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 .
Response to Arguments
In response to the non-final Office Action (dated 16 December 2025), the Applicant submits the following:
-- Claim 1 has been amended.
-- Claim 6 has been canceled.
-- No new matter has been entered.
The arguments provided by the Applicant have been fully considered & reviewed but are ultimately found unpersuasive in view of the amended claims.
The Applicant challenges the prior art & states the amended claim 1 now additionally requires:
--- The adhesive composition comprising a polymer and an adhesive component,
--- The polymer is a releasability-imparting agent having an amide bond and a polyorganosiloxane structure,
--- A content of the polymer in the adhesive composition is 0.1 to 15 mass% with respect to components other than a solvent contained in the adhesive composition (Remarks, p. 6).
Applicant contrasts the above limitations with the prior art of record stating Sherman’101 does not disclose the polymer is a releasability-imparting agent. Applicant states Sherman’101 teaches the polydiorganosiloxane polyoxamides as an adhesive component but maintains that there is no disclosure that the polymer is a releasability-imparting agent (Remarks, p. 6, bottom paragraph).
Examiner points to the instant Specification where the Applicant elaborates on & provides examples of the ‘adhesive component’, including siloxane-based adhesives, acrylic resin-based adhesives, epoxy resin-based adhesives, polyamide-based adhesives, polystyrene-based adhesives, polyimide adhesives, and phenol resin-based adhesives (Specification, p. 21, [0034]). When elaborating on the ‘releasability-imparting agent’, the Applicant provides:
“[14] A releasability-imparting agent used in an adhesive composition, the releasability-imparting agent being a polymer having an amide bond and a polyorganosiloxane structure. [15] The releasability-imparting agent according to [14], wherein the polymer has the amide bond in a main chain. [16] The releasability-imparting agent according to [14] or [15], wherein the polymer has the polyorganosiloxane structure in a main chain” (Specification, p. 7, [14]-[16]).
As the Applicant admits the polydiorganosiloxane polyoxamides in Sherman’101 is an adhesive component, and per the Applicant’s elaborations (above), the polymer taught by Sherman’101 conclusively reads on the limitation ‘the polymer is a releasability-imparting agent having an amide bond and a polyorganosiloxane structure’ as required by the amended claim 1. Applicant has yet to definitively demonstrate how Sherman’101’s polymer is not a releasability-imparting agent.
Applicant points to columns 25 & 26 in Sherman’101 stating Sherman’101 teaches higher mass% ranges of constituent components. The Applicant concludes by stating no combination of Sherman’101 & Sherman’146 can render the claimed invention obvious as the claims are amended with content deficient in said prior art (Remarks, p. 7 & 8).
Examiner points to Sherman 101’s disclosure beginning at col. 25, line 57, which relates to an amount of polydiorganosiloxane polyoxamide relative only to the combination of polydiorganosiloxane polyoxamide and tackifier. Additional components may be present in adhesive compositions based on Sherman101’s copolymer (see, e.g., col. 23, line 42 – col. 24, line 23). Sherman101 neither discloses nor teaches away from a particular overall amount of polydiorganosiloxane polyoxamide copolymer present in an adhesive composition. This deficiency is remedied by Hu in the new grounds of rejection presented below.
This rejection is FINAL.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1 – 5 are rejected under 35 U.S.C. § 103 as being unpatentable over Sherman et al. (US 7,705,101 B2; hereinafter Sherman’101) in view of Hu et al. (US 2013/0202787 A1).
Regarding claim 1, Sherman’101 teaches polyorganosiloxane polyamide block copolymers (Abstract) which may be employed in applications as an adhesive (col. 3, lines 44-46). Sherman’101 presents two formulas which said copolymers may abide by, Formula I-a (col. 2, lines 24-35) and Formula I-b (col. 7, lines 36-50), both of which have an amide bond and a polyorganosiloxane structure as required by the claim.
Sherman’101 teaches various adhesives (col. 24, lines 24-39) as well as tackifying resins which may be added to the polyorganosiloxane polyamide copolymer to further promote or enhances adhesive properties (col. 24, lines 40-49). When combining the copolymer with tackifying resins, the polyorganosiloxane polyamide copolymer is also an adhesive component (col. 24, lines 25-39).
The instant Specification provides examples of the ‘adhesive component’, including siloxane-based adhesives, acrylic resin-based adhesives, epoxy resin-based adhesives, polyamide-based adhesives, polystyrene-based adhesives, polyimide adhesives, and phenol resin-based adhesives (Specification, p. 21, [0034]). When elaborating on the ‘releasability-imparting agent’, per the Specification:
“[14] A releasability-imparting agent used in an adhesive composition, the releasability-imparting agent being a polymer having an amide bond and a polyorganosiloxane structure. [15] The releasability-imparting agent according to [14], wherein the polymer has the amide bond in a main chain. [16] The releasability-imparting agent according to [14] or [15], wherein the polymer has the polyorganosiloxane structure in a main chain” (Specification, p. 7, [14]-[16]).
