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 .
Claim Rejections - 35 USC § 112
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.
Claims 1 - 12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the mass of component (B2)" in the second to last line of the claim. There is insufficient antecedent basis for this limitation in the claim. Claims 2 – 12 are also rejected due to their dependence to claim 1.
Regarding claim 9, the phrase "sheet-like” “and “film-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 - 5, 7, 9 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 4, 10 - 14 and 17 of copending Application No. 18/691,859 (US 2024/0392165). Although the claims at issue are not identical, they are not patentably distinct from each other because both the claimed invention and the copending application discloses a curable organopolysiloxane composition. The difference between the claimed invention and the copending application is with regards to the range of the components overlapping between both applications but are not identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 - 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masuda et al (WO 2020/050167).
With regards to claim 1, Masuda teaches a hot-melt curable organopolysiloxane composition (paragraph 7) comprising:
1 to 50 parts by mass of chain organopolysiloxane having two or more alkenyl groups in a molecule (paragraph 7)
50 to 99 parts by mass of an organopolysiloxane resin containing a siloxane unit (M unit) expressed by R3SiO1/2 (where R mutually independently represents a monovalent organic group) and a siloxane unit (Q unit) expressed by SiO4/2 in a molecule, and in which the molar ratio of M units to 1 mol of Q units is in the range of 0.5 to 2.0 (paragraph 29)
0.1 to 10 parts by mass of a radical polymerization initiator (paragraphs 79 and 80)
0 to 50 parts by mass of one or more type of radical reactive component selected from component (D1) and component (D2) below:
(D1) monofunctional or polyfunctional vinyl monomers (paragraph 27)
(D2) organopolysiloxane compounds having an organic group having at least one of an acryl or methacryl group in a molecule (paragraph 27)
Where the amount of component (b) is 50% mass or more with respect to the total mass of the solid fraction of the composition, and the ratio of the mass of component (b) to the sum of the masses of component (a) and component (D2) is greater than 1.0 (paragraph 7).
With regards to claim 2, the teachings of Masuda are presented above. Additionally, Masuda teaches that at least a portion of component (d) is (D1-1) a monofunctional or polyfunctional vinyl monomer having 8 to 30 carbon atoms (paragraph 27).
With regards to claim 3, the teachings of Masuda are presented above. Additionally, Masuda teaches that ta least a portion of component (d) is (D2-1) a chain organopolysiloxane having at least one silicon atom-bonded functional group RA expressed by
PNG
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121
247
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Greyscale
General Formula (1):
(where R1 mutually independently represents a hydrogen atom, a methyl group, or a phenyl group, and Z represented a divalent organic group which may contain a hetero atom and is bonded to a silicon atom configuring a main chain of polysiloxane represented by *) at an end or in a side chain of a molecular chain (paragraph 29).
With regards to claim 4, the teachings of Masuda are presented above. Additionally, Masuda teaches that at least a portion of component (c) is (C1) a photoradical polymerization initiator and is photocurable by high-energy beam irradiation (paragraph 50).
With regards to claim 5, the teachings of Masuda are presented above. Additionally, Masuda teaches that at least a portion of component (c) is (C2) a thermal radical polymerization initiator and is heat-curable (paragraphs 119 and 120).
With regards to claim 6, the teachings of Masuda are presented above. Additionally, Masuda teaches that the complex viscosity of the pre-cured composition at 80°C is 500,000 Pa·s or less (paragraph 21).
With regards to claim 7, the teachings of Masuda are presented above. Additionally, Masuda teaches a cured product obtained by curing or semi-curing the hot-melt curable organopolysiloxane composition as claimed above (paragraph 7).
With regards to claim 8, the teachings of Masuda are presented above. Additionally, Masuda teaches that the composition is molded into a sheet or film (paragraph 7).
With regards to claim 9, the teachings of Masuda are presented above. Additionally, Masuda teaches a releasable laminate body comprising:
A sheet or film of the hot-melt curable organopolysiloxane composition as stated above (paragraph 7) and
A sheet or film base material provided with a release surface adhered to one surface or both surfaces of the composition sheet or film, and facing the composition sheet or film (paragraph 84)
Where the composition sheet or film can be released from the sheet or film base material with the release surface (paragraphs 7 and 84)
With regards to claim 10, the teachings of Masuda are presented above. Additionally, Masuda teaches a semiconductor device or optical, comprising the cured product as claimed (paragraph 1).
With regards to claim 11, the teachings of Masuda are presented above. Additionally, Masuda teaches a method for manufacturing a sheet or film of the curable hot-melt silicone composition comprising:
A step of applying onto a base material the hot-melt curable organopolysiloxane composition (paragraph 87)
A step or heating and drying the composition applied in step (I) to obtain a composition formed into a sheet or film (paragraph 87)
With regards to claim 12, the tea chings of Masuda are presented above. Additionally, Masuda teaches a method for sealing or adhering a semiconductor device or optical semiconductor (paragraph 1) comprising:
A step of closely contacting the hot-melt curable organopolysiloxane composition to some or all of a base material, which is a semiconductor device, an optical semiconductor device or a precursor thereof (paragraph 89)
A step of curing the hot-melt curable organopolysiloxane composition by one or more curing reactions selected from (i) heat curing reactions and (ii) photocuring reactions by irradiation with a high-energy beam (paragraphs 50 and 87)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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