DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/27/26 has been entered.
Applicants’ amendment has overcome the previous prior art rejections. As such an updated search was conducted and the following new grounds of rejection are made.
Claim Rejections - 35 USC § 102 and 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 to 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 1 770 127.
EP teaches a silicone rubber cured product. See paragraphs 23 - 49 which teach
a composition that contains a component which is cured through hydrosilylation and contains each of the SiH, Si-alkenyl and platinum catalyst as found in claims 1 and 2.
In addition, see paragraph 53 on page 14 in which the third siloxane adhesion promoter that is specifically shown is an epoxy siloxane that is note cured through hydrosilylation. These components are mixed (paragraph 58).
Thus the method in the EP reference is a method in which a component (A) and (B) are mixed. This anticipates the method in claims 1 and 2.
Note that the language “can achieve debonding…” is a future intended use claim that does not lend any patentable distinction to the claims.
Regarding the term “adhesive” note that paragraph 51 teaches the composition adhered to substrates such that it has adhesive properties. Also note that the discovery of a new and unobvious property and use does not overcome anticipation when the claimed composition is known.
For claim 3, note that the specific siloxane in paragraph has 2 epoxy groups
while “n” can be from 0 to 200, with a preferred range of from 4 to 20. This range (4 to 20) results in a polysiloxane having a molecular weight range of approximately 655 to 1840 having 2 epoxy groups and thus having an epoxy value of .1 to .3. Since this is a preferred range in the EP reference the skilled artisan would have anticipated an “n” value within this range and thus anticipated an epoxy value within the range of claim 3.
Claim 1 and 3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Schwartz et al. 2021/0163802.
Schwartz et al. teach dual curing resin composition that has adhesive properties. Of particular relevance to this rejection, please see the working examples as shown by Tables 1 and 2 and paragraphs 103 to 105 in which a silsesquioxane having methacryl-oxy groups (which can be cured through hydrosilylation) is mixed with Silres HP 1250, a siloxane containing epoxy groups and no groups that cure through hydrosilylation.
Note that “which is cured through hydrosilylation” is a future intended use clause that does not provide any patentable weight to these claims that would distinguish a siloxane that can be cured as such from those claimed.
In this manner claim 1 is anticipated.
For claim 3 note that the epoxy value of this siloxane (which has a molecular weight around 660 g/m) is 3 which falls within the claimed range.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz et al., 2021/0163802.
While the bulk of the teachings in Schwartz et al. focus on a silsesquioxane that
undergoes UV curing, please see paragraph 19 which teaches that other thermal cure systems can be used including Pt catalyzed hydrosilylation cure between vinyl and hydridosilane species. One having ordinary skill in the art would immediately recognize that such a system will include both vinyl containing siloxanes and SiH containing silox-anes in addition to the Pt catalyst. Since the siloxanes (a1) and (a2) include all siloxane types Q, M, T and D it naturally follows that any vinyl containing siloxane and SiH containing siloxane selected by the skilled artisan as a thermal cure system will meet the requirements of this claim. In this manner the skilled artisan would have found a method containing this composition to have been obvious.
Claims 1 to 3 are rejected under 35 U.S.C. 103 as being unpatentable over Pesch et al. 2001/0011117 in view of Buekers et al. 5,623,026.
Pesch et al. teach a silicone rubber composition that has good adhesion to sub-
strates. See for instance paragraph 2. This contains a mixture of an alkenyl containing siloxane, an SiH siloxane and a Pt catalyst and meets the requirements of component (A) in claims 1 and 2. In addition this composition contains an epoxy group siloxane. See paragraphs 7 to 34 and 37. Specifically note that paragraph 37 refers to US 5,623,026 (Buekers et al.) as teaching useful epoxy containing siloxanes.
Buekers et al. teach epoxysiloxanes as shown in Formula 1, column 1. These siloxanes do not react in a hydrosilylation reaction and meet the requirement of claimed (B).
Given the teaching in Pesch et al. that one can use the siloxanes in Buekers et al., one having ordinary skill in the art would have been motivated to use such an epoxy siloxane in the composition of Pesch et al. with the expectation of obtaining useful and predictable results. In this manner claims 1 and 2 are rendered obvious.
For claim 3, note that the amount of epoxy groups and the molecular weight of the siloxanes in Buekers et al. embrace siloxanes that include epoxy values as claimed. See specifically those found in column 8, lines 5 to 10. From this one having ordinary skill in the art would have found the selection of an epoxy siloxane meeting claim 3 to have been within routine experimentation or optimization and thus would have found the limitation of claim 3 obvious.
Claims 1 to 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Koellnberger et al. 9,034,139 in view of Pesch et al. and Buekers et al.
Koellnberger et al. teach a temporary crosslinkable siloxane adhesive. See col.
3, lines 22 to 28. Column 5, lines 1 to 18, specifically teaches an addition crosslinking composition containing alkenyl polysiloxanes, SiH siloxanes and Pt catalyst. See also the working examples in columns 13 and 14. This meets component (A) in both of claims 1 and 2.
To this composition an adhesion promoter may be added and mixed. See col-umn 5, lines 51, which specifically refers to EP 0875536. The skilled artisan, recogniz-ing that the EP reference is not in English, would have turned to the US equivalent thereof for a teachings of appropriate and useful epoxy functional siloxanes. This leads the skilled artisan to the teachings in Pesch et al., the US equivalent and cited above.
Again, Pesch et al. specifically refer to 5,623,026 (Buekers et al.) as teaching useful epoxy containing siloxanes. The Examiner relies on the obviousness noted supra as it currently applies to this rejection regarding the obviousness of using the epoxy sil-oxanes of Buekers et al. in the composition of Pesch et al. and thus, by extension, using the epoxy siloxanes of Buekers et al. in the method of Koellnberger et al.
In this manner each of claims 1 to 3 are rendered obvious.
For claim 5, see the method used in the working examples, for instance column 14, lines 32 to 42. See also the bottom of column 11. This shows the claimed method steps. Note that the silicon wafer in column 14, line 37, meets the requirement of a support substrate that allows passage of infrared light.
Claims 6 to 8 are rejected under 35 U.S.C. 103 as being unpatentable over Koellnberger et al. 9,034,139 in view of Pesch et al. and Buekers et al., and further in view of Simandl et al. 7,896,053.
The teachings of Koellnberger et al. in view of Pesch et al. and Buekers et al. are
noted supra. While Koellnberger et al. refer to the composition as temporary and that the substrates may be debonded, this does not teach a specific method for doing so. See the Background of the Invention, such as in column 3, lines 5 to 14.
Simandl et al. teach debonding adhesives such as silicone adhesives through infrared irradiation. See column 3, lines 3 to 45. This is disclosed as being an alternative to heat and mechanicals means, as both can damage the substrate. See columns 1 and 2.
As such one having ordinary skill in the art would have found it obvious to use infrared radiation as a means of debonding the adhesive in Koellnberger et al. in an effort to take advantage of the known ability and benefits thereof, as per Simandl et al. In this manner claim 6 is rendered obvious.
For claims 7 and 8, see the rationale of record on page 4 of the office action dated 1/14/25, as it presently applies.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
2/7/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765