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 .
Claim Objections
Claims 8 and 16 are objected to because of the following informalities:
Claim 8, line 2, “PFAS” should read “perfluoroalkyl substance or polyfluoroalkyl substance”.
Claim 16, line 2, “PFAS” should read “perfluoroalkyl substance or polyfluoroalkyl substance”.
Appropriate correction is required.
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 7 and 13 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.
Claim 7 recites “comprising no deleterious substance”. This is indefinite because it is unclear what this encompasses, i.e. it is unclear what kind or extent of the harm or damaged a substance would need to cause in order to be categorized as deleterious as claimed. There is nothing in the specification that defines this term.
Paragraph 0102 of the present specification states, “Specific examples of the deleterious substance include an antimony compound.” Therefore, for purposes of examination, “comprising no deleterious substance” will be interpreted as “comprising no antimony compound”.
Claim 13 recites “curing-type polyorganosilsesquioxane” and “curing-type resin”. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
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.
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.
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2017/0130006 A1).
Regarding Claims 1-2, Saito discloses a thermosetting resin composition comprising a thermosetting resin such as epoxy silicone, which may be an organopolysiloxane having one or more, including two or more, alicyclic epoxy groups (paras 0031, 0035) (i.e. corresponding to the claimed first epoxy compound).
The thermosetting resin composition may further comprise an organic epoxy compound other than the thermosetting resin (para 0013) (i.e. corresponding to claimed second epoxy compound), a silicone oil such as organopolysiloxane having silanol groups (para 0098), and an additional organic monomer or polymer such as a cyclic ether which is an epoxy or oxetane (paras 0133-0136) (i.e. corresponding to claimed third epoxy compound or oxetane compound).
In light of the overlap between the claimed composition and that disclosed by Saito, it would have been obvious to one of ordinary skill in the art to produce a composition that is both disclosed by Saito and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 3, Saito discloses all the limitations of the present invention according to Claim 1 above. Saito further discloses the thermosetting resin composition comprises 60-99 wt% inorganic filler (para 0121). Therefore, when the inorganic filler is 60 wt% of the thermosetting resin composition, the curable compounds would comprise 40 wt%.
Saito further discloses the thermosetting resin composition comprises 1-40 wt% thermosetting resin (para 0034). Therefore, the thermosetting resin, which is the organopolysiloxane having alicyclic epoxy groups, would be 2.5-100 wt% of the curable compounds of the thermosetting resin composition (1/40 to 40/40).
Regarding Claim 5, Saito discloses all the limitations of the present invention according to Claim 1 above. Saito further discloses the thermosetting resin composition comprises 60-99 wt% inorganic filler (para 0121). Therefore, when the inorganic filler is 60 wt% of the thermosetting resin composition, the curable compounds would comprise 40 wt%.
Saito further discloses the thermosetting resin composition comprises 0.1-25 wt% cyclic ether. Therefore, the cyclic ether, which may be oxetane, comprises 0.25-62.5 wt% of the curable compounds of the thermosetting resin composition (0.1/40 to 25/40).
Regarding Claim 6, Saito discloses all the limitations of the present invention according to Claim 1 above. Saito further discloses the thermosetting resin composition comprises 60-99 wt% inorganic filler (para 0121). Therefore, when the inorganic filler is 60 wt% of the thermosetting resin composition, the curable compounds would comprise 40 wt%.
Saito further discloses the thermosetting resin composition comprises 0.2-20 wt% silicone oil (para 0140). Therefore, the silicone oil, which may be organopolysiloxane having silanol groups, comprises 0.5-50 wt% of the curable compounds of the thermosetting resin composition (0.2/40 to 20/40).
Regarding Claim 7, Saito discloses all the limitations of the present invention according to Claim 1 above. Saito does not disclose or suggest use of antimony compounds (i.e. deleterious compounds). Therefore it would have been obvious to produce the composition of Saito comprising no antimony compounds (i.e. deleterious compounds).
Regarding Claim 8, Saito discloses all the limitations of the present invention according to Claim 1 above. Saito does not require the use of perfluoroalkyl substance or polyfluoroalkyl substance. Therefore it would have been obvious to produce the composition of Saito comprising no perfluoroalkyl substance or polyfluoroalkyl substance.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Saito as applied to claim 1 above, and further in view of Tajima et al. (JP 2007/009086 A).
Regarding Claim 4, Saito discloses all the limitations of the present invention according to Claim 1 above. Saito does not disclose the amount of the organic epoxy compound other than the thermosetting resin (i.e. claimed second epoxy compound).
