DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment is made of Provisional application No. 63/353,445, filed on Jun.
17, 2022.
Claims 1-12 are pending.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (WO 2020/232629) in view of Morita et al. (US 5,691,401).
Regarding claim 1: Huang is directed to a curable release coating composition comprising:
(A) An aliphatically unsaturated polyorganosiloxane having two or more alkenyl groups per molecule ([0013])
(B) a crosslinker having two or more silicon bonded hydrogen atoms per molecule in an amount sufficient to provide a molar ratio of silicon bonded hydrogen atoms to alkenyl groups in the curable release coating composition of 0.8:1 to 5:1, i.e. SiH:Vi ratio of 1.35:1-1.9:1 ([0032])
(C) a hydrosilation catalyst in a catalytic amount ([0021])
(D) Huang does not mention particles of a cured organosiloxane composition.
Morita is directed to a curable resin composition containing used in an amount of 0.1-200 parts by weight per 100 parts curable base material, comprising silica coated microparticles of a cured organosiloxane composition having an average particle diameter of 0.1-200 micrometers. One skilled in the art would have been motivated to have included the particle of a cured organisilxane composition of Morita in the composition of Huang since Morita teaches adhesives and coatings are stiff and poorly flexible (col. 1 Morita), and the object of Morita is to add the comprising silica coated microparticles of a cured organosiloxane composition to improve the flexibility and thermal shock resistance of the cured resin obtained by curing the present compositions, and does so without reducing fluidity and moldability (col. 3 ll. 16-20 Morita) and because they provide highly flowable and very flexible and highly thermal shock resistant cured resins (col. 2 ll. 17-22 Morita). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included 0.1-200 parts by weight per 100 parts curable base material, comprising silica coated microparticles of a cured organosiloxane composition having an average particle diameter of 0.1-200 micrometers of Morita in the composition of Huang to arrive at claim 1 of the present invention.
With regards to the claimed amount, Morita is directed to a curable resin composition containing used in an amount of 0.1-200 parts by weight per 100 parts curable base material. Huang teaches a limited amount of filler including silica and discloses 0-30% by weight based on the total weight of the composition ([0040]-[0041] Huang).
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
In the present case, one skilled in the art would have been motivated to have selected an amount of 0.1-5% by weight particles of cured organosiloxane since the amounts at least overlap, and Huang teaches a limited amount of filler including silica. It is well within the skill level of one skilled in the art to have selected an amount of silica within the scope of claim 4. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected an amount of cured organosiloxane powder within the scope of claim 1.
Regarding claim 2: The composition can comprise additives of an anchorage additive or a solvent ([0009] Huang)
Regarding claim 3: Example 1 of Morita comprises (a) an aliphatic unsaturated polyorganosiloxane containing two or more alkenyl groups per molecule and (b) a crosslinker having two or more silicon bonded hydrogen atoms per molecule, wherein (a) is dimethylvinylsiloxy endblocked dimethylpolysiloxane.
Regarding claim 4: Morita teaches the cured organosiloxane powder is used in an amount of 0.1-200 parts by weight per 100 parts curable resin (col. 2 ll 35-40 Morita). Further, Huang teaches a limited amount of filler including silica and discloses 0-30% by weight based on the total weight of the composition ([0040]-[0041] Huang). A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). In the present case, one skilled in the art would have been motivated to have selected an amount of 0.1-2% by weight particles of cured organosiloxane since the amounts at least overlap, and Huang teaches a limited amount of filler including silica. It is well within the skill level of one skilled in the art to have selected an amount of silica within the scope of claim 4. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected an amount of cured organosiloxane powder within the scope of claim 4.
Regarding claim 5: The branched aliphatically unsaturated polyorganosiloxane may be selected from the group consisting of (A-1) Q-branched polyorganosiloxanes, The Q-branched polyorganosiloxane has unit formula (A-1):
(R 13SiO112)a(R2R12SiO112)b(R12SiO2;2)c(SiO4;2)d, where each R1 is
independently a monovalent hydrocarbon group free of aliphatic unsaturation or a
monovalent halogenated hydrocarbon group free of aliphatic unsaturation and each
R2 is an aliphatically unsaturated monovalent hydrocarbon group, subscript a 2:: 0,
subscript b > 0, 15 2:: c 2:: 995, and subscript d is > 0.
and
(A-2) silsesquioxanes, and (A-3) a combination of both (A-1) and (A-2) ([0010] – [0011] Huang).
Regarding claim 7: The crosslinker may by a polyorganohydrogensiloxane crosslinker of unit formula (B-I): (R 13SiO112)2(R12SiO2;2)k(R1 HSiO2;2)m, where R1 is as described above and subscript k 2:: 0, subscript m > 0, and a quantity (m+ k) is 8 to 400. ([0019] Huang).
Regarding claim 8: The hydrosilation catalyst is used in an amount of 1-500 ppm platinum group metal based on combined weight of starting materials ([0022] Huang).
Regarding claim 9: Amorphous silica microparticles are disclosed immobilized on the surface of the cured organosiloxane composition (col. 2 ll. 35-49 Morita).
Regarding claim 10: Morata discloses a method of preparing a release liner comprising a release coating on at least one surface of a substrate, comprising:
Optionally treating at least one surface of a substrate ([0050] Huang)
1) applying the curable release coating composition to the surface of the substrate ([0048])
Optionally 2) removing solvent if present ([0051]) and
3) curing the composition to form the release coating on the surface of the substrate ([0051]).
Regarding claim 11: A release liner comprising the release coating is disclosed.
Regarding claim 12: A haze of less than 3.5 as determined by ASTM D1003 is not mentioned. However, the curable release coating produced in Huang and Morita is substantially identical to the curable release coating produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Huang and Morita suggests a release liner and coating having a haze value determined according to ASTM D1003 within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Contact Information
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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