As the Applicant admits the polydiorganosiloxane polyoxamides in Sherman’101 is an adhesive component (Remarks, p. 6, bottom full paragraph), and per disclosures from the Specification (above), the polymer taught by Sherman’101 conclusively reads on the limitation: ‘the polymer is a releasability-imparting agent having an amide bond and a polyorganosiloxane structure’ as required by the amended claim 1.
Sherman’101, however, does not teach the polymer content as required by the claim.
In the same field of endeavor, Hu teaches hot melt adhesive compositions (Abstract). Hu discloses hot melt adhesive compositions with polymer contents of 20-35 wt.% generally result in high viscosity, thus needing an application temperature of 325°F or greater (p. 1, [0002]). An embodiment of the invention is disclosed wherein the polymer content is in the range of 5-20 wt.% (p. 1, [0007]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the polymer content range of 5-20 wt.% taught by Hu, as a guide for the appropriate amount of polymer content when following the teachings of Sherman’101, as Hu expressly states polymer contents greater than this range results in higher viscosity, negatively impacting processing of said composition. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Sherman’101 in view of Hu as detailed above reads on all limitations established by the independent base claim 1.
Regarding claim 2, maintaining the modification of Sherman’101 in view of Hu previously detailed, both of the Formula I-a & Formula I-b have an amide bond in the main chain as required by the claim (col. 2, lines 24-35 & col. 7, lines 36-50).
Regarding claim 3, maintaining the modification of Sherman’101 in view of Hu previously detailed, both of the Formula I-a & Formula I-b have the polyorganosiloxane structure in the main chain as required by the claim (col. 2, lines 24-35 & col. 7, lines 36-50).
Regarding claims 4 & 5, maintaining the modification of Sherman’101 in view of Hu previously detailed, the polyorganosiloxane, as taught by Sherman, refers to the formula below:
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Where, R1 represents an alkyl group or an aryl group and n is an integer in the range of 0 – 1,500 (col. 5, lines 45-64). Sherman defines “alkyl” as linear or branched or cyclic and contains 1 – 4 carbon atoms. Examples thereof include a methyl group (col. 4, lines 25-31). Sherman defines “aryl” as aromatic and cyclic, with examples thereof provided as a phenyl group (col. 4, lines 53-58). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claims 7 – 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Sherman et al. (US 7,705,101 B2; hereinafter Sherman’101) in view of Hu et al. (US 2013/0202787 A1) in further view of Sherman et al. (US 9,587,146 B2; hereinafter Sherman’146).
Regarding claims 7 & 8, maintaining the modification of Sherman’101 in view of Hu previously detailed, Sherman’101 teaches various adhesives (col. 24, lines 24-39) as well as tackifying resins which may be added to the polyorganosiloxane polyamide copolymer to further promote or enhances adhesive properties (col. 24, lines 40-49).
Sherman’101 is silent on the hydrosilylation reaction as required by the claims.
In the same field of endeavor, Sherman’146 teaches compositions for adhesive films/articles containing silicone, which may be a polyorganosiloxane, and a tackifying resin (Abstract). Sherman’146 details these adhesives may be prepared by addition chemistry of polyorganosiloxane (with alkenyl groups), MQ silicone resins (which comprise silicone-hydrogen bonds) and a metal catalyst for a hydrosilylation reaction.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Sherman’101 in view of Hu by employing the hydrosilylation reaction taught by Sherman’146, as Sherman’146 explicitly describes this as a process of obtaining adhesive compositions.
Modification of Sherman’101 in view of Hu in further view of Sherman’146 as detailed above reads on all limitations established by claims 7 & 8.
Regarding claim 9, maintaining the modification of Sherman’101 in view of Hu in further view of Sherman’146 previously detailed,
Sherman’101 discloses precursors which may be used to obtain the compound(s) of Formula I-a &/or Formula I-b. Such a precursor is taught as Formula II-a, wherein R1 may be an alkenyl group (col. 2, line 53 – col. 3, line 3). Sherman defines “alkenyl” as a hydrocarbon with at least one double bond and may have from 2 – 18 carbon atoms (col. 4, lines 17-22). Thus, when R1 is an alkenyl group, Formula II-a reads on the polyorganosiloxane (a1) as required by the claim. The precursor may be a mixture of Formula II-a and/or Formula II-b (col. 14, lines 45-58).
Sherman’146 details adhesives may be prepared by reaction of polyorganosiloxane (with alkenyl groups), MQ silicone resins (which comprise silicone-hydrogen bonds) and a metal catalyst for a hydrosilylation reaction. The metal is taught to be platinum (col. 12, lines 28-39). The MQ resins are detailed as triorganosiloxy units and SiO4/2 units with silanol-endblocked polyorganosiloxanes (col. 12, lines 5-8) which reads on the polyorganosiloxane (a2) as detailed in the instant Specification (p. 21, line 20 – p. 23, line 4).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Sherman’101 by substituting one Sherman’101’s precursors with the MQ resin taught by Sherman’146. This would result in the reaction of the precursor embodiment taught by Sherman’101 (which reads on the polyorganosiloxane (a1)), with the MQ resin taught by Sherman’146 (which reads on the polyorganosiloxane (a2)), and employing the platinum catalyst taught by Sherman’146, as Sherman’146 expressly details this as a method of obtaining adhesives comprising polyorganosiloxanes. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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