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 .
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.
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.
Claims 1, 2, 3, 6, 11, 15, 16, 17, 22, 23, 26, 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Farhat (US20070078251, herein Farhat), in the view of Grau (US20170372815, herein Grau).
Regarding claims 1, 6, 22, 23, 26, 30-32, Farhat teaches a process for producing an aqueous coating composition, the process comprising a curable silicone elastomer composition, the composition comprising:
(A) mixture of various polyorganosiloxanes, including: formula I [0022] which can containg 3,3,3-trifluoropropyl [0018] as the claimed fluorinated polydiorganosiloxane; “formula I” [0022] which can contain alkyl groups [0018] as the claimed non-fluorinated polydiorganosiloxane.
Farhat teaches example 7, fluorosilicone base rubber, 15% [Table 1, 0076] reads on the fluorinated polydiorganosiloxane, lies in the claimed range; example 7, vinylmethylsilicone base rubber 1, 60%; vinylmethylsilicone base rubber 1, 25% [Table 1, 0076] reads on the non-fluorinated polydiorganosiloxane, concentration add up as 85%, lies in the claimed range. (B) at least one “filler; silica” [0042];
Farhat further teaches at least one of (C) or (D) wherein (C) is organosilicon compounds bearing silicon-bonded hydrogen (C)(i), [0034] at least one “hydrosilation catalyst” (C)(ii), [0039] and optionally at least one cure inhibitor (C)(iii); Inhibitors [0044] or
(D) organic peroxides [0044]; and quartz flour; 0% to 60% by weight [0043], reads on the semiconductor filler and overlaps the claimed range.
Farhat teaches formula I [0022] including: 3,3,3-trifluoropropyl [0018] as the claimed fluorinated polydiorganosiloxane; formula I [0022] including: alkyl groups [0018] as the claimed non-fluorinated polydiorganosiloxane.
Farhat further teaches that the gum plasticity of the gum components is preferably in the range of 85-115 mm [0022] which lies in the claimed range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Farhat teaches the claimed curable silicone elastomer composition as set forth above, but silent on the wherein the high voltage direct current insulator is a cable accessory selected from the group consisting of a cable joint, a cable termination, or a cable connector. However, Grau teaches compositions including: polyorganosiloxane with 3,3,3-trifluoropropyl groups [0127] based curable silicone composition [0306], which are suitable materials for the manufacture of stretchable elastic deformable cable joints, cable terminations other insulation accessories [0013]; insulator for high voltage direct current (HVDC) applications [0024]. Farhat and Grau are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyorganopolysiloxane based curable functional silicone materials development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Farhat to add the teachings of Grau and provide wherein said compositions are suitable materials for the manufacture of stretchable elastic deformable cable joints, cable terminations other insulation accessories [0013]; insulator for high voltage direct current (HVDC) applications [0024] Doing so would further achieve the predictable result apply the as-developed composition into specified product development.
Regarding claim 2, Farhat teaches conductive fillers may be employed [0050] indicates the conductive filler selection is optional and hence can be excluded, which is zero% of conductive filler.
Regarding claim 3, Farhat teaches “The constituents (A) of the silicone rubber compositions according to the invention are polyorganosiloxanes which contain at least two alkenyl groups per molecule” [0015].
Regarding claim 11, Farhat teaches “the components are mixed” [0054] and “After preparation of the sheets, which are typical rubbery solids, the sheets are contacted together by hand and the curing behavior observed” [0054], reads on the claimed method.
Regarding claim 15, Farhat is silent on the method for the manufacture of a high voltage direct current insulator in accordance with claim 11, wherein the curable silicone rubber composition is further processed by injection moulding, encapsulation moulding, press moulding, dispenser moulding, extrusion moulding, transfer moulding, press vulcanization, centrifugal casting, calendering, bead application or blow moulding. However, Grau teaches injection molding [0172]; encapsulation [0317]; mechanical pressure [0313]; manufactured by an extrusion process [0308].
Farhat and Grau are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyorganopolysiloxane based curable functional silicone materials development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Farhat to add the teachings of Grau and provide wherein said injection molding [0172]; encapsulation [0317]; mechanical pressure [0313]; manufactured by an extrusion process [0308]. Doing so would further achieve the predictable result apply the as-developed composition into moldable, processable materials toward product development.
