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 .
Withdrawn Rejection
The objections to the claims 1-2 and 5, made of record in the office action mailed on 12/8/2025, page 2 have been withdrawn due to Applicant’s amendment in the response filed on 03/05/2026.
The 103 rejections to the claims 1-10, 12, 14-16 and 18, made of record in the office action mailed on 12/8/2025, page 3 have been withdrawn due to Applicant’s amendment in the response filed on 03/05/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In claim 18, which recites “in the composition, a weight ratio between the reactive silicone-based resin and the inorganic particles having the reactive functional group is 50:50 to 80:20” fails to derive support in the originally filed specification. Applicant has failed to provide a support in the response and Examiner did not find any support in the specification.
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.
Claim(s) 1-10, 12, 14-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2020/0157395) in view of Han et al. (US 2020/0208032) and Bruce et al. (US 2020/0216668).
Regarding claims 1-7, 9-10, 15-16 and 18 Liu discloses silicone optically clear adhesives compositions are thermal, UV curable, or UV-moisture dual curable. The silicone optically clear adhesives are suitable for sealing and bonding cover glasses, touch panels, diffusers, rigid compensators, heaters, and flexible films, polarizers and retarders in the optical display devices, and are particularly suitable in flexible and foldable displays (abstract). Liu discloses adhesive comprising reactive silicone resin (para 0070), thermally curing catalyst in an amount of 0.001-5 wt% (para 0077).
However, Liu fails to disclose that the silicone adhesive composition comprises non-reactive NQ type silicone based resin and an inorganic particles having a reactive functional group and where the silicone adhesive film has the claimed peel strength.
Whereas, Han discloses silicone-based adhesive protective film and an optical member including the same are provided. A silicone-based adhesive protective film is formed of a composition including a silicone resin, a crosslinking agent, and a curing catalyst (abstract). The composition for silicone-based adhesive protective films may further include an anchoring agent. The anchoring agent can further increase peel strength of the silicone-based adhesive protective film. The anchoring agent may include any of typical siloxane compounds known to those skilled in the art. In an embodiment, the anchoring agent may include at least one selected from the group of 3-glycidoxypropyltrimethoxysilane, and 3-(meth)acryloxypropyltrimethoxysilane (para 0061-0062).
Whereas, Bruce discloses composition comprises (A) a filler in an amount of from 10 to 90 wt. The composition also comprises (B) a polymer in an amount of from 10 to 90 wt. %, wherein the (B) polymer is selected from polyolefins, polyamides, polyesters, or combinations thereof. Further, the composition comprises (C) an organopolysiloxane in an amount of from greater than 0 to 10 wt. %; the (C) organopolysiloxane having at least one silicon-bonded hydroxyl group and a viscosity of from 1,000 to 60,000 mPa.Math.s at 25° C (abstract). The (A) filler may comprise a non-reactive silicone resin. For example, the (A) filler may comprise a non-reactive MQ silicone resin. As known in the art, M siloxy units are represented by R.sup.0.sub.3SiO.sub.1/2, and Q siloxy units are represented by SiO.sub.4/2, where R.sup.0 is an independently selected substituent. Such non-reactive silicone resins are typically soluble in liquid hydrocarbons such as benzene, toluene, xylene, heptane and the like or in liquid organosilicon compounds such as a low viscosity cyclic and linear polydiorganosiloxanes. The molar ratio of M to Q siloxy units in the non-reactive silicone resin may be from 0.5/1 to 1.5/1 (para 0021).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include 3-glycidoxypropyltrimethoxysilane and non-reactive MQ silicone resin as taught by Han and Bruce respectively in the silicone adhesive composition of Liu motivated by the desire to increase peel strength, improved dispersiblity and to have properties of flexibility, heat and weather resistance.
As Liu in view of Han and Bruce discloses silicone based adhesive composition comprising a reactive silicone based resin, MQ type silicone resin, 3-glycidoxypropyltrimethoxysilane (inorganic particles having a functional group) and catalyst as presently claimed, it therefore would be obvious that silicone adhesive film would intrinsically have the claimed peel strength when measured on a surface of an anti-fingerprint layer when anti-fingerprint layer would intrinsically have a water contact angle of 95C or more at 25C.
With respect to weight ratio between the reactive silicone-based resin and the inorganic particles having the reactive functional group is 50:50. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claim 8, As Han discloses 3-glycidoxypropyltrimethoxysilane identical to the one used by the Applicant in the specification, it therefore would be obvious that 3-glycidoxypropyltrimethoxysilane would intrinsically have a refractive index of 1.3-2.
