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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/01/2026 has been entered.
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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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 arguments filed 05/01/2026 have been fully considered but they are not persuasive.
Applicant argues that Wang generally recites that a flame-retardant fireproof component is added in an amount of 0-80% by weight of the base material, and that the flame-retardant fireproof component is at least one of expanded graphite powder, aluminum hydroxide, magnesium hydroxide, zine borate, or diatomaceous earth. Such a broad range is not supported nor enabled by the remaining disclosures of Wang. For example, examples 2 and 3 of Wang disclose that the flame-retardant fireproof component is added in an amount of 20% or 80% by weight of the base material and that the fireproof component is aluminum hydroxide or expanded graphite. Nowhere does Wang demonstrate suitable flame-retardant fireproof components in an amount less than 20%. In contrast to the examples of Wang, the instant claims recite, inter alia, at least one expandable graphite, wherein the at least one expandable graphite is in an amount of 0.1 to 9.9% by weight, based on the total weight of the component B.
However, the fact remains that the amount of graphite disclosed by Wang, i.e. 0-80% by weight, overlaps the amount presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, although Wang may disclose flame-retardant fireproof components other than graphite, the fact remains that Wang does explicitly disclose the use of graphite.
Further, while Wang may not disclose any examples that use graphite in amount as presently claimed, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
While applicant argues that the broad range of graphite disclosed by Wang is not enabled, it is noted that as set forth in MPEP 2121, prior art is presumed to be operable/enabling. Specifically, this portion of MPEP 2121 discloses that when "the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to provide facts rebutting the presumption of operability", In re Sasse, 629 F.2d 675,207 USPQ 107 (CCPA 1980). However, applicant has not provided facts rebutting the presumption of operability. Applicant has provided no evidence that the disclosure of Wang itself is not enabling. It is noted that MPEP 2121.01 further states that a reference contains an "enabling disclosure" if the public was in possession of the claimed invention before the date of invention. "Such possession is effected if one of ordinary skill on the art could have combined the publication's description of the invention with his [or her] own knowledge to make the claimed invention", In re Donohue, 766 F.2d 531,226 USPQ 619 (Fed. Cir. 1985). Donohue further states that it "is not, however, necessary that an invention described in a publication shall have actually been made in order to satisfy the enablement requirement and citing In re Samour, 571 F.2d 559, 197 USPQ 1, further states "[W]hether or not the claimed invention has been made previously is not essential to the determination that a method of preparing it would have been known by, or would have been obvious to, one of ordinary skill in the art".
Applicant argues that the claimed composition exhibits unexpected beneficial properties that could not have been reasonably predicted from Wang. Wang discloses broad ranges and numerous species, suggesting that the parameter ranges are operative; however, Applicant's data show that those same ranges do not produce acceptable or functional results in the context of the present invention. As evidence to support their position, applicant points to the comparative examples (CE1-CE7) in the Application as originally filed, which are compositions prepared using conditions consistent with the ranges recited in Wang and argue that they fail to show desirable performance, whereas compositions within the claimed range of the instant claims exhibit unexpected benefits recognized by the inventors, including desirable performance standards (Ex1-Ex5).
However, the data is not persuasive given that that the data is not commensurate in scope with the scope of the present claims. Specifically, for component A, the data uses specific polyorganosiloxane having at least one vinyl group (MSR 8001-1H, Andisil V 10,000, Andisil VS 65,000), specific blowing agent (Andisil OH Polymers) and specific catalyst (Catalyst 510) each in specific amounts, while the present claims encompass any polyorganosiloxane having at least one vinyl group in any amount, blowing agent that is any polyorganosiloxane having at least one hydroxyl group in broader amount, and any catalyst in any amount. For component B, the data uses specific polyorganosiloxane having at least one vinyl group (MSR 8001-1H, Andisil V 10,000, Andisil VS 65,000), specific polyorganosiloxane having at least one -SiH group (Crosslinker 100), and expandable graphite having specific average particle size each in specific amounts, while the present claims encompass any polyorganosiloxane having at least one vinyl group in any amount, any polyorganosiloxane having at least one -SiH group in any amount, and expandable graphite having any average particle size in broader amount.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “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 occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Applicant argues that none of Shin, Matsuda, Smith, or Cremer makes up for the deficiencies of Wang.
However, as set forth above, it is the examiner’s position that Wang does not have any deficiencies. Further, it is noted that each of Shin, Matsuda, Smith, and Cremer is used as teaching reference, and therefore, it is not necessary for these secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather each reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant’s amendment overcomes the 35 USC 112(d) rejection of record.
Conclusion
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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