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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 recites the phrase “expandable graphite is present in an amount of from 0.1 to 9.9% by weight, based on the total weight of the component B”. Claim 13, which depends from claim 19, fails to further limit the scope of the claim on which it depends, given that claim 19 already recites that the expandable graphite is present in an amount of from 0.1 to 9.9% by weight, based on the total weight of the component B.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3-4, 7-9, 13-14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 101845223). It is noted that the disclosures of Wang are based on a machine translation of the reference included in the office action mailed 07/23/2025.
Regarding claims 19, 8, and 13, Wang discloses two component silicone composition comprising Component A (corresponding to claimed component B) and Component B (corresponding to claimed component A) (see paragraph 0009). Component A and Component B are mixed and then foamed (see paragraph 0031), i.e. two component composition is foamable.
Component A (corresponding to claimed component B) comprises base material M and hydrogenated polysiloxane (corresponding to claimed polyorganosiloxane with -SiH group) (see paragraphs 0009-0010) where base material M is made from hydroxyl-terminated polysiloxane, vinyl terminated polysiloxane, terminal alkyl polysiloxane, and metal powder (see paragraphs 0012-0016) as well as 0-80 wt.% flame retardant which is expanded graphite (see paragraph 0034). Before the foam is produced, the graphite would necessarily be expandable becoming expanded upon foaming.
Component B (corresponding to claimed component A) comprises base material N and platinum group catalyst (see paragraphs 0018-0019) where base material N comprises hydroxyl-terminated polysiloxane (corresponding to claimed chemical blowing agent), vinyl terminated polysiloxane, terminal alkyl polysiloxane, and metal powder (see paragraphs 0019-0025). Component B (corresponding to claimed component A) comprises 99.8-99.99 wt.% base material N (see paragraph 0018) which comprises 5-50 wt.% hydroxyl-terminated polysiloxane (chemical blowing agent) (see paragraph 0022). Therefore, it is calculated that Component B (corresponding to claimed component A) comprises 5-49.9 wt.% (0.9999*5 – 0.998*50) hydroxyl-terminated polysiloxane (chemical blowing agent).
In light of the overlap between the claimed two component silicone composition and the two component silicone composition disclosed by Wang, it would have been obvious to one of ordinary skill in the art to use a two component silicone composition that is both disclosed by Wang and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claims 3-4, Wang discloses that each of the vinyl terminated polysiloxanes are of the formula:
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where R is methyl, i.e. polydimethylsiloxane, and there are at least two terminal vinyl groups per molecule (see paragraphs 0045-0047 of the translation and paragraph 0043 of original JP document).
Regarding claim 7, Wang discloses that the hydroxyl-terminated polysiloxane (corresponding to claimed chemical blowing agent) is of the formula:
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where R is methyl, i.e. polydimethylsiloxane, and there are at least two terminal hydroxyl groups per molecule (see paragraphs 0042-0044 of the translation and paragraph 0040 of original JP document).
Regarding claim 9, Wang discloses that the hydrogenated polysiloxane (corresponding to claimed polyorganosiloxane with -SiH group) is of the formula:
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119
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where R is methyl, i.e. polydimethylsiloxane, and there is one -SiH group per molecule (see paragraphs 0039-0041 of the translation and paragraph 0037 of original JP document).
Regarding claim 14, Wang discloses that the base material of both Component A and Component B can comprise filler (see paragraph 0033).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 101845223) as applied to claim 19 above, and further in view of Shin (JP 2009/007390). It is noted that the disclosures of Shin are based on a machine translation of the reference included in this office action
Wang discloses two component silicone composition as set forth above. Wang discloses Component A and Component B each comprise a vinyl terminated polysiloxane.
Wang does not disclose Component A and Component B each comprise a mixture of a linear vinyl terminated polysiloxane and a branched vinyl terminated polysiloxane.
Shin discloses a polyorganosiloxane composition (see paragraph 0013) comprising alkenyl-group containing polyorganosiloxane where the alkenyl group is a vinyl group (see paragraphs 0014-0015). Shin further discloses using a mixture of a linear vinyl-group containing polyorganosiloxane and a branched vinyl-group containing polyorganosiloxane for good mechanical strength (see paragraph 0014).
