DETAILED ACTION
The communication dated 5/22/2026 has been entered and fully considered.
Claims 1-10 are pending. Claim 9 is withdrawn from further consideration.
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 1-8 and 10, in the reply filed on 5/22/2026 is acknowledged. The traversal is on the ground(s) that CAVEZZAN is not in the same field of endeavor in regards to food contact. This is not found persuasive because the Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1 and 9-10. When reading the preamble in the context of the entire claim, the recitation “for food contact” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Furthermore, the limitation “for food contact” is an intended use. It is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. See In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). See also MPEP 2111.02.
The requirement is still deemed proper and is therefore made FINAL.
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/22/2026.
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.
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.
Claims 2 and 4-8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation a catalytically effective amount of at least one polyaddition catalyst C, and the claim also recites optionally a platinum- based polyaddition catalyst, and - optionally at least one crosslinking inhibitor D which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation wherein the silicone composition does not contain any organic solvent, and the claim also recites optionally does not contain toluene or xylene which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation wherein the silicone composition which is crosslinkable by a polyaddition reaction has a viscosity of greater than 5000 mPa.s, and the claim also recites optionally between 10 000 mPa.s and 100 000 mPa.s which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation wherein the support is a fibrous support, and the claim also recites optionally, the support is selected from paper and/or cardboard which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation wherein the silicone coating suitable for food contact comprises or consists of a water-repellent and non-stick coating or film obtained by coating the support then crosslinking a silicone emulsion, and the claim also recites optionally an aqueous silicone emulsion which can be crosslinked to give a silicone elastomer by a polyaddition reaction which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation wherein said article is a food packaging, and the claim also recites optionally for leaktight packaging, optionally with the presence of an aeration valve, sandwich bags, bags with or without a transparent window, and/or bloomer bags - semi-rigid packaging optionally one or more of boxes, lunchboxes, pastry boxes, hamburger boxes, cases, cones, punnets, pots with or without lids, cups, shells, refill cartons, and/or cartons - rigid packaging optionally a corrugated cardboard box optionally a pizza box type which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1 and 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cavezzan et al. (U.S. 4,956,231), hereinafter CAVEZZAN.
Regarding claim 1, CAVEZZAN teaches: An article suitable for food contact (CAVEZZAN teaches an article suitable for food contact [Abstract].), said article comprising a first substrate and a second substrate which are joined by an adhesive (CAVEZZAN teaches a first substrate and a second substrate joined by an adhesive [Abstract; Col. 1, lines 51-60; Col. 2, lines 67-68; Col. 3, line 28].), said first substrate comprising a support coated with a silicone coating suitable for food contact (CAVEZZAN teaches the first substrate is coated with a silicone coating [Col. 1, lines 55-56]. CAVEZZAN teaches the silicone coating is suitable for food contact [Col. 1, lines 19-26].), said adhesive being inserted between the two substrates and being in contact with the silicone coating of said first substrate (CAVEZZAN teaches the adhesive is inserted between the two substrates and in contact with the silicone coating of said substrate [Col. 1, lines 45-56; Col. 6, lines 8-30].), wherein said adhesive is a structural silicone adhesive suitable for food contact and obtained by crosslinking a silicone composition which is crosslinkable by a polyaddition reaction (CAVEZZAN teaches adhesive is a silicone adhesive and obtained by crosslinking a silicone composition [Claim 1; Col. 2, lines 65-68 – Col. 3, lines 15].).
Regarding claim 6, CAVEZZAN teaches: wherein the support is a fibrous support; optionally, the support is selected from paper and/or cardboard (CAVEZZAN teaches the support can be made of paper or cardboard [col. 5, lines 10-14].).
Regarding claim 7, CAVEZZAN teaches: wherein the silicone coating suitable for food contact comprises or consists of a water-repellent and non-stick coating or film obtained by coating the support then crosslinking a silicone emulsion (CAVEZZAN teaches coating the support with a non-stick coating and then crosslinking a silicone emulsion [Col. 6, lines 8-22]. ), optionally an aqueous silicone emulsion which can be crosslinked to give a silicone elastomer by a polyaddition reaction.
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PIBRE et al. (U.S. PGPUB 2019/0249036), hereinafter PIBRE.
Regarding claim 10, PIBRE teaches: An article comprising a structural silicone adhesive (PIBRE teaches a silicone adhesive that can be placed on a flexible media such as paper [0003].), suitable for food contact (PIBRE teaches the article may be food paper (cooking, packaging) [0003].) and obtained by crosslinking a silicone composition which is crosslinkable by a polyaddition reaction, wherein said article is suitable for food contact (PIBRE teaches crosslinking a silicone composition which is crosslinkable by a polyaddition reaction [0026-0034].).
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 2-5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cavezzan et al. (U.S. 4,956,231), hereinafter CAVEZZAN, in view of PIBRE et al. (U.S. PGPUB 2019/0249036), hereinafter PIBRE.
