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.
Application Status
This is a first action on the merits. A preliminary amendment was filed on 06 September 2024 amending the abstract and claims 2, 3, 5, 6, 7, 16 and 17. Claims 1-19 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06 September 2024, 20 August 2025, 03 December 2025 and 02 June 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The abstract of the disclosure is objected to because it includes the implied phrases “The present application can provide…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
Paragraph [168] on p. 29 of the clean specification (as amended on 06 September 2024) describes the peel forces Af and Ai in the same manner such that there appears to be no difference between these values. However, paragraph [170] at p. 29-30 and paragraphs [201-207] on p. 34 describe that Af is measured at the same conditions but at a different time than Ai is measured, namely after 24 hours of attachment to a standard tape. Clarification is needed.
Drawings
The replacement drawings received on 06 September 2026 are acceptable.
Claim Rejections - 35 USC § 112
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.
Claim 17 is rejected under 35 U.S.C. 112(b) 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.
Regarding claim 17, there does not appear to be any difference in the claimed description of release peel force Ai and release peel force Af, as each are measured after attaching a pressure-sensitive adhesive tape to the release layer and peeling the pressure-sensitive adhesive tape at a peel angle of 180° and a peel rate of 0.3 m/min at 25°C. Furthermore, Af is described as “…measuring the peel force Ai in the same manner as at the time of measuring the peel force Ai” which is a tautology. Clarification is needed.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marchin (U.S. Pub. 2001/0007880).
Regarding claims 1 and 3, Marchin describes a compound having the following structure, see example at p. 13, [0229]:
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This reads on the compound of Formula 1 in which R1 is a hydroxyalkyl benzophenone group reading on a radical generating functional group, m is 1, R2 is monovalent hydrocarbon group -CH3, n is 2, m+n is 3, and X is an oxygen atom which connects to other Si atoms in the compound. This anticipates the claims.
Claims 1, 3, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 0,088,842 B1.
Regarding claims 1 and 3, EP ‘842 discloses organopolysiloxane molecules with benzophenone functional groups, see p. 2, lines 35-49. Example 1 on p. 8 shows the following compound:
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This compound reads on Formula 1 in which the benzophenone group C6H5-C(=O)-C6H4OCH2CH2CH2- reads on the R1 radical generating functional group, a methyl group Me reads on R2, and X is an oxygen atom which connects to other Si atoms in the compound. In this case, m = 1, n = 1, and m+n = 2. See also the general description at p. 2-3.
This example anticipates the claim.
Regarding claim 4, the average composition formula in Example 1 on p. 8 represents either a branched or cage or partial cage structure.
Regarding claim 5, the molecular weight of the average composition formula shown in Example 1 at p. 8 can be calculated from the molecular weights of one terminal Me3SiO group, 81 Me2SiO groups, 4 MeHSiO groups, 14 MeSiO groups which also have with the benzophenone functional group, and one terminal SiMe3 group. Each Me group (methyl group, -CH3) has a molecular weight of about 15, each Si atom has a molecular weight of 28.1, H has a molecular weight of 1, and O has a molecular weight of about 16, and the C6H5-C(=O)-C6H4OCH2CH2CH2- group (C16H15O2) has a molecular weight of about 239.3 g/mol. Thus the overall molecule has a molecular weight of about 1 x (3x15 + 28 + 16) + 81 x (2x15 + 28 + 16) + 4 x (15 + 1 + 28 + 16) + 14 x (15 + 28 + 16 + 239.3) + 1 x (28 + 3x15), or about 89.1 + 81 x (74.1) + 4 x (60.1) + 14 x (298.4) + 73.1, or about 10,587 g/mol.
Claims 1, 2, 3, 4, 7, 8, 15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 114133572 A. Applicant’s provided translation of CN ‘572 was relied upon for analysis.
Regarding claims 1 and 3, CN ‘572 descrbies a photosensitive silicon resin. Paragraphs [0057-0058] depict the following structure:
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This structure reads on Formula 1 in which the –(CH2)3-NH-CO-X group reads on the radical generating functional group R1, m is 1, n is 0, and X is oxygen (O) which links the silicon atoms of the compound together. This anticipates the claims.
Regarding claim 2, the –(CH2)3-NH-CO-X group of CN ‘572 reads on the claimed Formula 3. The X group of the reference is defined in paragraph [0058] to be the following:
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Thus the functional group reads on the claimed Formula 3 in which L2 is the propyl group, L3 is an ethyl group, and R3 is an aryl group.
Regarding claim 4, the structure shown in paragraph [0057] has a branched or cage or partial cage structure meeting the claimed limitation.
Regarding claim 7, CN ‘572 uses the compound in an antifouling and fingerprint resistant coating which reads on a release composition, see paragraph [0117] of the translation.
Regarding claims 8 and 15, CN ‘572 teaches including a silicone resin with the compound and irradiating with light to cure the composition into a film, see paragraph [0035].
Regarding claim 18, CN ‘572 teaches applying the composition onto a substrate prior to curing, see paragraph [0035].
Allowable Subject Matter
Claims 6, 9-14, 16, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner's statement of the reasons for allowance:
The base claim is claim 9.
The present claims are deemed allowable over the references since the references do not disclose or render obvious the specific silicone compound of claim 1 which is combined with the curable silicone resin component having the average units of Formula 4 and Formula 5 as detailed in Claim 9.
While CN ‘572 teaches using a silicone resin, the reference does not provide the compositional details of said resin.
Dependent claims 6, 10-14, 16, and 19 claim additional features which are not specified in the above-cited references.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Jaunky (U.S. Pub. 2017/0247572) describes siloxanes with epoxy functional groups used in release coatings, however the epoxy functional group is not a radical-generating functional group.
KR 10-2015-0025702 A describes the following functionalized silane compound in Example 1, [0123] on p. 13 of the original document:
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Although the functional group of this compound reads on Formula 3 shown in the present claims, the compound does not read on the compound of Formula 1 as there are not a plurality of silicon atoms in the compound which are connected by X groups such as oxygen.
Conclusion
Claims 1-5, 7, 8, 15, and 17-18 are rejected. Claims 6, 9-14, 16, and 19 are objected to as being dependent on a rejected base claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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