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 1-20 are pending.
Election/Restrictions
Applicant’s election of Group I and the following species, claims 1-7, 9, 10, 12-16 in the reply filed on 04/24/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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Claim(s) 8, 11, 17-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/24/26.
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) 10 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 10 recites “a photoradical polymerization initiator and is photo-curable” such that it is unclear if the composition is required to be photocurable or if component C itself is required to be photocurable. It would appear remedial to recite “and the composition is photo-curable.”
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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) 1-5, 7, 9, 10, 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko (U.S. 5,308,887) in view of Mazurek (U.S. 5,514,730) in view of Liu (U.S. 2018/0208799).
Regarding claims 1-5, 7, 9, 10, 12-16, Ko teaches a pressure sensitive adhesive composition that may be applied to a film substrate having a release layer and cured (with semi-curing occurring prior to full curing) which inherently forms a layer with some elastic properties (as in claims 12-16, col. 12, lines 45-65), wherein the composition includes acrylate monomers as in claims 3 and 5 in order to avoid solvent as in claim 7, as well as a silicone pressure sensitive adhesive mixture which may include a mixture of polydiorganosiloxane (inherently linear/chain) having multiple alkenyl groups and an MQ silicone resin (corresponding to the claimed A and B ingredients) as well as a radical UV (high energy) photopolymerization initiator as in claim 10, with amounts of the above ingredients overlapping the claimed ranges of claim 1, and with a viscosity overlapping claim 9 (room temperature is not disclosed but it would have been obvious to use whatever temperature used during application of the coating, including room temperature, when arriving at the disclosed viscosity) (see abstract, col. 3, lines 5-70, col. 6, lines 30-45, col. 7, line 10-65, col. 9, lines 35-55, col. 10, lines 25-30, col. 11, lines 45-60).
Ko does not disclose the amount of MQ resin relative to polydiorganosiloxane as claimed or the M:Q ratio or the D2 ingredient. However, Mazurek is also directed to compositions having alkenyl functional polydiorganosiloxane and MQ ingredients and discloses that the MQ ingredient may be added at an amount relative to the polydiorganosiloxane that results in an amount overlapping the claimed range (see abstract, col. 9, lines 5-15) and further discloses that an organopolysiloxane with an acrylate group (as in the claimed D2 ingredient in claim 4, col. 10, lines 35-60) may be added in an overlapping range in order to provide/adjust the tackiness/finger appeal of the adhesive composition such that it would have been obvious to have used the amount of MQ resin from Mazurek for the MQ resin already disclosed by Ko and to have included the acrylate functional siloxane ingredient from Mazurek at the disclosed amount in Ko in order to provide/adjust the tackiness/finger appeal of the adhesive composition of Ko.
Furthermore, Liu is also directed to tacky compositions with alkenyl functional polydiorganosiloxane and MQ ingredients and discloses that a suitable ratio of M:Q units for achieving such a tacky composition overlaps the claimed range (see abstract, [0084], [0098]) such that it would have been obvious to have used such a ratio from Liu for the MQ ingredient already generally called for in Ko because Liu shows that the ratio is suitable for providing the desired tackiness.
The above amounts disclosed in the prior art overlap the ranges of claim 2.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ko (U.S. 5,308,887) in view of Mazurek (U.S. 5,514,730) in view of Liu (U.S. 2018/0208799), as applied to claim 1 above and further in view of Ogawa (U.S. 2018/0327594).
Regarding claims 6, modified Ko teaches all of the above subject matter but does not disclose a thiol compound however Ko suggest crosslinkers and Ogawa is also directed to a composition with alkenyl functional polydiorganosiloxanes and discloses that a thiol functional polyorganosiloxane may crosslink with the alkenyl groups and allow for full curing and improved mechanical strength benefits such that it would have been obvious to have used such an ingredient from Ogawa in Ko for those benefits ([0043]-[0044], [0071]).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-20 of copending Application No. 18691861 (the copending application) in view of in view of Mazurek (U.S. 5,514,730) in view of Liu (U.S. 2018/0208799). Although the claims at issue are not identical, they are not patentably distinct from each other. Although the copending claims do not disclose the claimed MQ resin, it would be obvious to add such an MQ resin as claimed to provide tackiness for the same reasons set forth above with respect to the teachings of Mazurek and Liu.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-20 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-12 of copending Application No. 18691858 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims have slightly different ranges for amounts but overlap the pending claims and are therefore not patentably distinct. The copending claims will also inherently result in a “pressure sensitive adhesive layer” as in the pending claims based on the overlapping compositions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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.
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, 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).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights