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 .
DETAILED ACTION
Claims 1-5 and 8-17 of Y. Usui, et.al. US 18/726,583 (07/03/2024) are pending. Claims 8-15 are withdrawn as drawn to non-elected Groups (II)-(III). Claims 1-5 and 16-17 are under examination on merits and rejected.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. However, a certified English translation of the foreign application is not filed. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I (claims 1-7 ), without traverse, in the reply filed on 01/21/2026. Claims 8-15 drawn to non-elected Groups (II)-(III) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Applicant amended claim 1, cancelled claims 6-7 and added new claims 16-17, in the reply filed on 06/18/2026. Now claims 1-5 and 16-17 falls within the scope of the elected Group I. The restriction is maintained as Final.
Withdrawal Claim Rejections - 35 USC § 102
Rejection of claims 1-7 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by the T. Mondal, et al, WO 2020139638A1 (2020)(“Mondal”) Formulation F13; and rejection of Claims 1-3 and 5-6 are further rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by the T. Mondal, et al, WO 2020139638A1(2020)(“Mondal”) Formulation F3 are withdrawn as neither the compound structure II nor the compound structure IV recited in the rejection comprises a MQ resin structure as required by the amended claim 1. Applicant also argues on this issue in the reply filed on 06/18/2026. See Rejections under 35 U.S.C. §102 at page 6-7 of the Remarks filed on 06/18/2026.
New 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 16-17 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated T. Okuno, et al, WO2020105586A1(2020)(“Okuno-WO”).
Okuno is published in Japanese and its US application US20220010178A1(2022) (“Okuno-US”) is used as an equivalent of the English translation.
Okuno teaches a composition that is prepared as follows:
[0169] An MQ resin containing polysiloxane and vinyl groups (product of WACKER Chemie AG) (80 g) serving as polyorganosiloxane (a1), linear-chain polydimethylsiloxane containing SiH groups (viscosity: 100 mPa·s) (product of WACKER Chemie AG) (2.52 g) serving as polyorganosiloxane (a2), linear-chain polydimethylsiloxane containing SiH groups (viscosity: 70 mPa·s) (product of WACKER Chemie AG) (5.89 g) serving as polyorganosiloxane (a2), and 1-ethynyl-1-cyclohexanol (product of WACKER Chemie AG) (0.22 g) serving as a polymerization inhibitor (A3) were added to a 600-mL container dedicated for an agitator, and the mixture was agitated by means of the agitator for 5 minutes.
Okuno-US at page 14, [0169], Preparation Example 1, emphasis added. Also see Okuno-WO at page 36, [0156].
The Okuno composition comprises:
(i). 80 g of An MQ resin containing polysiloxane and vinyl groups; and
(ii). 5.89 g of linear-chain polydimethylsiloxane containing SiH groups.
Wherein, the mass ratio between the MQ resin containing polysiloxane and vinyl groups and the linear-chain polydimethylsiloxane containing SiH groups is 13.58 (80/5.89) that anticipates the claimed 95:5 to 85:15.
As mentioned in the previous Office action that the language of “a reaction product (X) of a solid polymer (x1) having a first functional group and a liquid chain compound (x2) having, at a chain terminal, a second functional group capable of reacting with the first functional group” in the instant claims 1 and 16 is interpreted as product-by-process language. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." MPEP 2113.I. Therefore, the patentability of the claimed ingredient X is based on the structures of itself rather the method it is prepared.
The preamble portion “An adhesive composition” does not impose any structural limitations on the claimed composition and therefore is interpreted merely as a statement of suggested use. See MPEP § 2111.02(II).
Thus, the claimed invention of claim 1 and claim 16 is a composition comprising:
product (X) containing a MQ resin structure1 and a first functional group or a second functional group; and
a liquid crosslinking agent (Y) having the first functional group or the second functional group;
wherein, X and Y has different functional groups. In addition claim 16 also claims a ratio range between the X and the Y.
Therefore, the Okuno composition meets each and every limitation of claims 1, 5 and 16-17. therefore, claims 1, 5 and 16-17 are anticipated.
Claim 2 and 4 are anticipated because the linear-chain polydimethylsiloxane containing SiH groups is a liquid polyorganosiloxane as Okuno teaches that it has a viscosity of 70 mPa·s.
Claim 3 is anticipated because the vinyl groups in the MQ resin is a C2-40 alkenyl group; and the linear-chain polydimethylsiloxane containing SiH groups.
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 FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday. 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, Scarlett Goon can be reached at (571)2705241. 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.
/FRANK S. HOU/Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
1 Applicant argues that the product X must comprise a network structure derived from the claimed MQ resin. See Rejections under 35 U.S.C. §102 at page 6-7 of the Remarks filed on 06/18/2026.
Prosecution Insights