Regarding claim 2, CAVEZZAN teaches all of the claimed limitations as stated above, but is silent as to: wherein the silicone composition which is crosslinkable by a polyaddition reaction comprises: - at least one polyorganosiloxane A having, per molecule, at least two C2-C12 alkenyl groups bonded to the silicon, - at least one polyorganosiloxane B having, per molecule, at least two SiH units, - a catalytically effective amount of at least one polyaddition catalyst C, optionally a platinum- based polyaddition catalyst, and - optionally at least one crosslinking inhibitor D. In the same field of endeavor, adhesives, PIBRE teaches: wherein the silicone composition which is crosslinkable by a polyaddition reaction comprises: - at least one polyorganosiloxane A having, per molecule, at least two C2-C12 alkenyl groups bonded to the silicon (PIBRE teaches at least one polyorganosiloxane A with at least two C2 to C12 alkenyl groups bonded to silicon [0060; 0110].), - at least one polyorganosiloxane B having, per molecule, at least two SiH units (PIBRE teaches at least one polyorganosiloxane B, at least two SiH units [0156].), - a catalytically effective amount of at least one polyaddition catalyst C, optionally a platinum- based polyaddition catalyst (PIBRE teaches a polyaddition catalyst C that is platinum-based [0159].), and - optionally at least one crosslinking inhibitor D (PIBRE teaches at least one crosslinking inhibitor D [0159].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify CAVEZZAN, by having polyorganosiloxane A and B and a catalyst that is platinum-based, and an inhibitor, as suggested by PIBRE, in order to prevent mist formation during the coating of the paper [0027].
Regarding claim 3, CAVEZZAN teaches all of the claimed limitations as stated above, but is silent as to: wherein the silicone composition which is crosslinkable by a polyaddition reaction comprises between 5% and 40% by weight of filler relative to the total weight of the silicone composition. In the same field of endeavor, adhesives, PIBRE teaches: wherein the silicone composition which is crosslinkable by a polyaddition reaction comprises between 5% and 40% by weight of filler relative to the total weight of the silicone composition (PIBRE teaches the silicone composition teaches the reaction comprises an amount of filler between 0.5% and 30% by weight [0109], overlapping the claimed range. Overlapping ranges are prima facie evidence of obviousness.). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify CAVEZZAN, by having a filler between 0.5% and 30% by weight, as suggested by PIBRE, in order to prevent mist formation during the coating of the paper [0027].
Regarding claim 4, CAVEZZAN teaches all of the claimed limitations as stated above, but is silent as to: wherein the silicone composition does not contain any organic solvent, and optionally does not contain toluene or xylene. In the same field of endeavor, adhesives, PIBRE teaches: wherein the silicone composition does not contain any organic solvent, and optionally does not contain toluene or xylene (PIBRE teaches the compounds are brought into contact in the abscence of a solvent [0102-0106].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify CAVEZZAN, by mixing the components without a solvent, as suggested by PIBRE, in order to make a bulk quantity [0102].
Regarding claim 5, CAVEZZAN teaches all of the claimed limitations as stated above, but is silent as to: wherein the silicone composition which is crosslinkable by a polyaddition reaction has a viscosity of greater than 5000 mPa.s, optionally between 10 000 mPa.s and 100 000 mPa.s. In the same field of endeavor, adhesives, PIBRE teaches: wherein the silicone composition which is crosslinkable by a polyaddition reaction has a viscosity of greater than 5000 mPa.s, optionally between 10 000 mPa.s and 100 000 mPa.s (PIBRE teaches the viscosity is between 100 mPa.s and 50,000 mPa.s, which encompasses the claimed range [0021; 0098-0099].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify CAVEZZAN, by having the viscosity between 100 mPa.s and 50,000 mPa.s, as suggested by PIBRE, in order to prevent mist formation during the coating of the paper [0027].
Regarding claim 8, CAVEZZAN teaches all of the claimed limitations as stated above, but is silent as to: wherein said article is a food packaging, optionally selected from: - flexible packaging optionally one or more of bags and pouches, optionally for leaktight packaging, optionally with the presence of an aeration valve, sandwich bags, bags with or without a transparent window, and/or bloomer bags - semi-rigid packaging optionally one or more of boxes, lunchboxes, pastry boxes, hamburger boxes, cases, cones, punnets, pots with or without lids, cups, shells, refill cartons, and/or cartons - rigid packaging optionally a corrugated cardboard box optionally a pizza box type. In the same field of endeavor, adhesives, PIBRE teaches: wherein said article is a food packaging (PIBRE teaches an article that is food packaging [0003].), optionally selected from: - flexible packaging optionally one or more of bags and pouches, optionally for leaktight packaging, optionally with the presence of an aeration valve, sandwich bags, bags with or without a transparent window, and/or bloomer bags - semi-rigid packaging optionally one or more of boxes, lunchboxes, pastry boxes, hamburger boxes, cases, cones, punnets, pots with or without lids, cups, shells, refill cartons, and/or cartons - rigid packaging optionally a corrugated cardboard box optionally a pizza box type. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify CAVEZZAN, by having the article be for food packaging, as suggested by PIBRE, as it’s a known option in the art. See KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.").
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE BEHA whose telephone number is (571)272-2529. The examiner can normally be reached MONDAY - FRIDAY 9:00 A.M. - 5:00 P.M.
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/C.B./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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