i.e., Polymers A-E, 6:37-62 of Benson, which have Mn values of 21,490 to 90,310).
Regarding claim 3, Benson does not specifically disclose that the starting material (R), the hydroxyl-functional polyorganosilicate resin, has unit formula (R13SiO1/2)b(SiO4/2)c(HO1/2)d, where each R1 is an independently selected alkyl group of 1 to 6 carbon atoms, subscripts b and c represent mole fractions of monofunctional and tetrafunctional units, respectively, and subscripts b and c have values such that 0.4 < b < 0.5, 0.5 <c< 0.6, and a quantity (b + c) = 1; subscript d represents a quantity of hydroxyl groups in the resin, and subscript d has a value sufficient to provide the resin with a hydroxyl content of 2 weight % to 5 weight % . Benson, however, discloses MQ resins having amounts and proportions of (R13SiO1/2), (SiO4/2) and (HO1/2) which overlap the claimed vales of b, c and d (2:66-3:3 of Benson). Benson therefore clearly teaches MQ resins having b, c and d values that overlap with those recited in claim 3 which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Regarding claims 4 and 5, Brown does not specifically disclose that (R)/(P) is 2.9/1 to < 3.88/1 as recited in claim 4 or that (R)/(P) is 2.9/1 to 3/1 as recited in claim 5. Brown, however, discloses that the weight ratio of the MQ resin (R) to the polydiorganosiloxane (P) can be 0.5:1 to 4:1 ([0030] of Brown). Brown therefore clearly teaches a weight ratio range R:P (i.e., 0.5:1 to 4:1) that overlaps with the ranges recited in claims 4 and 5 (i.e., R:P of 2.9/1 to < 3.88/1 or R:P of 2.9/1 to 3/1) which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Regarding claim 6, Brown discloses that (N) the neutralizer is present and, the neutralizer comprises a silyl phosphate ([0048] of Brown, adhesive composition comprises a silyl phosphate as a stabilizer).
Regarding claim 7, Brown discloses that (C) the condensation reaction catalyst is an acid ([0033] of Brown).
Regarding claim 8, Brown does not specifically disclose that step (5) is present, and (X) the peroxide crosslinking agent comprises benzoyl peroxide. Benson, however, discloses crosslinking the pressure sensitive adhesive by incorporating a peroxide such as benzoyl peroxide into the compositions (5:51-58 of Benson). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to incorporate a peroxide into the modified adhesive compositions. One of skill in the art would have been motivated to do so in order to allow the compositions to be crosslinked as taught by Benson (5:51-58 of Benson).
Regarding claim 12, Brown discloses a laminate article prepared by the method of claim 1 ([0059] of Brown, adhesive laminate).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Brown in view of Benson and Nitzsche as applied to claim 1 above and further in view of Zupancich et al. (U.S. Patent Application Publication No. 2012/0322954 A1).
Regarding claim 10, Brown does not disclose that step (10) is present, and step (10) comprises cleaning the surface of the silicone rubber with an alcohol Zupancich, however, discloses a method of activating silicone rubber surfaces to improve adhesion comprising cleaning the surface with an alcohol (Abstract, [0038]-[0039] of Zupancich). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to clean the surface of the silicone rubber with an alcohol in the modified process. One of skill in the art would have been motivated to do so in order to improve adhesion as taught by Zupancich (Abstract, [0038]-[0039] of Zupancich).
Claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Brown in view of Benson and Nitzsche as applied to claim 1 above and further in view of Mizuno et al. (U.S. Patent Application Publication No. 2010/0285312 A1).
Regarding claim 9, Brown does not disclose that step (6) is present, and step (6) comprises applying a primer to the surface of the backing substrate. Mizuno, however, discloses forming a silicon pressure sensitive adhesive composition on a sheet form substrate wherein the substrate has been subjected to a primer treatment to improve adhesion (Abstract, [0110] of Mizuno). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to apply a primer to the backing substrate in the modified method. One of skill in the art would have been motivated to do so in order to improve adhesion to the substrate as taught by Mizuno (Abstract, [0110] of Mizuno).
Regarding claim 11, Brown does not disclose that, in step (11), the silicone rubber has a durometer of 30 to 50. Mizuno, however, discloses a silicon rubber laminate wherein the silicon rubber has a durometer in the range of 30 to 90 (Abstract, [0060] of Mizuno). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use a silicon rubber having a durometer in the range of 30 to 90 in the modified method since Mizuno establishes that it was known to form laminates of such a rubber material. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable. Mizuno clearly teaches a durometer range (i.e., 30-90) that overlaps with that recited in claim 11 (i.e., 30 to 50) which would render the claimed durometer range obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Brown in view of Benson and Nitzsche as applied to claim 1 above and further in view of Mizuno and Zupancich.
