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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 23, 2026 has been entered.
Response to Amendment
The Amendment filed February 23, 2026 has been entered. Claims 12-24 remain pending. Claims 1-11 were previously canceled. Claims 12 and 17 were amended and support for the claims can be found in the original Specification.
Claim Rejections - 35 USC § 103
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.
Claims 12-24 are rejected under 35 U.S.C. 103 as being unpatentable over Morita et al., (US 5492945; cited in the IDS submitted on 09/23/2022; hereafter as “Morita”) in view of Lork (US 2006/0276585; hereafter as “Lork”).
Regarding Claim 12, Morita teaches a cured silicone powder that can be used for cosmetics [Abstract; Column 1, Lines 15-18] comprising:
Particles [Abstract; Claim 1], corresponding to the Particles P of Claim 12;
Cured silicone powder, wherein said powder is a cured polydimethylsiloxane [Claims 1, 4, 5], corresponding to crosslinked silicone elastomer composition X of Claim 12;
Silica micropowder that is immobilized on the surface of the cured silicone powder [Claim 1], corresponding to the shell H of Silica S of Claim 12.
However, Morita does not explicitly teach the silicone resin of Claim 12.
Nevertheless, Lork teaches crosslinkable organosilicon formulations for core-shell structures [Abstract; ¶ 0034] comprising reinforcing fillers such as resinous polyorganosiloxanes [¶ 0053], corresponding to the silicone resin of Claim 12.
Lork offers the motivation that said formulations result in rubber materials with a low coefficient of friction [Paragraph 0007].
Morita and Lork considered to be analogous art as the claimed invention, as all are in the same field of core-shell structures of crosslinkable silicone elastomer compounds with reinforcing fillers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to add the resinous polyorganosiloxanes of Lork to the cured silicone powder of Morita, with the motivation of producing a low coefficient of friction in the final product, thereby arriving at the claimed invention.
Regarding Claims 13 and 16, Morita teaches:
addition reaction-curing silicone compositions [Claim 5; Column 3, Lines 24-65], corresponding to particles P comprised of composition X that is addition-crosslinked of Claim 13;
composition X comprises organopolysiloxane having at least 2 alkenyl groups in each molecule, that can be a straight chain and monovalent [Claim 5; Column 3, Lines 36-45], corresponding to (B) the organopolysiloxane and (A) at least one linear compound which contains radicals with aliphatic carbon- carbon multiple bonds of Claim 13; and
a filler, including precipitated silica [Claim 5; Column 4, Lines 44-53], reading on wherein the reinforcing filler is a precipitated silica of Claim 16.
However, Morita is silent to organopolysiloxane compound with Si-bonded hydrogen atoms of Claim 13 and the precipitated hydrophobic silicas having DIN 66131 BET surface areas of at least 50 m2/g of Claim 16.
Nevertheless, Lork teaches an:
addition-crosslinking organosilicon composition [Claim 1];
wherein organosilicon compounds are linear, is a SiC bonded aliphatically unsaturated hydrocarbyl radical, and capable of aliphatic multiple bonding [Paragraphs 0019 and 0021], corresponding to (A) of Claim 13; and
wherein organosilicon compounds are linear organopolysiloxanes with Si-bonded hydrogen atoms [Paragraph 0024], corresponding to (B) of Claim 13;
precipitated silicas having BET surface areas of at least 50 m2/g wherein said silicas may be hydrophobized [Paragraph 0042], corresponding to the precipitated hydrophobic silicas having surface areas of at least 50 m2/g of Claim 16.
Lork offers the motivation that said formulations result in rubber materials with a low coefficient of friction [Paragraph 0007].
Therefore, it would be obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to add the organosilicon compounds and silicas of Lork to the cured silicone powder of Morita, with the motivation of producing a low coefficient of friction in the final product, thereby arriving at the claimed invention.
Regarding Claims 14 and 21-24, Morita is silent to said surface treatment resulting in a methanol number >40 of Claim 14; wherein the reinforcing filler F owing to surface treatment has a methanol number of greater than 40 and wherein the methanol number of the silica S is less than 40 of Claims 22-23; and wherein the silica S bonded onto the surface of particle P penetrates more than 10 nm into the crosslinked silicone elastomer and protrudes more than 10 nm from the crosslinked silicone elastomer of Claims 21 and 24.
However, Morita teaches a filler, such as precipitated silica [Column 4, Lines 44-53], may be subjected to a surface treatment with hexamethyldisilazane [Column 4, Lines 53-57], corresponding to the reinforcing filler F owing to surface treatment of Claims 14 and 22-23. Morita further teaches silica micropowder is strongly immobilized or anchored on the surface of cured silicone powder [Claim 1; Column 10, Lines 9-22], corresponding to wherein the silica S is bonded onto the surface of particle P of Claims 21 and 24.
The instant Specification discloses methanol number is a function of the wettability of the hydrophobicity of the silica [see instant Specification, Page 12, Lines 7-8] and said silicas are preferably hydrophobized by means of halogen-free silanes [see instant Specification, Page 12, Lines 10-16]. Thus, halogen-free silanes as a surface treatment directly alter the methanol number of the silica.
