DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/8/2025 has been entered.
Claims 10, 12, 14-20 are pending.
Claim Rejections - 35 USC § 103
Claims 10, 12, 14-16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stepp et al. (US 6,239,244) in view of Ochs et al. (US 2013/0323428).
Regarding claim 10: Stepp is directed to an addition crosslinking silicone rubber composition comprising:
(A) at least one organopolysiloxane having at least two aliphatic double bonds in the molecule
(B) at least one organopolysiloxane having at least three Si-H groups in the molecule (col. 4 ll. 26-34).
(C) at least one noble metal catalyst (equivalent to a hydrosilylation catalyst)
(D) at least one hydrophobic modifier preferably a bis-10-undecanoic acid ester of polyethylene glycol as demonstrated in the working example 1 (col. 6 ll. 30-45)
(E) a cyclic organohydrogenpolysiloxane of formula (III) is not present since the preferred organopolysiloxane having two aliphatic double bonds Is preferably linear (col. 4 ll. 14-22).
A component (B) at least one organopolysiloxane having at least Si-H groups in the molecule, wherein the Si-H content is at least 0.45% by weight and not more than 1.3% by weight is not mentioned.
Ochs is directed to an addition crosslinking silicone rubber composition comprising components (A)-(C), including component (B) of at least one organopolysiloxane having at least three Si-H groups in the molecule, wherein the Si-H content is at least 0.45% by weight and not more than 1.3% by weight ([0018] component “(2)”) having not more than 0.7% by weight Si bonded hydrogen atoms).
One skilled in the art would have included component (2) in the composition of Stepp since when combined with components (1) and (3) – (4) results in composition that is simple to use, good storage stability, flowabilty, high crosslinking rate even at low temperatures, resistance to corrosion, mechanically strong, high adhesion strength, and good hydrolysis ([0129] [0134] Ochs). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included component (2) of at least one organopolysiloxane having at least three Si-H groups in the molecule, wherein the Si-H content is at least 0.45% by weight and not more than 1.3% by weight.
Regarding claim 12: The viscosity of the organopolysiloxane A is 100-50,000 mPa.s (col. 4 ll. 34-36).
Regarding claim 14: bis-10-undecanoic acid ester of polyethylene glycol is demonstrated in the working example 1 (col. 6 ll. 30-45)
Regarding claim 15: bis-10-undecanoic acid ester of polyethylene
glycol 200 is demonstrated in the working example 1 (col. 6 ll. 30-45). It follows the oligioethylene glycol has 2-40 ethylene glycol units, i.e. about 6 units.
Regarding claim 16: Stepp is directed to a method of coating a substrate surfaces and for producing composite moldings, wherein the method comprises:
a) providing a substrate, wherein the substrate surfaces are coated with a silicone rubber composition and/or the substrates and/or substrate combinations are assembled and the silicone rubber composition is introduced into the intermediate spaces. Specifically, the silicone composition is used to make impressions in dental medicine although can also be used in nonmedical purposes (col. 5 l. 61 – col. 6 l.7).
b) The composition is allowed to cure by mixing components A and B (col. 7 step 3).
c) a demolding operation follows when removed as the impression.
Wherein the silicone rubber composition is an addition crosslinking silicone rubber composition comprising:
(A) at least one organopolysiloxane having at least two aliphatic double bonds in the molecule
(B) at least one organopolysiloxane having at least three Si-H groups in the molecule (col. 4 ll. 26-34).
(C) at least one noble metal catalyst (equivalent to a hydrosilylation catalyst)
(D) at least one hydrophobic modifier preferably a bis-10-undecanoic acid ester of polyethylene glycol as demonstrated in the working example 1 (col. 6 ll. 30-45)
(E) a cyclic organohydrogenpolysiloxane of formula (III) is not present since the preferred organopolysiloxane having two aliphatic double bonds Is preferably linear (col. 4 ll. 14-22).
A component (B) at least one organopolysiloxane having at least Si-H groups in the molecule, wherein the Si-H content is at least 0.45% by weight and not more than 1.3% by weight is not mentioned.
Ochs is directed to an addition crosslinking silicone rubber composition comprising components (A)-(C), including component (B) of at least one organopolysiloxane having at least three Si-H groups in the molecule, wherein the Si-H content is at least 0.45% by weight and not more than 1.3% by weight ([0018] component “(2)”) having not more than 0.7% by weight Si bonded hydrogen atoms).
One skilled in the art would have included component (2) in the composition of Stepp since when combined with components (1) and (3) – (4) results in composition that is simple to use, good storage stability, flowabilty, high crosslinking rate even at low temperatures, resistance to corrosion, mechanically strong, high adhesion strength, and good hydrolysis ([0129] [0134] Ochs). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included component (2) of at least one organopolysiloxane having at least three Si-H groups in the molecule, wherein the Si-H content is at least 0.45% by weight and not more than 1.3% by weight.
Regarding claim 18: A coated substate or composite is disclosed of an impression dental material.
Regarding claims 19-20: The composition of Stepp does not include the use of linear organosiloxane having terminal Si-bonded hydrogen atoms.
Response to Arguments
Applicant's arguments filed 12/8/2025 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 8-9 Remarks) OCHS discloses the use of component (3) that is “essentially linear organopolysiloxane having terminally Si-bonded hydrogen atoms”. See claim 1 of OCHS. The component (3) is not required by the present claims. In fact, the present invention described and claimed achieves surprising and unexpected improved adhesion crack properties without the need for component (3). See Examples 1-10 and N.1-N.4. The improved overall adhesion crack properties achieved by the invention aids in providing a silicone rubber composition with improved overall adhesion or binding to a substrate. The Examples demonstrate the overall amount of force required to form a crack within the adhesive was significantly more than conventional compositions which was surprising and unexpected.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the present case, the primary reference of STEPP does not require component (3) in OCHS. Rather, a component (B) at least one organopolysiloxane having at least Si-H groups in the molecule, wherein the Si-H content is at least 0.45% by weight and not more than 1.3% by weight is disclosed in OCHS. It is not required to incorporate every component of OCHS into the composition of STEPP. Further, STEPP requires a component organopolysiloxane with at least two Si-H groups in the molecule, wherein OCHS specifies a specific organopolysiloxane with at least two Si-H groups in the molecule.
With regards to unexpected results, the burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In the present case, no amounts are recited in claim 10. Further, specific components are utilized in the working examples, while claim 10 includes a wide variety and range of different components (A)-(E). Therefore, the claims are not considered commensurate in scope with the claims.
Applicant argues (p. 9-10 Remarks) impermissible hindsight reasoning.
This argument is not found persuasive since case law holds “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). See MPEP 2145 (X)(A). In the instant case, the present office action takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, and therefore impermissible hindsight is not required to arrive at the present invention.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764