Tajima discloses a curable composition comprising (A) an epoxy silicone according to formulas (1) and (2), which are organosiloxanes having two alicyclic epoxy groups, (B) a polyfunctional epoxy silicone other than (A), (C) a polydimethylsiloxane having silanol groups, and (E) an epoxy compound having no siloxane structure (para 0008), and may comprise oxetane and inorganic filler (para 0036). Tajima discloses the content of epoxy (B) is 15-65 parts by mass when the total of (A), (B), and (C) is 100 parts by mass, in order to prevent cracks from occurring during curing and to prevent significant tack (para 0042).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Saito to incorporate the teachings of Tajima and use 15-65 parts epoxy (B) of Tajima as the organic epoxy compound of Saito, relative to 100 parts of the thermosetting resin, the epoxy (B), and the silicone oil. Doing so would prevent cracks from occurring during curing and prevent significant tack.
Saito discloses the thermosetting resin composition comprises 60-99 wt% inorganic filler (para 0121). Therefore, when the inorganic filler is 60 wt% of the thermosetting resin composition, the curable compounds would comprise 40 wt%.
Saito further discloses the thermosetting resin composition comprises 0.1-25 wt% cyclic ether. Therefore, the cyclic ether, which may be oxetane, comprises 0.25-62.5 wt% of the curable compounds of the thermosetting resin composition (0.1/40 to 25/40).
The total of the thermosetting resin, the epoxy (B), and the silicone oil would comprise the remainder of the curable compounds of the thermosetting resin composition, which would be 37.5-99.75% (100-62.5 to 100-0.25). Since the epoxy (B) comprises 15-65 parts of with respect to 100 parts of this amount, the epoxy (B) would comprise 5.6-64.8 wt% of the curable compounds of the thermosetting resin composition (15*37.5% to 65*99.75).
Claims 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Saito as applied to claim 1 above, and further in view of Kawahara et al. (WO 2022/044968 A1).
Regarding Claims 9-14 and 17, Saito discloses all the limitations of the present invention according to Claim 1 above. Saito further discloses the thermosetting resin composition may comprise a silane coupling agent, and may be used in a variety of applications, including as an adhesive (paras 0171, 0184).
Saito does not disclose the thermosetting resin composition used as an undercoat as claimed.
Kawahara discloses a curable composition comprising polyorganosilsesquioxane and an adhesive sheet including the curable composition as an adhesive layer (para 0001). The curable composition comprising polyorganosilsesquioxane cures to form hard coat layers (para 0008) having a pencil hardness of 3H or more (para 0201), and can be used as a constituent material in products such as display devices (para 0211).
Kawahara further discloses the adhesive sheet 3, comprising an adhesive layer 31 comprising the curable composition, a base material 32, and an anchor layer 33 between the base material and adhesive layer (para 0251, FIG. 10)
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The base material may be a glass material (para 0254). The anchor coat has a thickness of 0.001-10000 microns (para 0257). The composition of the anchor coat is not limited. Kawahara discloses an adhesive sheet having an anchor coat containing a silane coupling agent and an adhesive layer formed of a curable composition containing the polyorganosilsesquioxane, wherein the adhesive layer is provided on the surface of the anchor layer, has excellent crack resistance, heat resistance, adhesiveness to an adherend, and adhesion (para 0256).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Saito in view of Kawahara to use the thermosetting resin composition of Saito as the anchor layer of the adhesive sheet of Kawahara. Doing so would produce an adhesive sheet, i.e. laminate, with excellent crack resistance, heat resistance, adhesiveness to an adherend, and adhesion.
The product of Saito in view of Kawahara is a laminate having a glass base layer (i.e. substrate), an anchor layer (i.e. undercoat layer) comprising the thermosetting resin composition of Saito and having a thickness of 0.001-10000 microns, and an adhesive layer (i.e. hardcoat layer) comprising the curable composition of Kawahara, which may be used as a constituent material in products such as display devices and cured so that the hard coat layer has a hardness of 3H or more.
Regarding Claim 15, Saito in view of Kawahara discloses all the limitations of the present invention according to Claim 11 above. Since Saito in view of Kawahara discloses a laminate having materials as claimed, including undercoat and hard coat layers as claimed, the laminate of Saito in view of Kawahara would necessarily have 90 or more squares remain intact as claimed when undergoing the test described in Claim 15.
Regarding Claim 16, Saito in view of Kawahara discloses all the limitations of the present invention according to Claim 11 above. There is no disclosure in Saito or Kawahara that requires the use of perfluoroalkyl substance or polyfluoroalkyl substance in the hard coat layer. Therefore it would have been obvious to produce the laminate of Saito in view of Kawahara, wherein the hard coat layer includes no perfluoroalkyl substance or polyfluoroalkyl substance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/ Examiner, Art Unit 1787
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