Regarding claim 16, Farhat teaches the claimed composition in accordance with claim 11, Farhat is silent on wherein the curable silicone elastomer composition is introduced into a mold prior to cure to form a moulded silicone article. However, Grau teaches encapsulating silicone composition according to the invention in a mold to form and cure a cable joint or cable termination. [0312], which indicates the curable silicone elastomer composition is introduced into a mold first, then perform the curing step.
Farhat and Grau are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyorganopolysiloxane based curable functional silicone materials development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Farhat to add the teachings of Grau and provide wherein said encapsulating silicone composition according to the invention in a mold to form and cure a cable joint or cable termination. [0312] into the product development. Doing so would further achieve the predictable result apply the as-developed composition into moldable, processable materials toward product development.
Regarding claim 17, Farhat is silent on the method for the manufacture of a high voltage direct current insulator in accordance with claim 11, wherein the curable silicone elastomer composition is either injection moulded to form an article or overmoulded by injection moulding around an article. However, Grau teaches injection molding [0172].
Farhat and Grau are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyorganopolysiloxane based curable functional silicone materials development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have optimized Farhat to add the teachings of Grau and provide wherein said injection molding [0172]. Doing so would further achieve the predictable result apply the as-developed composition into moldable, processable materials toward product development.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Farhat (US20070078251, herein Farhat).
Regarding claim 4, Farhat teaches a process for producing an aqueous coating composition, the process comprising a curable silicone elastomer composition, the composition comprising:
(A) mixture of various polyorganosiloxanes, including: “formula I” [0022] “3,3,3-trifluoropropyl” [0018] as the claimed fluorinated polydiorganosiloxane; “formula I” [0022] “alkyl groups” [0018] as the claimed non-fluorinated polydiorganosiloxane.
Farhat teaches “example 7, fluorosilicone base rubber, 15%” [Table 1, 0076] reads on the fluorinated polydiorganosiloxane, lies in the claimed range.
“example 7, vinylmethylsilicone base rubber 1, 60%; vinylmethylsilicone base rubber 1, 25%” [Table 1, 0076] reads on the non-fluorinated polydiorganosiloxane, concentration add up as 85%, lies in the claimed range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
(B) at least one “filler; silica” [0042]; at least one of (C) or (D) wherein (C) is organosilicon compounds bearing silicon-bonded hydrogen (C)(i), [0034] at least one “hydrosilation catalyst” (C)(ii), [0039] and optionally at least one cure inhibitor (C)(iii); “Inhibitors” [0044] or (D) “organic peroxides” [0044]; and “quartz flour; 0% to 60% by weight” [0043], reads on the semiconductor filler and overlaps the claimed range.
Farhat teaches conductive fillers may be employed [0050] indicates the conductive filler selection is optional and hence can be excluded, which is zero% of conductive filler, lies in the claimed range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Farhat (US20070078251, herein Farhat) and Grau (US20170372815, herein Grau) as applied in claim1 set forth above, in the further view of Ahn (US20060014915, herein Ahn).
Regarding claim 5, Farhat teaches a process for producing an aqueous coating composition as set forth in claim 1. Farhat does not explicitly teach the C-i selection, however, Ahn teaches “trimethylsiloxy-terminated poly(dimethylsiloxane/methylhydrogensiloxane) [0245]; dimethylhydrogensiloxy-terminated poly(dimethylsiloxane/methylhydrogensiloxane)” [0076].
Farhat and Ahn are considered analogous art because they are in the same field of endeavor, that of curable silicone materials for composites development and processing. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modify Farhat to substitute the teachings of Ahn and provide wherein said the “trimethylsiloxy-terminated poly(dimethylsiloxane/methylhydrogensiloxane) [0245]; dimethylhydrogensiloxy-terminated poly(dimethylsiloxane/methylhydrogensiloxane)” [0076] as “component (II)” [0076] with the organosilicon compounds [0034] of the Farhat into the composition development. Doing so would further achieve the desired property toward product development of cured products prepared using the compositions of this invention can vary in properties from rigid resins to elastomers to gels, depending upon various factors including the types and concentrations of component (II) and any optional components that are added to the composition. [0187] as taught by Ahn.