Because Morita teaches the same precipitated filler and surface treatment with hexamethyldisilazane (a halogen-free silane) as set forth in the rejection above it would be expected that the methanol number of the surface treatment and silica, and silica penetration and protrusion would fall in the same ranges as required by the instant claims . Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the 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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to follow the same process, as the reference teaches each of the claimed ingredients (surface treated silica filler) for the same utility (silicone elastomer compositions) and for the same purpose (silicone compositions with improved mechanical properties).
Regarding Claim 15, Morita teaches wherein 1 to 15 parts by weight of said silica micropowder is present for each 100 parts by weight of said cured silicone powder [Claim 2], which overlaps with 5:200 parts by weight of reinforcing filler F per 100 parts by weight of crosslinkable silicone elastomer composition X of Claim 15.
However, Morita and the claims differ in that Morita does not teach the exact same ranges for the reinforcing filler as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Morita (1 to 15 parts by weight) overlap the instantly claimed range (5-200 parts by weight) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claim 17, Morita teaches a method of producing a water-based dispersion of a cured silicone powder [Column 9, Lines 1-4], corresponding to the method for producing particles P of Claim 17. Morita further teaches:
the addition of amorphous silica micropowder to the water-based dispersion of cured silicone powder in order to prepare a water-based dispersion [Column 9, Lines 24-28], corresponding to the continuous phase and the first step of Claim 17;
the process of heating of said dispersion, which brings about a strong anchorage of the silica micropowder on the surface of cured silicone powder particles [Column 9, Lines 5- 6], corresponding to the second step of Claim 17;
a filler, including precipitated silica [Claim 5; Column 4, Lines 44-53], corresponding to the discontinuous phase of the first and second steps Claim 17; and
the dispersion cannot be homogenously mixed and undergoes phase separation [Column 9, Lines 32-38], corresponding to the continuous and discontinuous phases of Claim 17.
Regarding Claim 18, Morita further teaches 40 to 2,000 weight parts water per 100 weight parts curable silicone composition [Column 8, Lines 53-58], which is equivalent to 29-95 wt. % water (% water = water water/total weight; min. % water = 40/140 = 29 wt.%; max. % water = 2,000/2,100 = 95 wt. %), which overlaps the claimed range of wherein the continuous phase comprises at least 80 wt. % of water of Claim 18.
Regarding the silica and water content of Claim 19, it would also be obvious to one of ordinary skill, that because Morita does not teach further adding more water or silica beyond what is added in the step corresponding with the first step of Claim 17, it implies that no further water or silica is added, corresponding to the total volume of mixture B and of the dispersion A is introduced initially of Claim 19.
Regarding Claims 20, Morita further teaches:
A catalyst [Column 7, Lines 1-5], corresponding to a catalyst is added for crosslinking the crosslinkable silicone elastomer composition X of Claim 20.
Response to Arguments
Applicant's arguments filed February 23, 2026 have been fully considered but they are not persuasive.
Applicant argues (1) the silicone resins of Lork are used in a completely different manner and context as oval to sphere-shaped solid particles or powders and not as a reinforcing filler as claimed in relation to the instant application. However, the Specification does not explicitly define what a reinforcing filler is in the context of the instant application but does provide examples that are particles or powders (i.e., carbon blacks and activated carbons) [Page 11, Lines 11-20]. In the absence of the contrary that has been explicitly defined in the instant application, the plain and ordinary meaning to one of ordinary skill in the art will be used for the purposes of examination. In this case, the plain and ordinary definition of reinforcing filler is usually a powder/particulate and are generally defined to be a filler material that strengthens the mechanical properties of the bulk product. In this case, Lork teaches a silicone resin (that corresponds to the claimed silicone resin) which one of ordinary skill would know can function as the claimed reinforcing filler. Furthermore, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Thus, applicant’s argument is not persuasive.
Applicant argues (2) that Moritia and Lork are directed to a fundamentally and conceptually different technological space. However, Morita and Lork considered to be analogous art as the claimed invention, as all are in the same field of core-shell structures of crosslinkable silicone elastomer compounds with reinforcing fillers. Furthermore, Morita teaches that, similar to the instant application, the cured silicone powder can be used in the field of cosmetics [Column 1, Lines 15-18]. In addition, Lork teaches its silicone composition has a low coefficient of friction [Paragraph 0007] which would be advantageous when improving the skin feel of a cosmetic product. Thus, applicant’s argument is not persuasive.
Applicant argues (3) Lork provides zero motivation to replace the well-known inorganic particulate fillers with a polymeric silicone resin. However, attention is directed to the disclosure above wherein Lork offers the motivation that said formulations result in rubber materials with a low coefficient of friction [Paragraph 0007] which would motivate to one of ordinary skill to look to Lork to modify the cured silicone powder of Morita. Thus, applicant’s argument is not persuasive.
Applicant argues (4) the claims as amended are using a polymeric silicone resin as the reinforcing agent. However, it is noted that the features upon which applicant relies (i.e., polymeric silicone resin) are not recited in the rejected claim(s). The claims only recite silicone resin. Furthermore, there is no mention of polymeric silicone resin in the instant Specification, making polymeric silicone resin new subject matter. Thus, applicant’s argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764