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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12, in the reply filed on 02 June 2026 is acknowledged. The traversal is on the ground(s) that the Examiner has not properly identified the common technical feature, the proposed combination represents impermissible hindsight and claims 13-15 are directly linked to the composition of claim 1 and define a pre-cured intermediate, a cured product, and a method of producing a cured product, each relying on the same underlying reactive system.
This is not found persuasive because the common technical feature of the claims is the active energy ray curable silicone composition comprising instant component (A), (B), optionally (C), (D), and (E), wherein a defined molar ratio of silicon-bonded hydrogen atoms to alkenyl groups is 0.5 to 1.0. As disclosed in the restriction of record, Miyamoto teaches a composition comprising an organopolysiloxanes resin (A) [0008], an organosiloxane oligomer having at least two silicon-bonded hydrogen atoms and an aryl group (B) [0024], and a catalytic amount of hydrosilylation catalyst (E) [0034-0035]. Miyamoto teaches the content of (B) is in an amount that provides 0.5 to 5 moles of silicone-bonded hydrogen atoms per 1 mole of the alkenyl groups in (A) [0026], which falls within the range required by the instant claims. Okamura is relied upon for teaching it obvious to add component (D) [0057], one of ordinary skill in the art would have added component (D) in such an amount that maintains the molar ratio as taught by Miyamoto.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Claim 13-15, as applicants state, are linked to the composition of claim 1 and define a pre-cured intermediate, a cured product, and a method of producing a cured product, which fall under different classes of invention. However, since Miyamoto in view of Okamura render obvious the claimed common technical feature, lack of unity present and thus restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02 June 2026.
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.
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.
Claim(s) 1 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto et al. (US Serial No. 2015/0069456), in view of Ozai (US 2014/0203323).
Regarding claims 1, 6, and 7; Miyamoto et al. teaches a curable silicone composition comprising (A) 100 parts by mass of (A1) an organopolysiloxanes having at least two alkenyl groups in a molecule, and free of silicone-bonded hydroxyl groups and silicon-bonded hydrogen atoms (instant compound B), or a mixture of said component (A1) and (A2) a branched chain organopolysiloxane represented by the following average unit formula (instant compound A):
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(B) an organopolysiloxanes having at least two silicon-bonded hydrogen atoms in a molecule, in an amount that provides from 0.1 to 10 moles of silicone-bonded hydrogen atoms in this component per 1 mole of the alkenyl groups in (A); and (E) a catalytic amount of a hydrosilylation catalyst (instant compound E) [0008-0012].
Miyamoto et al. teaches the component (A1) comprises, in addition to silicone-bonded alkenyl groups, a silicon-bonded organic group which may be an aralkyl group such as benzyl or phenethyl groups (silicon bonded aryl group) and has a viscosity at 25°C is preferably from 50-1,000,000 mPa·s [0019]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See 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), see MPEP §2144.05. That is, a person of ordinary skill in the art would have found it obvious to employ a component (A1) having a viscosity of, for example 1,000 mPa·s, and would have been motivated to do so because Miyamoto et al. teaches organopolysiloxanes (A1) having a viscosity as low as 50 mPa·s is suitable for achieving the particulars of the present invention.
Miyamoto et al. teaches the component (A2) is present in amount of 15 to 60 mass%, based on the total amount of component (A) [0024], thus the component (A1) is present in an amount of 40 to 85 mass% (as calculated by Examiner). At the time of filing, a person of ordinary skill in the art would have found it obvious to employ a component (A1) in an amount of 40 mass% (instant B) and the component (A2) in an amount of 60 mass% (instant A), based on the teachings of Miyamoto et al., and would have been motivated to do so in order to achieve good handleability, as suggested by Miyamoto et al. [0024].
The Examiner makes note that instant component (C) is optional and thus not explicitly required by the claimed invention.
Miyamoto et al. fails to teach the composition further comprising an organosilicon as required by the instant compound D. Ozai teaches a composition suitable for use on an optical semiconductor, the composition comprising preferably 0.01 to 20% by mass relative to the whole composition [0060] of a (meth)acrylate ester that contains one or more SiH groups in the molecule (instant compound D) having the following structure [0053]:
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Miyamoto et al. and Ozai are analogous art because they are both concerned with the same field of endeavor, namely compositions suitable for use in optical semiconductors. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the (meth)acrylate ester that contains one or more SiH groups in an amount of 0.01 to 20% by mass, as taught by Ozai, to the composition of Miyamoto et al., and would have been motivated to do so in order to achieve heat resistance and flexibility, as suggested by Ozai [0060].
Regarding claim 8; Miyamoto et al. and Ozai do not explicitly disclose wherein the component D is used in an amount such that a content of the (meth)acryloxyalkyl group is 4 mmol/100g or more relative to a total mass of components (A) to (E). According to the original specification, the (meth)acryloxyalkyl group content is varied depending on molecular structure of the component (D) [0073]. Since Ozai teaches the claimed structure of component D (see formula above), in the claimed amount, it is the position of the Examiner that the composition would necessarily possess 4 mmol/100g or more, as required by the claim language.
Regarding claim 9; Miyamoto et al. teaches the composition may further comprise a reaction inhibitor [0036].
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto et al. (US Serial No. 2015/0069456), in view of Ozai (US 2014/0203323), as applied to claim 1 above, and further in view of Schmidt et al. (US Serial No. 2021/0079222).