In light of the motivation for using a mixture of linear vinyl-group containing polyorganosiloxane and a branched vinyl-group containing polyorganosiloxane disclosed by Shin as set forth above, it would have been obvious to one of ordinary skill in the art to use a mixture of linear vinyl-group containing polyorganosiloxane and a branched vinyl-group containing polyorganosiloxane as the vinyl terminated polysiloxane in each of Component A and Component B of the two part silicone composition of Wang in order to produce a composition with good mechanical strength.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 101845223) as applied to claim 19 above, and further in view of Matsuda et al. (US 2013/0105997).
Wang discloses two component silicone composition as set forth above. Wang discloses that Component A (corresponding to claimed component B) comprises a hydrogenated polysiloxane having one -SiH group per molecule.
Wang does not disclose a mixture of at least two polyorganosiloxanes each having at least one -SiH group and an Si-H content of from 0.05 to 5 mmol/g as claimed.
Matsuda et al. disclose silicone resin composition having two or more hydrosilyl, i.e.
-SiH-containing, organopolysiloxanes (see paragraphs 0014 and 0060). The content of the hydrosilyl group is 0.005-10 mmol/g (see paragraph 0061) in order to produce a cured product with sufficient toughness and flexibility (see paragraph 0062).
In light of the motivation for using at least two organopolysiloxanes having at least one -SiH unit having -SiH content disclosed by Matsuda et al. as described above, it would have been obvious to one of ordinary skill in the art to use at least two -SiH-containing polyorganosiloxanes with content of hydrosilyl group, i.e. -SiH, including that presently claimed, as the hydrogenated polysiloxane in Component A (corresponding to claimed component B) in the two part silicone composition of Wang order to produce a composition with sufficient toughness and flexibility.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 101845223) as applied to claim 19 above, and further in view of in view of Smith (US 3,923,705).
Regarding claim 11, Wang discloses two component silicone composition as set forth above. Wang discloses Component A (corresponding to claimed component B) comprises a hydrogenated polysiloxane having one -SiH group per molecule and Component B (corresponding to claimed component A) comprises hydroxyl-terminated polysiloxane (corresponding to claimed chemical blowing agent).
Wang does not disclose a ratio of moles of -SiH of the -SiH-containing polyorganosiloxane to moles of the -OH groups of the chemical blowing agent as claimed.
Smith discloses composition for preparing siloxane foams (col.1, lines 9-10). The composition comprises organohydrogensiloxane having -SiH group and hydroxylated organosilane where the molar ratio of -SiH to -OH is 2.5-40 (see col.2, lines 31-39 and 47-51). If the ratio is outside this range, the foam is too friable and weak (col.5, lines 17-27).
In light of the motivation for using ratio of moles of -SiH of the polyorganosiloxane with -SiH group to moles of the -OH groups of hydroxylated organosilane disclosed by Smith as described above, it would have been obvious to one of ordinary skill in the art to use such ratio, including that presently claimed, in the two component silicone composition of Wang in order to produce a foam that is not friable or weak.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 101845223) as applied to claim 19 above, and further in view of in view of Cremer et al. (US 2010/0305226).
Regarding claim 12, Wang discloses two component silicone composition as set forth above.
While Wang discloses the use of expandable graphite, Wang does not disclose the use of expandable graphite with average particle size as claimed.
Cremer et al. teach silicone-containing foams comprising expandable graphite as a flame retardant (see Abstract and paragraph 0001), in amounts of 0.1 to 15 parts by weight per 100 parts by weight of siloxane (see paragraph 0044). The expandable graphite has a particle size of from 0.05 to 0.3 mm or 50 to 300 microns (see paragraph 0041).
In light of the motivation for using expandable graphite with particle size of 50 to 300 microns disclosed by Cremer et al. as described above, it would have been obvious to one of ordinary skill in the art to use expandable graphite with such particle size as the expandable graphite in Component A (corresponding to claimed Component B) of the two part silicone composition of Wang in order to produce composition with effective flame retardance.
Response to Arguments
Applicant’s amendment filed 10/16/2025 has been fully considered and overcomes the rejections of record. New grounds of rejection are set forth above necessitated by applicant’s amendment.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787