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 1-18 are pending. Applicant’s previous election of Group I, claims 1-6 and 16-18 still applies and claims 7-15 remain withdrawn.
Response to Amendment
Applicant’s amendment of 04/27/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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) 16 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 16 recites that the composition “is melt-kneaded” which is vague because it is unclear if this is a requirement of the composition (i.e., the claim scope is limited to the composition while being melt-kneaded) or is merely further limiting the property of claim 1 which is recited with respect to a melt-kneading test on the composition.
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) 1-6 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki (WO 2020/203304, see US 2022/0169894), in view of Nishijima (JPWO 2020/138055, see machine translation) in view of Okazaki (U.S. 5,668,225).
Regarding claims 1-6 and 16-18, Yamazaki teaches a curable adhesive sheet (with a thickness as in claims 5-6) that has hot melt properties as a whole, with A ingredients overlapping the claimed A ingredients and not having hot melt properties individually, which may be solid (temperature of solid property is not disclose but it would be obvious to have solid be measured at room temperature, i.e., 25 Celsius), with a structure and amount of the A1 and A2 ingredients overlapping claims 1 and 4, with B, and C2, ingredients having overlapping structure and amount compared to the claimed B, C, and D ingredients (except the thermoplastic resin Tg, see below), as in claims 1 and 4, as well as a retarder inherently having the claimed boiling point property of claim 2 in an overlapping amount, as well as an overlapping mass loss property, as well as an overlapping amount of white inorganic filler (see claims, [0061], [0079], [0126] suggesting general thermoplastic encapsulated catalyst as claimed, [0127], [0135], [0150], the last retarder is the same as in the present application for the claimed property). The thermoplastic resin is disclosed as encapsulating the catalyst which isolates it as claimed ([0126]) and the composition is disclosed as being melt kneaded ([0176]).
Yamazaki does not disclose the Tg of the thermoplastic that encapsulates the catalyst. However, Nishijima is also directed to platinum catalyzed silicone compositions and discloses that the catalyst may be thermoplastic encapsulated with an overlapping Tg and size with the benefit that it is not activated until heated to a desired temperature, as in claim 3, rendering such an encapsulated catalyst obvious in Yamazaki to achieve the benefit disclosed by Nishijima ([0043], [0077]-[0079]).
As an alternative to Nishijima, Okazaki is also directed to a sealer composition of platinum catalyzed silicone ingredients and teaches that the platinum catalyst may be encapsulated in a thermoplastic with an overlapping Tg and size with the benefit that it can be released upon heating to control when the catalyst is released as in claim 3 (see abstract, col. 3, line 45-col. 3, line 65), such that this manner of encapsulating the catalyst is obvious in Yamazaki to achieve the benefit disclosed by Okazaki.
The curing properties of claim 1 with respect to Tg and melt-kneading conditions are not disclosed explicitly as claimed or with the particular aspects of claims 16-18, however, the prior art discloses encapsulating the catalyst in a thermoplastic resin with an overlapping Tg and will inherently have the claimed properties if exposed to melt-kneading under the claimed conditions. The prior art also seeks the same general effect (i.e., suppressing activation below a certain temperature and allowing it above a certain temperature, see citations to secondary references above) such that even if the claimed property was not already inherent, it would additionally be obvious to arrive at based on the obvious optimization of the catalyst encapsulation based on the desired temperature at which the catalyst remains inactive/becomes active.
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) 1-18 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-15 of U.S. Patent No. 12,384,941 (the patent corresponding to Yamazaki cited above) in view of Nishijima (JPWO 2020/138055, see machine translation) in view of Okazaki (U.S. 5,668,225). Although the claims at issue are not identical, they are not patentably distinct from each other. The patented claims overlap and render obvious the pending claims except for the thermoplastic catalyst Tg however, Nishijim and Okazaki render obvious this Tg as explained above, as well as the properties of claims 1 and 16-18.
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) 1-18 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-16 of copending Application No. 18/268,222 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims overlap and render obvious the pending claims with the only difference being the claimed thermoplastic catalyst Tg and the claimed filler, however, Nishijim and Ozaki render obvious this Tg. That is, Nishijima is also directed to platinum catalyzed silicone compositions and discloses that the catalyst may be thermoplastic encapsulated with an overlapping Tg so that it is not activated until heated to a desired temperature, as in claim 3, rendering such an encapsulated catalyst obvious ([0043], [0077]-[0078]). As an alternative to Nishijima, Okazaki is also directed to a sealer composition of platinum catalyzed silicone ingredients and teaches that the platinum catalyst may be encapsulated in a thermoplastic with an overlapping Tg so that it can be released upon heating to control when the catalyst is released as in claim 3 (see abstract, col. 3, line 45-col. 3, line 65), such that this manner of encapsulating the catalyst is obvious.
Nishijima also renders obvious filler at an overlapping amount for improving adhesive strength ([0117]) as well as Okazaki rendering obvious filler for pigment with the amount and color being obvious to adjust to control the type and degree of pigmentation (col. 5, lines 5-15).
The secondary references also render obvious the properties of claims 1 and 16-18 as explained in the rejection above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the claimed property is a functional limitation. This does not prevent it from being inherent based on the prior art teachings as explained in the rejection.
Applicant argues that the comparative examples demonstrate that the behavior is not inherent but is directed to a composition not representative of the prior art (i.e., lacking encapsulation).
Applicant argues that the property is critical/unexpected and different from the problem addressed in the prior art and not result effective but the claimed property is not unexpected based on the teachings of the prior art, and the data is much narrower than the claimed scope (non-commensurate therefore not unexpected results), and the rejection is based on inherency which does not require result effective variable optimization or that the same property is addressed, and lastly the prior art also provides support for result effective variable optimization of the activation conditions of the catalyst (i.e., further evidence that the claimed property is not unexpected and the prior art recognizes the same problem as applicant).
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 extension fee 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 date of this final action.
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