Miyamoto et al. in view of Ozai teaches the basic claimed active energy ray curable silicone composition, as set forth above, with respect to claim 1.
Regarding claims 2-3; Miyamoto et al. teaches the composition comprises an organopolysiloxanes having at least two alkenyl groups in a molecule, and free of silicone-bonded hydroxyl groups and silicon-bonded hydrogen atoms [0008], however fails to explicitly teach the structure required by the claims. Schmidt et al. teaches a curable silicone composition, suitable for use in optical semiconductors, the composition comprising a linear organopolysiloxanes having at least two alkenyl groups and at least one aryl group, which is represented by the following general formula [0021-0022]:
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Miyamoto et al. and Schmidt et al. are analogous art because they are both concerned with the same field of endeavor, namely curable silicone compositions suitable for use in semiconductor devices. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the linear organopolysiloxanes having at least two alkenyl groups and at least one aryl group, as taught by Schmidt et al., in the composition of Miyamoto et al., and would have been motivated to do so in order to achieve good mechanical properties and good retention of transparency under conditions of high temperature, as suggested by Schmidt et al. [0006].
Regarding claims 4-5; Miyamoto et al. fails to teach the composition comprising an organosiloxane oligomer having at least on silicon atom-bonded alkenyl group and at least one silicon atom-bonded aryl group in a molecule. Schmidt et al. teaches a curable silicone composition, suitable for use in optical semiconductors, the composition comprising an organosiloxane having at least two silicon-bonded hydrogen atoms in a molecule, which may be represented by the following below [0033, 0035-0038].
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Miyamoto et al. and Schmidt et al. are analogous art because they are both concerned with the same field of endeavor, namely curable silicone compositions suitable for use in semiconductor devices. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the organopolysiloxanes having at least two silicon-bonded hydrogen atoms, as taught by Schmidt et al., in the composition of Miyamoto et al., and would have been motivated to do so in order to achieve excellent flexibility of the resultant cured product, as suggested by Schmidt et al. [0035].
Claim(s) 1 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (WO 2008/023537), in view of Ozai (US 2014/0203323).
Regarding claim 1; Kato et al. teaches a composition comprising a mixture of a linear diorganopolysiloxane (A1) and a linear diorganopolysiloxane (A2) comprising both aryl and alkenyl groups [0011], having a viscosity of preferably between 100-1000 mPas [0014], represented by the general formula below;
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a branched organopolysiloxanes component (B) represented by the average unit formula [0018];
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wherein X is a hydrogen, R3 is an allyl or vinyl group, a is a positive number, b is 0 or a positive number, c is 0 or a positive number, d is 0 or a positive number, e is 0 or a positive number, d/(a+b+c+d) is between 0 and 0.03, e/(a+b+c+d) is between 0 and 0.4 [0019]. Kato et al. teaches the ratio of mass of component (B) (instant A) to component (A) (instant B1) is in the range of from 1/99 to 99/1 [0020], thus in the instance the ratio is 70/30 (i.e. 70 mass% of instant A and 30 mass% of instant B). Kato et al. teaches the composition further comprises 0.1 to 1000 ppm of a hydrosilylation reaction catalyst (D) [0026-0027]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See 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), see MPEP §2144.05.
The Examiner makes note that instant component (C) is optional and thus not explicitly required by the claimed invention.
Kato et al. fails to teach the composition further comprising an organosilicon as required by the instant compound D. Ozai teaches a composition suitable for use on an optical semiconductor, the composition comprising preferably 0.01 to 20% by mass relative to the whole composition [0060] of a (meth)acrylate ester that contains one or more SiH groups in the molecule (instant compound D) having the following structure [0053]:
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Kato et al. and Ozai are analogous art because they are both concerned with the same field of endeavor, namely compositions suitable for use in optical semiconductors. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the (meth)acrylate ester that contains one or more SiH groups in an amount of 0.01 to 20% by mass, as taught by Ozai, to the composition of Kato et al., and would have been motivated to do so in order to achieve heat resistance and flexibility, as suggested by Ozai [0060].
Kato et al. fails to explicitly teach a molar ratio of all silicon atom-bonded hydrogen atoms relative to all silicon atom-bonded alkenyl groups in components (A) to (D) is 0.5 or more and less than 1.0. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the filing, a person of ordinary skill in the art would have found it obvious to modify the molar ratio of silicon atom-bonded hydrogen atoms relative to the silicon atom-bonded alkenyl groups, and would have been motivated to do so in order to achieve a desired viscosity of the composition for producing high hardness.
Regarding claim 9; Kato et al. teaches the composition may further comprise a reaction inhibitor [0040].
Regarding claims 10 and 12; Kato et al. teaches the composition may further comprise a free radical initiator, such as benzoyl peroxide (photo radical initiator) [0036].
Regarding claim 11; Kato et al. does not explicitly disclose wherein the component D is used in an amount such that a content of the (meth)acryloxyalkyl group is 4 mmol/100g or more relative to a total mass of components (A) to (E). According to the original specification, the (meth)acryloxyalkyl group content is varied depending on molecular structure of the component (D) [0073]. Since Ozai teaches the claimed structure of component D (see formula above), in the claimed amount, it is the position of the Examiner that the composition would necessarily possess 4 mmol/100g or more, as required by the claim language.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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