DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
(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.
2. Claims 1-4, 7, 8, 11-14, 16, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Zhu (US 2010/0316876 A1).
Zhu discloses a borosiloxane composition comprising a borosiloxane (component A) and an organosilicon compound (component B), a borosiloxane adhesive comprising a cured product of at least one borosiloxane and the organosilicon compound; and a coated substrate and a laminated substrate (equivalent to the film of the claimed invention wherein the substrate is equivalent to the base layer), each comprising the borosiloxane adhesive (equivalent to the adhesive layer of the claimed invention and meting the limitation that the adhesive layer comprises polyborosiloxane). The borosiloxane has high resistance to moisture, high transparency, and excellent adhesion to various substrates. Moreover, the borosiloxane adhesive has high adhesion during and after exposure to temperatures above the decomposition temperature of the adhesive, low flammability (as evidenced by low heat release rate), and high char yield. The borosiloxane adhesive is useful in applications requiring adhesives having high moisture resistance, high adhesion at elevated temperatures, low flammability, and high transparency. FIG. 2 shows a cross-sectional view of the previous embodiment of the laminated substrate, further comprising a second borosiloxane adhesive coating on the second substrate and a third borosiloxane adhesive coating on the second opposing surface of the first substrate. The organosilicon compound has an average of at least two silicon-bonded hydrogen atoms per molecule, alternatively at least three silicon-bonded hydrogen atoms per molecule. It is generally understood that cross-linking occurs when the sum of the average number of alkenyl groups per molecule in component (A) and the average number of silicon-bonded hydrogen atoms per molecule in component (B) is greater than four. The organosilicon compound can be an organohydrogensiloxane such as a polysiloxane. Examples of organohydrogensiloxanes include, but are not limited to polydimethylsiloxanes (equivalent to the polydimethylsiloxane of the claimed invention). The concentration of component (B) is sufficient to cure (cross-link) the borosiloxane of component (A). The exact amount of component (B) depends on the desired extent of cure, which generally increases as the ratio of the number of moles of silicon-bonded hydrogen atoms in component (B) to the number of moles of alkenyl groups in component (A) increases. The concentration of component (B) is typically sufficient to provide from 0.5 to 100 moles of silicon-bonded hydrogen atoms, alternatively from 1 to 10 moles of silicon-bonded hydrogen atoms, alternatively from 1.1 to 6 moles of silicon-bonded hydrogen atoms, per mole of alkenyl groups in component (A) (meeting the limitations of claims 3 and 14). The borosiloxane composition typically does not contain an organic solvent. However, the composition may further comprise an organic solvent to reduce viscosity of the composition or facilitate application of the composition on a substrate. Examples of substrates include, but are not limited to, polyolefins such as polyethylene and polypropylene (meeting the limitations of claim 8). The borosiloxane adhesive coating can be a single layer coating comprising one layer of a borosiloxane adhesive, or a multiple layer coating comprising two or more layers of at least two different borosiloxane adhesives, where directly adjacent layers comprise different cured products (i.e., cured products have a different composition and/or property). The multiple layer coating typically comprises from 2 to 7 layers, alternatively from 2 to 5 layers, alternatively from 2 to 3 layers (thus teaching that the polyborosiloxane can be an intermediate layer as well as recited in claim 1 and can comprise additional layers ad recited in claim 4). The single layer borosiloxane adhesive coating typically has a thickness of from 0.03 to 300 microns (meeting the limitations of claims 7 and 16). The coated substrate can be prepared by forming a borosiloxane adhesive coating on a substrate, where the adhesive coating and the substrate are as defined and exemplified by Zhu. For example, a coated substrate comprising a single-layer borosiloxane adhesive coating can be prepared by (i) applying a borosiloxane composition, described above, on a substrate to form a film, and (ii) curing the borosiloxane of the film. The borosiloxane composition can be applied on the substrate using conventional methods such as spin coating, dip coating, spray coating, flow coating, screen printing, and roll coating. When present, the solvent is typically allowed to evaporate from the coated substrate before the film is heated. Any suitable means for evaporation may be used such as simple air drying, applying a vacuum, or heating (meeting the limitations of claims 18 and 20). The method of preparing the coated substrate, wherein the coating comprises a single layer adhesive coating can further comprise repeating the steps (i) and (ii) to increase the thickness of the coating, except the borosiloxane composition is applied on the cured adhesive film rather than the substrate, and the same borosiloxane composition is used for each application. The disclosed laminated substrate comprises a first substrate; at least one additional substrate overlying the first substrate; and a borosiloxane adhesive coating on at least a portion of at least one surface of each substrate, provided at least a portion of the adhesive coating is between and in direct contact with opposing surfaces of adjacent substrates. (See Abstract and paragraphs 0011, 0014, 0018-0022, 0105-0107, 0111-0113, and 0119-0159).
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.
3. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 2010/0316876 A1).
With regards to the thickness of each layer, the Examiner would like to point out that workable physical properties such as thicknesses are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties.
4. Claims 9, 10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 2010/0316876 A1).
Zhu does not teach that the adhesive layer contains an acrylic pressure sensitive adhesive.
However, Shintani et al. teach that pressure-sensitive adhesive layers can contain an acrylic polymer to obtain an adhesive sheet that is excellent in pressure-sensitive adhesive properties, releasability, and expansibility. (See Abstract).
Accordingly, it would have been obvious to one having ordinary skill in the art to add a can acrylic pressure sensitive adhesive to the adhesive layer taught by Zhu given that Shintani et al. teach acrylic polymers can be used as adhesives to obtain excellent pressure-sensitive adhesive properties, releasability, and expansibility.
5. Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (US 4405687 A).
Morita discloses a polyborosiloxane composition to be used for the formation of an insulating layer on an electric conductor wherein the composition comprises (A) a polyborosiloxane produced by the reaction of boric acid, a boric acid derivative, or a halogenated boron with a silane compound and a silicone oil, (B) a silicone resin or a synthetic resin having a nitrogen-containing heterocyclic ring in the molecule, (C) an inorganic filler, and (D) a common solvent for (A) and (B). An insulated electric wire excellent in thermal resistance is obtained by applying the composition to an electric conductor and baking the applied layer of the composition. The silicone oil selected from the group consisting of dimethyl silicone oil and the amount of the silicone oil of (3) under (A) is in the range of 5 to 100 parts by weight based on 100 parts by weight of the boron compound of (1) and the silane compound of (2) combined. An insulated electric wire having an insulating layer of outstanding thermal resistance is obtained by applying to the surface of an electric conductor the disclosed polyborosiloxane composition for the formation of an electrically insulating layer and baking the applied layer or wrapping glass fibers on the electric conductor, impregnating the layer of glass fibers with the composition, and baking the impregnated layer of glass fibers. (See Abstract and Column 1, lines 5-35, 39-68, and Column 2, lines 1-15).
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CALLIE SHOSHO can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787
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