Claims 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Farhat (US20070078251, herein Farhat) and Grau (US20170372815, herein Grau), as applied to claim 1, and in the further view of Joseph (US20090042043, herein Joseph)
Regarding claim 7, Farhat is silent on the curable silicone elastomer composition in accordance with claim 1, wherein component (C) is present, and the composition is stored prior to use, in either:
(i) two parts, a Part A containing components (A), (B), and (C)(ii), and a part B containing components (A), (B), (C)(i), and (C)(iii); or
(ii) four parts, a first Part A containing components (A)(i), (B), and (C)(ii), a second part A containing components (A)(ii), (B) and optionally component (C)(ii), a first part B containing components (A)(i), (B), (C)(i), and (C)(iii), and a second part B containing components (A)(ii), (B), and optionally components (C)(i) and (C)(iii).
However, Joseph teaches the curable silicone elastomer composition in accordance with claim 1, wherein component (C) is present, and the composition is stored prior to use, in either:
(i) two parts, a Part A containing components (A), (B), and (C)(ii), and a part B containing components (A), (B), (C)(i), and (C)(iii); or (the composition may also be provided in two parts which are intermixed shortly before application and subsequent cure [0069]) this is to separate the (C)(ii) platinum and (C)(i) Organohydrogenpolysiloxane, before the composition formulation, due to the their reactivities. Joseph further teaches (ii) four parts, a first Part A containing components (A)(i), (B), and (C)(ii), a second part A containing components (A)(ii), (B) and optionally component (C)(ii), a first part B containing components (A)(i), (B), (C)(i), and (C)(iii), and a second part B containing components (A)(ii), (B), and optionally components (C)(i) and (C)(iii). (the composition may also be provided in two parts which are intermixed shortly before application and subsequent cure [0069]). Joseph and Farhat are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of curable silicone materials for composites development and processing. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Farhat to add the teachings of Joseph and provide wherein said the two-parts or four-parts mixing process. Doing so would further achieve the predictable result of improved ratio control, optimized storage stability for different ingredients mixtures, and eventually lead to thermal management for the final product.
Regarding claim 8, Farhat teaches the curable silicone elastomer composition in accordance with claim 7, and the composition is not affected by the selection of any order of mixing ingredients.
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In reGibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). Therefore, a person of ordinary skill in the art would not expect the order to provide a materially different product or the such via the selection of different mixing order of the same ingredients.
Response to Arguments
Applicant’s arguments, filed 6/6/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Farhat (US20070078251, herein Farhat), and Grau (US20170372815, herein Grau).
In this case, the reference_ Grau teaches compositions including: polyorganosiloxane with 3,3,3-trifluoropropyl groups [0127] based curable silicone composition [0306], which are suitable materials for the manufacture of stretchable elastic deformable cable joints, cable terminations other insulation accessories [0013]; insulator for high voltage direct current (HVDC) applications [0024].
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).
In this case, Farhat and Grau are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of polyorganopolysiloxane based curable functional silicone materials. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Farhat to add the teachings of Grau and provide wherein said compositions are suitable materials for the manufacture of stretchable elastic deformable cable joints, cable terminations other insulation accessories [0013]; insulator for high voltage direct current (HVDC) applications [0024] Doing so would further achieve the predictable result apply the as-developed composition into specified product development.
In response to the applicant’s argument that “one of skill in the art would have no reason to exclude conductive filler or combine the fluorinated and non-fluorinated silicones in the claimed weight loading because none of the cited references are relevant to electrical insulation applications where even electrical properties and strong physical properties are required, as in this case. Therefore, one of skill in the art would have no reason to modify any of these references to arrive at the claimed invention.”, the argument is not persuasive.
In fact, Farhat teaches conductive fillers may be employed [0050] indicates the conductive filler selection is optional and hence can be excluded, which is zero% of conductive filler.
In response to the applicant’s argument that “unexpected results”, the argument is not persuasive.
In fact, when Examples 4-1; 4-2 and Comp. Examples 5-6 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to the content of the non-fluorinated polydiorganosiloxane 50 to 99.5% by weight of component (A); fluorinated polydiorganosiloxane polymer present in an amount of from 0.5 to 50% by weight of component (A). However, Comp. Examples 5 has 0% of fluorinated polydiorganosiloxane polymer, and Comp. Examples 6 has 0% of non-fluorinated polydiorganosiloxane. [Instant App. US20220049097; P12; Table 6a] The Comp. Examples 5-6 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented
in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767