Regarding claim 12, Liu discloses both reactive siloxane polymers, they are polydiorganosiloaxane polymers having α,ω-endcapped OH, H or alkoxy groups. In a preferred embodiment, polydiorganosiloaxane polymers are polydialkylsiloxane, polydiarylsiloaxane, polyalkylarylsiloaxane polymer, with at least two or more (RR′SiO) unit, wherein R and R′ are independently alkyl or aryl. In a most preferred embodiment, polydiorganosiloaxane polymers are hydroxyl terminated polydimethylsiloxane polymers (PDMS). Other polydiorganosiloxane polymers include siloxane polymers with one or more the diorgano substitutes of methylvinyl, methylethyl, methylepoxyalkly and 3,3,3-trifluoropropylmethyl (para 0080).
Regarding claim 14, Liu fails to disclose that silicone adhesive composition further comprises cross-linking agent.
Whereas, Han discloses silicone-based adhesive protective film and an optical member including the same are provided. A silicone-based adhesive protective film is formed of a composition including a silicone resin, a crosslinking agent, and a curing catalyst (abstract).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include crosslinking agent as taught by Han in the silicone adhesive composition of Liu motivated by the desire to form silicone adhesive composition having a low rate of change in peel strength over time (para 0058).
Claim(s) 9-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2020/0157395) in view of Han et al. (US 2020/0208032) and Bruce et al. (US 2020/0216668) as applied to claim 1, further in view of Watanabe et al. (CN 109467721).
Regarding claims 9-10, 13, Liu discloses silicone adhesive comprising 10 to about 50% of a reactive silicone resin (para 0070). Bruce discloses composition comprises (A) a filler in an amount of from 10 to 90 wt (abstract). The (A) filler may comprise a non-reactive silicone resin. For example, the (A) filler may comprise a non-reactive MQ silicone resin (para 0021). However, Liu in view of Han fails to disclose that the inorganic particles such as silica having the reactive functional group has a diameter of less than 10 microns in an amount of 20-40 parts by weight.
Whereas, Watanabe a resin sheet (1) which is sealing resin sheet (1) in the manufacturing method of the semiconductor device for electronic components, a resin sheet (1) with a curable resin composition layer (11); resin composition layer (11) formed by a resin composition comprising a curable resin, the thickness of the resin composition layer (11) is more than 100μm and less than 300μm, the resin composition layer (11) at a content of 1.0 mass % or more and 5.0 mass % or less by heating volatilization of solvent plasticity (abstract). The resin sheet of this exemplary embodiment 1, the resin composition preferably further contains an inorganic filler (page 7). As the inorganic filler, such as silicon dioxide can be used. The average particle diameter of the inorganic filler is preferably 0.01 μm or more, especially preferably 0.1 μm or more, further preferably 0.3 μm or more (page 7). The preferred inorganic filler is the surface treating agent for the surface treatment of the inorganic filler. As the example of the surface treatment agent can be listed the epoxy silane, vinyl silane and so on. wherein, preferably using silane. As a specific example of silanes, such as listing 3-glycidoxypropyl triethoxy silane, 3-glycidoxypropyl trimethoxy silane, 3-epoxy propoxy propyl methyl dimethoxy silane, 3-epoxy propoxy propyl methyl diethoxy silane (page 8).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include silica treated with 3-glycidoxypropyl trimethoxy silane having an average diameter of 0.3 microns or more in an amount of 40 parts by weight as taught by Watanabe in the silicone adhesive composition of Liu motivated by the desire to have improved mechanical properties and to have improved dispersiblity.
Regarding claim 11, with respect to the limitation of inorganic particles having the reactive functional group in an amount of 20 parts by weight to 30 parts by weight. The only deficiency of Watanabe is that Watanabe disclose the use of 40 wt% of inorganic particle, while the present claims require 3o parts by weight.
It is apparent, however, that the instantly claimed amount of inorganic particle having reactive group and that taught by Watanabe are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of inorganic particles having the reactive functional group disclosed by Watanabe and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of inorganic particles having the reactive functional group, it therefore would have been obvious to one of ordinary skill in the art that the amount of inorganic particles having the reactive functional group disclosed in the present claims is but an obvious variant of the amounts disclosed in Watanabe, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2020/0157395) in view of Han et al. (US 2020/0208032) and Bruce et al. (US 2020/0216668) as applied to claim 1, further in view of Thompson et al. (CN 109414915).
Regarding claim 17, Liu fails to disclose that optical display base film includes a polyurethane-based film which is transparent.
Whereas, Thompson discloses display film that comprises a transparent cross-linked polyurethane layer (abstract). The display film comprises a transparent polymer base material layer (page 3).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to form base film of optical display of Liu with a transparent polyurethane as taught by Thompson motivated by the desire to have properties for impact resistance and under low temperature condition by dynamic folding capability (page 7).
Response to Arguments
Applicant’s arguments filed on 03/05/2026 have been fully considered, but they are moot in view of new grounds of rejections as stated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONAK C PATEL whose telephone number is (571)270-1142. The examiner can normally be reached M-F 8:30AM-6:30PM (FLEX).
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, ALICIA CHEVALIER can be reached at 5712721490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RONAK C PATEL/Primary Examiner, Art Unit 1788