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 .
Election/Restrictions
Applicant’s election without traverse of Group III (claims 10-17) in the reply filed on July 30, 2026 is acknowledged. Claims 1-9, 18, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
Claim Interpretation
Claims 13 and 14 further limit formula (1) which is an alternative embodiment that is not required to be present in the parent claim. Specifically, claims 13 and 14 depend upon claims 10 and 11 which require that “the crosslinking inhibitor contains at least one of a pyridine ring-containing compound and a phosphorus-containing organic compound” (claim 10, lines 7 and 8) and that “the pyridine ring-containing compound contains a compound represented by…formula (1), and the phosphorus-containing organic compound contains a compound represented by…formula (2)” (claim 11, lines 2-5). In order for claims 13 and 14 to positively further limit the parent claim, they should be amended to require the alternative, i.e., formula (1), that is being further limited. For example, changing the dependency of claims 13 and 14 form “claim 11” to “claim 12”. This same issue is present in claims 16 and 17 with respect to the phosphorous-containing organic compound.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10, 11, and 13-17 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kessel et al. (US Pub 2008/0014632).
Regarding claim 10, Kessel discloses an adhesive composition suitable for use in a laminate having a semiconductor substrate and a support substrate [0004] comprising a multiply-ethylenically unsaturated group containing organopolysiloxane [0026], an organopolysiloxane containing a multiplicity of Si-H bonds [0026], a platinum group metal-based catalyst [0024], and a crosslinking inhibitor which can comprise a pyridine containing compound or organic phosphines or phosphites compound [0030].
Regarding claims 11 and 15, Kessel disclosure of a crosslinking inhibitor containing an organic phosphines reads on formula (2).
Regarding claims 13 and 14, these claims do not require the presence of formula (1) and; thus, are anticipated. See Claim Interpretation section above.
Regarding claims 16 and 17, Kessel disclosure of a crosslinking inhibitor containing an organic phosphines reads on formula (2). One skilled in the art would readily envisaged the claimed species, i.e., alkyl groups having 1 to 12 carbon atoms, based on the generic disclosure in Kessel of organic phosphines. See MPEP 2131.02.
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.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kessel et al. (US Pub 2008/0014632).
This is an alternative rejection to the “readily envisaged” position taken in the anticipation rejection above. Given the scope of the claims and the prior art, the predictability of incorporating alkyl groups having a claimed wide range of 1 to 12 carbon atoms, and the level of ordinary skill in art, it would have been obvious to one skilled in the art to have used a crosslinking inhibitor comprising an organic phosphine having alkyl groups having 1 to 12 carbon atoms based on the generic disclosure in Kessel that organic phosphines are suitable crosslinking inhibitors. See MPEP 2144.08.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kessel et al. (US Pub 2008/0014632) in view of JP-H11269387. An English language machine translation is attached to this Office Action and relied upon in the below rejection.
While Kessel discloses the use of a crosslinking inhibitor which can comprise a pyridine containing compound, Kessel does not disclose the pyridine-containing compound of formula (1). JP ‘632 discloses a similar adhesive material [0044] that comprises a polyorganosiloxane, a platinum catalyst, and a crosslinking inhibitor. The inhibitor can be a nitrogen-containing heterocyclic compound having a 6-membered ring structure include 2,2'-dipyridyl ([0032], [0033]), which reads on formula (1). JP ‘632 discloses that the inclusion of such an inhibitor significantly improves the storage stability of the composition at room temperature. It would have been obvious to one of ordinary skill in the art to have prepared the adhesive composition of Kessel wherein the inhibitor is a 2,2'-dipyridyl, as taught in JP ‘387, motivated by the desire to obtain an adhesive composition that has enhanced storage stability at room temperature.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 5,672,637 and U.S. Patent No. 6,562,180 are cited to show the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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