Regarding claim 13, Brown does not disclose that the backing substrate in step (7) comprises a release liner, and the method further comprises: removing the release liner after step (9); optionally (12) treating a surface of a second silicone rubber article; and (13) adhering the surface of the silicone pressure sensitive adhesive layer to the surface of the second silicone rubber article. Mizuno, however, discloses forming the adhesive on a paper or plastic film that has been subjected to a release treatment ([0110] of Mizuno), removing the release film ([0121] of Mizuno), and press bonding the film to an adherend ([0121] of Mizuno). Zupancich discloses bonding silicon rubber to itself (i.e., bonding two silicon rubber adherends to one another) ([0010] of Zupancic). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention form the adhesive in the modified method on a release liner, bond the adhesive to a silicon rubber article, remove the release liner and bond the adhesive to a second silicon rubber article since Mizuno and Zupancich establish that it was known to do so. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Brown in view of Benson.
Regarding claim 1, Brown discloses a method for fabricating a laminate article ([0059] of Brown, laminates prepared), the method comprising: (1) combining, under conditions to effect condensation reaction, starting materials comprising (P) a bis-hydroxyl-terminated polydiorganosiloxane (Abstract of Brown, polydiorganosiloxane which combined with MQ silicone resin; [0031] of Brown, polydiorganosiloxane can be hydroxyl terminated; [0035] of Brown, polydiorganosiloxane and MQ resin reacted with condensation catalyst); (R) a hydroxyl-functional polyorganosilicate resin (Abstract of Brown, MQ silicone resin which is combined with the polydiorganosiloxane); (S) a solvent; and optionally (N) a neutralizer (component is optional and therefore not required); thereby producing a reaction mixture ([0035] of Brown, reaction mixture of polydiorganosiloxane and MQ silicone resin provided); and (2) adding (C) a condensation reaction catalyst to the reaction mixture, thereby producing a catalyzed reaction mixture ([0035] of Brown, condensation catalyst added to reaction mixture); (3) heating the catalyzed reaction mixture ([0035] of Brown, reaction mixture heated) and removing water ([0052] of Brown, water removed during condensation reaction using a trap); optionally (4) recovering a condensation reaction product of (P) and (R) (step is optional and therefore not required); optionally (5) adding up to 4 weight %, based on combined weights of (R) and (P), of (X) a peroxide crosslinking agent (step is optional and therefore not required), thereby forming a silicone pressure sensitive adhesive composition ([0035] of Brown, pressure sensitive adhesive formed); optionally (6) treating a surface of a backing substrate (step is optional and therefore not required); (7) coating the silicone pressure sensitive adhesive composition on the surface of the backing substrate ([0059] of Brown, adhesive coated onto PET film), (8) drying the silicone pressure sensitive adhesive composition ([0059] of Brown, coated substrate dried), (9) curing the silicone pressure sensitive adhesive composition to form a silicone pressure sensitive adhesive having a surface adhered to the surface of the backing substrate ([0049] of Brown, adhesive cured by drying), where the silicone pressure sensitive adhesive layer further comprises an opposing surface opposite the surface of the backing substrate ([0059] of Brown, dried adhesive coated onto PET film would necessarily have an opposing surface opposite the film).
Brown does not specifically disclose that: starting material (P) (i.e., the polydiorganosiloxane) is present in an amount of > 20.5 weight % based on combined weights of starting materials (P) and (R); that starting material (R) (i.e., the MQ silicone resin) is present in an amount < 79.5 weight %, based on combined weights of starting materials (P) and (R); and that starting materials (R) and (P) and are present in a weight ratio (R)/(P) of 2.27/1 to < 3.88/1. Brown, however, discloses that the weight ratio of the MQ resin (R) to the polydiorganosiloxane (P) can be 0.5:1 to 4:1 ([0030] of Brown). Brown therefore clearly teaches a weight ratio range R:P (i.e., 0.5:1 to 4:1), a wt% R (i.e., 33-80 wt%) and a wt% P (20-67 wt%) that overlap with the ranges recited in claim 1 (i.e., R:P of 2.27-3.8, wt% R of <79.5 wt% and wt% P of >20.5 wt%) which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Brown also does not specifically disclose that the reaction mixture is heated at a temperature of > RT to 145 °C. brown, however, discloses that the reaction can be heated up to a temperature of 300 °C ([0049] of Brown). Brown therefore clearly teaches a heating temperature range (i.e., up to 300 °C) that overlaps with that recited in claim 1 (i.e., > RT to 145 °C) which would render the claimed temperature range obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Brown also does not specifically disclose that the bis-hydroxyl-terminated polydiorganosiloxane (P) has a weight average molecular weight of 10,000 g/mol to < 200,000 g/mol measured by GPC or that the hydroxyl-functional polyorganosilicate resin (i.e., the MQ silicone resin) has a weight average molecular weight of 21,000 g/mol to 30,000 g/mol measured by GPC. Benson, however, discloses a method of producing a silicone pressure sensitive adhesive comprising reacting a hydroxy containing organopolysiloxane resin (i.e., an MQ resin) and a hydroxyl containing polydiorganosiloxane (Abstract of Benson) in the presence of a condensation catalyst (5:1-4 of Benson). According to Benson, suitable MQ resins have a Mw of 14,600 (Resin A, 6:14-19 of Benson), a Mw of 29,900 (Resin B, 6:20-25 of Benson), a Mw of 26,290 (Resin C, 6:26-30 of Benson) or a Mw of 17,810 (Resin D, 6:32-36 of Benson) and suitable OH terminated polydimethylsiloxanes have a Mw of 174,700 (Polymer A, 6:37-41 of Benson), a Mw of 138,600 (Polymer B, 6:42-46 of Benson), a Mw of 101,200 (Polymer C, 6:47-51 of Benson), a Mw of 68,470 (Polymer D, 6:52-56 of Benson), and a Mw of 37,950 (Polymer E, 6:57-61 of Benson). