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 . 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.
Response to Amendment
The Amendment filed 01/20/2026 has been entered. Claims 1-16 remain pending in the application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-5, 9-12, 14, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laferte (U.S PG Pub 20110151253A1) and Sanz (U.S PG Pub 20200095377A1).
Regarding claim 1, Laferte, drawn also to the art of a self-adhesive article and a crosslinkable adhesive composition (Abstract), discloses an adhesive composition containing at least one polymer containing a hydrolysable alkoxysilane group (Abstract), a tackifying resin, and a curing catalyst (Abstract). Laferte does not explicitly disclose a silsesquioxane resin and pyrogenic silica being a part of the adhesive composition.
Sanz, drawn also to the art of polymer composition with a silylated polymer having at least one alkoxysilane group (Abstract; [0001-0002]) with the sealant having good adhesive properties [0006] and discloses the composition being crosslinkable [0262] and an adhesive [0260]. Sanz also discloses a fumed silica being a part of the composition [0171-0174].
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Laferte, with the composition containing silsesquioxane resin and a fumed silica, as disclosed by Sanz, to arrive at the instant invention in order to have a composition showing good mechanical, elastic, and adhesive properties and a composition having good adhesion to concrete substances [0307].
Regarding claim 2, Laferte discloses polymer (A) having formula as claimed ([0017-0029 & 0036-0044] – these paragraphs describe the structure and the constituents of the structure as instantly claimed).
Regarding claims 3-4, Laferte as modified by Sanz has disclosed the instant limitations. Sanz has disclosed polymer (A) of the composition having a structure as claimed [0038-0056]. Sanz also discloses the polymer (A) having a formula as instantly claimed in instant claim 4, as Sanz discloses that R2 is preferably a linear or branched divalent alkylene radical [0048].
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Laferte, with the composition containing the polymer (A) having the formulae as instantly claimed, as disclosed by Sanz, to arrive at the instant invention in order to have a composition showing good mechanical, elastic, and adhesive properties and a composition having good adhesion to concrete substances [0307].
Regarding claim 5, Laferte has disclosed a tackifying resin as instantly claimed [0046-0055].
Regarding claim 9, Sanz has disclosed the silsesquioxane resin having a formulas as instantly claimed (see claim 22 of Sanz).
Regarding claim 10, Laferte discloses the weight ranges for the polymer (A) [0026], tackifying resin (Abstract), and catalyst (Abstract) as is instantly claimed. Laferte as modified by Sanz discloses the weight ranges for the silsesquioxane resin (See Sanz Abstract & claim 28) and fumed silica as claimed (see [0174 & 0177] of Sanz). The courts have held that 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) (MPEP 2144.05(I)).
Regarding claim 11, Laferte discloses a self-adhesive article comprising a support layer coated with the self-adhesive layer, wherein the adhesive layer is a cured adhesive composition as in instant claim 1 (Abstract).
Regarding claim 12, Laferte has also disclosed a process for forming a self-adhesive article as claimed, wherein Laferte has disclosed applying adhesive composition to a carrying surface, then crosslinking at 15C to 200C and then laminating the adhesive composition onto a support layer [0067-0075].
Regarding claim 14, Laferte discloses a PSA adhesive and discloses it being used as a self-adhesive label or tape and that it can be covered with a nonstick protective layer [0080-0081]. Laferte also discloses the use of the PSA to be applied to a product surface [0001-0003], thus Laferte has at the very least implied the adhesive bonding method instantly claimed. In order to bond the self-adhesive label/tape, it would necessarily mean that the nonstick protective layer is removed and then the tape/label is attached to a product surface and a pressure is applied so as to stick it to the surface, as in the case in any conventional tape applying or label applying process.
Regarding claim 16, Sanz discloses the silsesquioxane being in a weight range as claimed (Table 1, composition D – DC3074 being 8 wt%. with DC3074 being a silsesquioxane resin [0280].
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laferte (U.S PG Pub 20110151253A1) and Sanz (U.S PG Pub 20200095377A1) and Yoshioka (JP2014001319A - see machine translation attached).
