www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/043,813
`
`09/30/2020
`
`Junkang Liu
`
`80504US004
`
`6287
`
`Solventum Intellectual Properties Company
`2510 Conway Ave E
`3M Center, 275-6E-21
`St Paul, MN 5514
`
`MANGOHIG, THOMAS A
`
`1788
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/12/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`IPDocketing @ Solventum.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/043,813
`Liu et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Thomas A Mangohig
`1788
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 04 June 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-2,4-7 and 9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Claim(s) 1-2,4-7 and 9 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)[¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4% Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [[] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240606
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`This is an Office action based on application number 17/043,813 filed 30
`
`September 2020, which is a national stage entry of PCT/US2019/025141 filed 1 April
`
`2019, which claims priority to US Provisional Application No. 62/652,950filed 5 April
`
`2018. Claims 1-2, 4-7, and 9 are pending. Claims 3, 8, and 10-23 are canceled.
`
`2.
`
`Amendmentsto the claims, filed 30 April 2024, have been entered into the
`
`above-identified application.
`
`Notice of Pre-AlA or AIA Status
`
`3.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`4.
`
`A requestfor continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has beentimely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4 June
`
`2024 has been entered.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 3
`
`6.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences betweenthe prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating
`
`obviousness or nonobviousness.
`
`7.
`
`This application currently namesjoint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedas ofthe 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 andeffectivefiling dates of each claim that was not commonly
`
`ownedasofthe effectivefiling date of the later invention in order for the examinerto
`
`considerthe 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.
`
`8.
`
`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-AlA) for the rejection will
`
`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same undereither status.
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 4
`
`9.
`
`Claims 1-2, 4-7, and 9 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Liu et al. (US Patent Application Publication No. US
`
`2015/0376345 A1) (Liu).
`
`10.
`
`Regarding instant claims 1, 4-7 and 9:
`
`Liu discloses an adhesive gel comprising the reaction product of a condensation
`
`curable mixture of a silicone resin with at least one silanol-terminated siloxane fluid
`
`(paragraph [001 1)).
`
`Liu further discloses that the term “gel” refers to a semi-solid crosslinked matrix
`
`containing a liquid or a fluid (paragraph [0020)).
`
`Though Liu discloses that mixture is “condensation curable’, Liu also discloses
`
`that the mixture can be exposedto an external energy sourceto facilitate curing,
`
`wherein said external energy sourceis inclusive of ultra-violet radiation, gamma
`
`radiation, or an electron beam (paragraph [0071]). Therefore, there exists an
`
`embodiment encompassed by the scopeof Liu wherein the mixture is cured via electron
`
`beam curing (i.e., not prepared by condensation curing).
`
`Liu further discloses that the gels comprise at least 0.5% by weight extractable
`
`siloxane fluid inclusive of unreacted silanol fluid, added unreactive siloxane fluid, and a
`
`combination thereof (paragraph [0049]). Said “combination thereof’ is construed to meet
`
`the claimed “blend of siloxanefluids’ required by claim 9.
`
`It is noted that the content of extractable liquid includes the range recited by the
`
`claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges
`
`disclosed by prior art’ a prima facie case of obviousnessexists.” See MPEP § 2144.05.
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 5
`
`Liu further teachesthat the silanol-terminated siloxane fluids are described by
`
`Formula 1:
`
`
`
`wherein R1, R2, R3, and R4 are independently selected from the group consisting of an
`
`alkyl group, an aryl group, and a functional group; wherein each Rdis an alkyl group;
`
`wherein each X is a hydroxyl group; n and m areintegers; and wherein at least one of m
`
`or nis not 0 (paragraphs [0039-0040)).
`
`Examiner’s Note — the exact structure of Formula 1
`
`is not presentin the pre-
`
`grant publication of Liu. However, in the prosecution of Liu, the specification was
`
`amendedto includethe structure of Formula 1, as reproduced below:
`
`
`Please aniend the specification as follows:
`
`Chi page 10, please the following struciefor Formala t which was somease lost daring
`
`the conversian from the WORD document te hie POF version of the specificntion. There is a
`
`oe Bes
`blank space starting at Hine 4 of page 1) where the structure for Formuls | was located. Stace
`
`scribed is the specification and Formula 1A is the same as Formula f wath
`
`the owydifference beingthat the terminal “SN” groups of Formula | are RS greagps in Pormala fA,
`
`this amendment is clearky correcting am inadvertent error in dacument conversion and does not
`
`Prvolwe new slater.
`
`Rm
`| all
`weer
`cat Ek RL.
`rhs ‘ oe 7
`at
`;
`ud
`$35
`Se
`
` a8
`
`RG
`:
`Sh =
`a |
`x
`
`x
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 6
`
`Liu further discloses that the unreactive siloxane fluids present in the gels of the
`
`instant invention have the general formula show in 1A below:
`
`Forsaria 1A
`
`
`
`a3
`
`RS
`
`is
`
`Re
`
`RA
`
`RS
`
`RS
`
`
`
`Bs
`
`ae
`
`wherein R1, R2, R3, and R4 are independently selected from the group consisting of an
`
`alkyl group, an aryl group, and a functional group; wherein each R85is an alkyl group;
`
`wherein n and m areintegers; and wherein at least one of m orn is not 0 (paragraph
`
`[0046)).
`
`Asto the claimed weight average molecular weightof the siloxane fluid, each of
`
`the silanol-terminated siloxane fluids and the unreactive siloxane fluids are substantially
`
`identical to the polymeric fluid described by Formula 1 of the claims, and given thatall of
`
`the variables Formula 1 and 1A of Liu are identical to Formula 1 of the claims, the scope
`
`of Liu must encompass an embodimentthat is substantially identical to that of the claim
`
`and have the same weight average molecular weight.