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use the MQ resins and the OH terminated polydimethylsiloxanes of Benson as the starting materials in the method of Brown since Benson establishes that it was known to use such starting materials to prepare silicone pressure sensitive adhesives. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Regarding claim 16, Benson discloses that the starting material (P), the bis-hydroxyl-terminated polydiorganosiloxane, has formula
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where each R1 is an independently selected alkyl group of 1 to 6 carbon atoms (6:37-62 of Benson, polydiorganosiloxane is OH-end blocked PDMS wherein R1 is a methyl group with 1 carbon atom) but does not specifically disclose that subscript a represents average number of difunctional siloxane units per molecule, and 250 < a <3,000 (i.e., polymers having a molecular weight of about 19,000 to about 222,000). Benson, however, discloses OH-end blocked PDMS polymers which would have an average number of difunctional siloxane units per molecule a in the claimed range (i.e., Polymers A-E, 6:37-62 of Benson, which have Mn values of 21,490 to 90,310).
Claims 15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Brown in view of Benson as applied to claim 14 above and further in view of Nitzsche.
Regarding claim 15, Brown does not disclose: optionally (10) treating a surface of a silicone rubber article; and (11) adhering the opposing surface of silicone pressure sensitive adhesive and the surface of the silicone rubber article. Moreover, Brown discloses adhering the silicone PSA to any known solid material ([0049] of Brown) but does not specifically disclose adhering the PSA to silicone rubber. Nitzsche, however, discloses bonding silicone rubber to other substrate materials using a silicone based adhesive comprising a polydiorganopolysiloxane and an MQ resin (2:7-25 of Nitszche). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to adhere the silicone adhesive in the modified process to silicone rubber since Nitsche establishes that it was known to use such adhesive to bond silicone rubber (2:7-25 of Nitszche). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Regarding claim 17, Benson does not specifically disclose that the starting material (R), the hydroxyl-functional polyorganosilicate resin, has unit formula (R13SiO1/2)b(SiO4/2)c(HO1/2)d, where each R1 is an independently selected alkyl group of 1 to 6 carbon atoms, subscripts b and c represent mole fractions of monofunctional and tetrafunctional units, respectively, and subscripts b and c have values such that 0.4 < b < 0.5, 0.5 <c< 0.6, and a quantity (b + c) = 1; subscript d represents a quantity of hydroxyl groups in the resin, and subscript d has a value sufficient to provide the resin with a hydroxyl content of 2 weight % to 5 weight % . Benson, however, discloses MQ resins having amounts and proportions of (R13SiO1/2), (SiO4/2) and (HO1/2) which overlap the claimed vales of b, c and d (2:66-3:3 of Benson). Benson therefore clearly teaches MQ resins having b, c and d values that overlap with those recited in claim 3 which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Regarding claims 18 and 19, Brown does not specifically disclose that (R)/(P) is 2.9/1 to < 3.88/1 as recited in claim 18 or that (R)/(P) is 2.9/1 to 3/1 as recited in claim 19. Brown, however, discloses that the weight ratio of the MQ resin (R) to the polydiorganosiloxane (P) can be 0.5:1 to 4:1 ([0030] of Brown). Brown therefore clearly teaches a weight ratio range R:P (i.e., 0.5:1 to 4:1) that overlaps with the ranges recited in claims 4 and 5 (i.e., R:P of 2.9/1 to < 3.88/1 or R:P of 2.9/1 to 3/1) which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Brown in view of Benson and Nitzsche as applied to claim 15 above and further in view of Mizuno.
Regarding claim 20, Brown does not disclose that, in step (11), the silicone rubber has a durometer of 30 to 50. Mizuno, however, discloses a silicon rubber laminate wherein the silicon rubber has a durometer in the range of 30 to 90 (Abstract, [0060] of Mizuno). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use a silicon rubber having a durometer in the range of 30 to 90 in the modified method since Mizuno establishes that it was known to form laminates of such a rubber material. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable. Mizuno clearly teaches a durometer range (i.e., 30-90) that overlaps with that recited in claim 11 (i.e., 30 to 50) which would render the claimed durometer range obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Conclusion
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746