Regarding claims 6-7, neither Laferte nor Sanz have explicitly disclosed that the fumed silica is hydrophobic or treated with polydimethylsiloxane, however, this is disclosed by Yoshioka.
Yoshioka, drawn also to the art of an adhesive composition with hydrolysable silane groups and alkyl and silane groups (Abstract), discloses fumed silica being used in the composition and discloses the fumed silica to be hydrophobic and treated with polydimethylsiloxane [0024].
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Laferte with the fumed silica being hydrophobic and treated with polydimethylsiloxane, as disclosed by Yoshioka, to have arrived at the instant invention, in order to obtain an adhesive with sufficient adhesive properties in the early stages of curing and sufficient adhesiveness even when immersed in warm water for a long period of time [0008].
Claim(s) 8 & 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laferte (U.S PG Pub 20110151253A1) and Sanz (U.S PG Pub 20200095377A1) and Hirose (U.S Patent 5631082).
Regarding claim 8, neither Laferte nor Sanz have explicitly disclosed the silica having a BET specific surface of at least 10m^2/g, however, Hirose discloses such a silica.
Hirose, drawn also to the art of pressure sensitive adhesive with hydrolysable silicon which forms a siloxane bond (Abstract), discloses a silica powder being used in the composition wherein the silica powder has a BET specific surface between 50 to 380 m^2/g, and that such a silica powder greatly improves the strength of the cured material (Column 8, lines 23-31). The courts have held that 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) (MPEP 2144.05(I)).
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Laferte with the silica powder having a BET specific surface area as disclosed by Hirose, in order to have a silica powder that greatly improves the strength of the cured material.
Regarding claim 13, Laferte has not explicitly disclosed curing at a temperature between 15C to 45C, however, Hirose discloses such a curing temperature.
Hirose, drawn also to the art of pressure sensitive adhesive with hydrolysable silicon which forms a siloxane bond (Abstract), discloses curing the adhesive composition at a temperature between room temperature (i.e. ~25C) to 150C (Column 9, lines 9-11). The courts have held that 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) (MPEP 2144.05(I)).
It would have been obvious to an ordinarily skilled artisan to have modified the teaching of Laferte to provide for a curing temperature as claimed above, to arrive at the instant invention, in order to have a PSA with good flexibility and excellent adhesive performance (Column 9, lines 63-65).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laferte (U.S PG Pub 20110151253A1) and Sanz (U.S PG Pub 20200095377A1), Yoshioka (JP2014001319A - see machine translation attached), and in view of Teboul (U.S PG Pub 20150164196A1).
Regarding claim 15, Yoshioka has disclosed fumed silica with particle diameters between 5 to 10nm, and as such then, Yoshioka has disclosed fumed silica particle diameters that are close to the instantly claimed range. The courts have held 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) (MPEP 2144.05(I)).
In the event the applicant disagrees with the above rationale, it is further known from Teboul, to have fumed silica particle diameters in the range as claimed.
Teboul, drawn also to the art of a film-forming polymer (Abstract), discloses the composition containing fumed silica with a particle diameter between 5 to 200nm [0377].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Laferte, Sanz, and Yoshioka, with the fumed silica having a particle diameter in the range as claimed, as disclosed by Teboul, to arrive at the instant invention, in order to be able to modify the rheology of the medium/adhesive composition [0369].
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Laferte and Sanz are drawn to different adhesive compositions, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as pointed out in the rejection of claim 1, Sanz is also drawn to a sealant composition, i.e. an adhesive composition. Whether the adhesive of Sanz is a PSA or not is not relevant, firstly because the instant claim 1 does not recite a PSA, and secondly, Sanz provides a motivation to modify the adhesive of Laferte, i.e. good mechanical, elastic, and adhesive properties [0307], which an ordinarily skilled artisan would look to, regardless of the specific type of adhesive.
Applicant argues that Sanz does not disclose a silsesquioxane resin weight composition between 2% and 30% by weight.
Examiner does not agree. As pointed out in the rejection of claim 16, Sanz has disclosed composition D, in table 1, with a silsesquioxane resin content of 8 wt.% which falls within the instantly claimed range.
Conclusion
THIS ACTION IS MADE FINAL. 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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746