`
`Wherethe claimed and prior art products are identical or substantially identical in
`
`structure or composition, or are produced by identical or substantially identical
`
`processes, a prima facie case of either anticipation or obviousness has been
`
`established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When
`
`the PTO showsa sound basis for believing that the products of the applicant and the
`
`prior art are the same, the applicant has the burden of showing that they are not." /n re
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 7
`
`Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP
`
`§2112.01(I).
`
`11.
`
`Regarding instant claim 2:
`
`Liu further discloses that the condensation curable mixture includes commercially
`
`available tackifying resins that are often referred to assilicate/silicone tackifying resins
`
`(paragraph [0032)).
`
`Answers to Applicant’s Arguments
`
`12.
`
`Applicant’s arguments regarding the prior art rejection of record are fully
`
`considered, but are unpersuasive.
`
`13.
`
`Applicantfirst restates the previous argumentssetforth in the previous Office
`
`action. Specifically, Applicant contends that Liu does not describe a siloxane matrix not
`
`prepared by condensation curing. Applicant contends that Liu discloses that the
`
`condensation curable compositions of its disclosure are room temperature curable, but
`
`can be exposed to an external energy sourceto facilitate curing. Applicant contends
`
`that this disclosure suggests that a condensation cured matrix may a/so be exposedto
`
`an external energy sourceto facilitate curing.
`
`Applicant's argumentis unpersuasive. The Examiner maintains the position that
`
`although Liu discloses that the disclosed mixture is “condensation curable’, Liu also
`
`discloses that the mixture can be exposed to an external energy sourceto facilitate
`
`curing, wherein said external energy sourceis inclusive of ultra-violet radiation, gamma
`
`radiation, or electron beam radiation (see Liu at paragraph [0071]). One of ordinaryskill
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 8
`
`in the art would be readily aware that condensation curing requires moisture to facilitate
`
`curing; further, one of ordinary skill in the art would readily be aware that the external
`
`energy sources disclosed by Liu are capable of performing a curing action to the
`
`exposed mixture. Therefore, the Examiner maintains the position that there exists an
`
`embodiment encompassed by the scopeof Liu wherein the mixture is cured via electron
`
`beam curing (i.e., not prepared by condensation curing). As to Applicant’s arguments
`
`that all the compositions of Liu are taught to be condensation curable, the fact that a
`
`composition is “condensation curable” does not teach away from the embodimentthat
`
`the composition is cured using a different, positively disclosed method (e.g., electron
`
`beam curing).
`
`It appears that Applicant may be arguing that the compositions of their invention
`
`are “not condensation curable’ (e.g., the structure and/or composition is not capable of
`
`being condensation cured); however, the construct of the claims does not necessarily
`
`require this limitation.
`
`Applicant further argues that Liu fails to teach or suggest a gel adhesive
`
`composition with an extractable polymeric fluid with a weight average molecular weight
`
`greater than 275,000 grams/mole, wherein a weight percentage of the extractable
`
`polymeric fluid comprises 26-80 weight %of the gel adhesive composition. Applicant
`
`contendsthat Liu does not describeafluid that is extractable and thus not anintegral
`
`part of the crosslinked polymeric siloxane matrix. Applicant further disagrees with the
`
`Examiner’s position that the Formula 1 and 1a of Liu necessarily encompasses an
`
`embodimentthat having the molecular weight recited by the claim. Applicant alleges
`
`that these characteristics are vitally important to the performanceof the gel adhesive
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 9
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`composition; furthermore, Applicant contends that such characteristics are discovered
`
`and optimized through extensive research and experimentation, and that such values
`
`are in no way described, taught, or suggested by Liu.
`
`Applicant’s argumentis unpersuasive. As cited in the prior art rejection of record,
`
`Liu discloses that the extractable liquids are inclusive of unreactedsilanol fluid, added
`
`unreactive siloxane fluid, and a combination thereof. Each of Formulas 1 and 1a
`
`represent said silanol fluid and unreactive siloxane fluid. Therefore, each of said fluids
`
`are considered to meet the claimed extractable fluid. Furthermore, as cited in the prior
`
`art rejections of record, each of Formulas 1 and 1a are the same asthe formula recited
`
`by the claims (i.e., the same moieties X and R1-R5 and non-zero integers mand n.
`
`Therefore, the scope of Liu must encompass an embodimentthat is substantially
`
`identical to the liquid of the claims and have the same properties (e.g., weight average
`
`molecular weight).
`
`Applicant appears to allege unexpected results attributed to the claimed
`
`molecular weight. However, Applicant's position is merely conclusory and not supported
`
`by evidence commensurate in scope with the claims.
`
`Conclusion
`
`14.
`
`All claims are either identical to or patentably indistinct from claims in the
`
`application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction
`
`would not be proper) andall claims could have beenfinally rejected on the grounds and
`
`art of record in the next Office action if they had been entered in the application prior to
`
`entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINALeventhough it
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 10
`
`is a first action after the filing of a request for continued examination and the submission
`
`under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of
`
`time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the eventa first reply is filed within
`
`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action. In no event, however,will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`15.=Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Thomas A Mangohig whosetelephone number is
`
`(571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Alicia Chevalier can be reached on (571)272-1490. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`

`

`Application/Control Number: 17/043,813
`Art Unit: 1788
`
`Page 11
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
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`
`/Scott R. Walshon/
`Primary Examiner, Art Unit 1759
`
`/TAM/
`Examiner, Art Unit 1788
`06/06/2024
`
`