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 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.
Claims 17-31 are pending. Applicant’s previous election of Group I, claims 17-27 and 30-31 still applies and claims 28-29 remain withdrawn.
Response to Amendment
Applicant’s amendment of 03/27/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 31 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 31 recites that the curable composition that forms the tie layer is “compositionally distinct” from the silicone elastomer layer which is not supported.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 31 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 31 recites that the curable composition that forms the tie layer is “compositionally distinct” from the silicone elastomer layer. It is unclear if this means that the curable coating composition that forms the tie layer is distinct from the cured silicone elastomer, of if the curable coating composition that forms the tie layer is distinct from the curable coating composition that forms silicone elastomer.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 17, 20-27 and 30-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (U.S. 2023/0050175) in view of Thompson (U.S. 2007/0287208).
Regarding claims 17, 20-27, and 30-31, Toda teaches a substrate of an electronic device (polyimide as in claims 26 and 27, [0116]-[0117]) comprising a cured silicone elastomer ([0088]) layer formed by hydrosilation curing a Si-H crossinking agent that overlaps the claimed siloxane compound, with the elastomer layer also including a tetralkoxy titanate condensation catalyst (aka a tetralkyl orthotitanate, [0056]), as well as a trialkoxy compound (as in claim 25, [0068]). Toda also teaches that the elastomer layer may form a thin or thick coating, with the thin coating still achieving high adhesive strength and the thicker coatings also providing encapsulating/protective effects (as well as adhesion), as in claim 31, such that the thickness of the coating would have been obvious to adjust, including to values as claimed, as part of optimizing the degree of encapsulating/protective effects ([0116]).
The crosslinking agent overlaps the claimed siloxane compound in more than one way. First, the disclosed g repeating unit corresponds to the claimed m unit, and the j repeating unit corresponds to the claimed n unit when the R’O1/2 unit is bonded to the oxygen of the j repeating unit (i.e., when the residual alkoxy OR’ unit is present in the RSiO3/2 unit, it makes RSiO3/2 into (R)(OR’)SiO2/2, as claimed) ([0041]-[0043]). Second, because the claimed siloxane is a pre-cured ingredient in the claimed composition, while the claims are directed to the final cured product, the limitations related to the siloxane are product by process limitation that carry limited patentable weight. Accordingly, the claimed hydrolyzable OR2 group may be condensed in the final product as claimed, in which case the n unit as claimed would turn into R1SiO(3/2), which matches the j unit of [0041] without having to rely on the disclosed R’O group (and with the disclosed g repeating unit corresponds to the claimed m unit, as explained above). In either case, the disclosed formula does not require any of the claimed p units, as in claim 21, and there is an overlapping ratio of g and j units as in claims 23-24 ([0042], g and j are each between zero and one), and the compound may be cyclic (as in claim 22, [0038]). No water is disclosed for forming the elastomer, as in claim 20, though this is an immaterial product by process limitation anyway.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Toda does not disclose that the above elastomer layer is formed into two different layers. However, Thompson is also directed to electronic devices with a silicone encapsulant layer and teaches that the encapsulant may be split into multiple adjacent layers (disposed on each other) having different functional properties in order to provide an improved overall effect of the multiple layers (e.g., one layer being softer or harder than the other, see abstract, [0016]). Toda also discloses that reinforcing filler may be added to the above elastomer composition to adjust mechanical properties ([0091]) and also discloses a range of hardness for the elastomer/encapsulant ([0114]). Thus, it would have been obvious to have split the silicone encapsulant layer on the electronic device of Toda into multiple layers that have different properties (e.g., mechanical properties/hardness via differing reinforcing filler type/content, but otherwise the same silicone binder) as taught by Thompson to achieve an overall improvement in the combined encapsulant layers (e.g., relieve stress on wires/prevent scratching as taught by Thompson, [0016]). Other differences in properties (e.g., dust puck up, refractive index) would also be obvious as the difference between the two layers ([0016]). Having provided the multiple different adjacent silicone encapsulant/elastomer layers of Toda (via Thompson), one layer would correspond to the claimed tie layer and the other would correspond to the claimed elastomer layer (since the silicone binder in Toda forms is an elastomer and also reads on the claimed limitations for the tie layer, with nothing in the claims to require that the silicone polymer in the tie layer is different from the silicone polymer of the elastomer layer). Furthermore, as explained above, Toda renders obvious adjusting the thickness of the elastomer layer to thin or thick values as claimed. Because Thompson also discloses that the respective different encapsulant layers provide different properties (e.g., relieve stress on wires/prevent scratching), this provides another motivation for adjusting the thickness of each individual encapsulant layer (i.e., to adjust the degree of improved property provided by the respective layers).
The above composition for the elastomer in Toda is inherently capable of improving adhesion between dissimilar adherends “if” disposed therebetween (also explicitly given that the composition adheres to dissimilar substrates that would not otherwise adhere to each other [0028]), as in claim 30.
The curable composition that forms the elastomer in Toda (equivalent to the curable composition that forms the tie and elastomer layers as claimed) is compositionally distinct from the cured elastomer (equivalent to the cured tie and elastomer layers as claimed) because the curable composition still has curable groups which are cured in the final elastomer layer, as in claim 31. The above different filler type/content provides an additional compositional difference.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (U.S. 2023/0050175), in view of Thompson (U.S. 2007/0287208), as applied to claim 1 above, and further in view of Kusunoki (U.S. 2016/0160047).
Regarding claim 18, modified Toda teaches all of the above subject matter, but does not disclose the MW of the crosslinking compound. However, Kusunoki is also directed to silicone compositions that comprise a Si-H and Si-OR containing crosslinking compound and discloses the crosslinking compound in terms of the suitable number of repeating units (as opposed to Toda disclosing the ratio of repeating units), with such a number of repeating units in Kusunoki resulting in a MW that overlaps the claimed range, such that it would have been obvious to have used the number of repeating units from Kusunoki for the crosslinker in modified Toda because Kusunoki discloses that such a number of repeating units is suitable for a Si-H and Si-OR containing crosslinking agent (see abstract, [0032]-[0037]).
Furthermore, the number of repeating units (MW) would have independently been obvious to adjust because it is known that MW is proportional to viscosity (thus making MW obvious to optimize as part of optimizing viscosity of each ingredient in the composition and the corresponding viscosity of the overall composition).
Additionally, MW is considered prima facie obvious to adjust as part of the general conditions the composition. See MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (U.S. 2023/0050175), in view of Thompson (U.S. 2007/0287208), as applied to claim 1 above, and further in view of Thorlaksen (U.S. 2012/0264847).
Regarding claim 19, modified Toda teaches all of the above subject matter, including calling for a titanate condensation catalyst but does not disclose the specific catalyst as claimed, however, Thorlaksen discloses that the claimed catalyst was also known as a suitable condensation catalyst for accelerating the curing of condensation curable siloxane coatings (see abstract, [0104]) such that it would have been obvious to have used such a catalyst for the condensation catalyst in modified Toda because Thorlaksen discloses that it provides the desired condensation catalysis and accelerates curing.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Toda teaches too high of a thickness but only refers to the examples, which Toda is not limited to. As indicated above, the prior art provides multiple reasons for adjusting the thickness of the encapsulant layer such that the claimed range is prima facia obvious.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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