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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/6/2026, has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation " high-energy rays", which is a relative term which renders the claim indefinite. Furthermore, the term “high-energy rays” only been cited in the claim 1 and the specification as high energy beam [Instant App. US20230050175; 0059], which is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear from the specification what the degree of energy is covered by high-energy rays/ high energy beam. Applicant may overcome this rejection by deleting the term “high-energy rays” from the claim 1.
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 1-4, 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over VanWert (US5270425, herein VanWert), in the view of Yusuke (WO2015053412, herein Yusuke, a machine translation is being used for citation purpose), as evidenced by Evidence Ref. Cai, Catalysis Communications Volume 4, Issue 12, December 2003, Pages 637-639.
Regarding Claims 1, 3, 4, 16, VanWert teaches the curable organosiloxane composition [C2; L53] comprising: (A) polyorganosiloxane containing at least two alkenyl radicals per molecule [C2; L67] reads on the component (A); (B) organohydrogensiloxane containing at least two silicon-bonded hydrogen atoms per molecule, reads on the component (B); a “hydrosilylation catalyst” [C3; L9], reads on the component (C). VanWert also teaches chelated aluminum compound that promotes a hydrolysis/condensation reaction [C5; L5] reads on the component (D) as condensation reaction catalyst aluminum chelate complex, in the range of 0.005 to about 0.5 weight percent, based on the weight of the curable organosiloxane composition [C5; L23] lies in the claimed range; VanWert further teaches preferred chelating agents such as acetylacetone [C5; L20],
VanWert does not explicitly teach the condensation reaction catalyst or a condensation reaction product thereof selected from the group consisting of tetra-tert-butoxy titanium and acetoalkoxyaluminum diisopropylate. However, Yusuke teaches tris(acetylacetonate)aluminum [P17; Para. 3] and acetoalkoxyaluminum diisopropylate [P34; Para. 2] both used as component (D) a metal-based condensation reaction catalyst [P4; Para. 2], lead to the formation of curable silicone composition formation including: organopolysiloxane, organohydrogenpolysiloxane. Because both chelated aluminum compound that promotes a hydrolysis/condensation reaction [C5; L5] wherein, the chelating agents such as acetylacetone [C5; L20] as taught by VanWert, and the acetoalkoxyaluminum diisopropylate [P34; Para. 2] taught by Yusuke are known in the art to be useful for condensation reaction catalyst for curable organosiloxane composition formation, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the condensation reaction catalyst aluminum chelate complex taught by VanWert with the acetoalkoxyaluminum diisopropylate [P34; Para. 2] taught by Yusuke, and would have been motivated to do so because both compounds individually are known to be effective condensation reaction catalyst for curable organosiloxane composition formation. (see MPEP 2144.06).
VanWert teaches “inhibitor, based on its commercial availability, is 3,5-dimethyl-1-hexyn-3-ol” [C5; L53] which has intramolecular carbon-carbon triple bond, see below, in the concentration of “0.05 to 1.0 weight percent, based on the weight of the curable composition” [C5; L56], reads on the component (E) and overlaps the claimed range.
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It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize the specific inhibitor and optimize the range of the inhibitor into “0.05 to 1.0 weight percent, based on the weight of the curable composition” [C5; L56]. Doing so would lead to the reaction condition optimization with curing temperature selectivity, and further lead to the desired storage stability [C5; L58-64], as taught by VanWert.
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). See MPEP § 2144.05.
VanWert further teaches the cured elastomers that can be prepared using the compositions [C8; L28], indicates the curing process.
VanWert teaches hydrosilation catalyst, which is a reaction product of hexachloroplatinic acid and sym-tetramethyldivinyldisiloxane [C10; L65], wherein, the sym-tetramethyldivinyldisiloxane can be expressed as 1,3-divinyl-1,1,3,3-tetramethyldisiloxane, reads on the specified hydrosilylation reaction catalyst, and evidenced by the chloroplatinic acids stabilized by 1,3-divinyl-1,1,3,3-tetramethyldisiloxane [Instant App. US20230050175; 0058; 0138; 0178]. The 1,3-divinyl-1,1,3,3-tetramethyldisiloxane is also known as Karstedt’s catalyst, promotes the hydrosilylation reaction, activated at room temperature, without additional high-energy ray irradiation. [See Evidence Ref. Cai, Catalysis Communications Volume 4, Issue 12, December 2003, Pages 637-639; Abstract].
With regard to the hardness, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, VanWert and Yusuke teach all of the claimed ingredients, in the claimed amounts, and VanWert teaches the composition as being made by a substantially similar process as of the cured elastomers that can be prepared using the compositions [C8; L28], indicates the curing process, and meets: when cured, provides a silicone rubber composition with a JIS A hardness of 5 or higher [Instant App. US20230050175; 0012]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, as instant application discloses the curable organopolysiloxane of the present invention can be cured to provide a silicone rubber composition with a hardness of 5 or more, preferably 10 to 90 JIS A hardness [Instant App. US20230050175; 0114]. Therefore, the claimed effects and physical properties, i.e. hardness would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 2, VanWert teaches the molar ratio of silicon-bonded hydrogen atoms to alkenyl radicals in the curable composition of from 1 to 3 [C7; L49], lies in the claimed range.
Regarding Claim 8, VanWert teaches Adhesion Promoting Composition [C3; L30], including: vinyltrimethoxysilane [C4; L34] which is the epoxy-substituted silane (D1) reads on the adhesion promoting agent (G).
Regarding Claim 9, VanWert teaches reinforcing silica filler [C8; L30] reads on the inorganic filler (H).
Regarding Claim 10, VanWert teaches curing at temperatures below 110' C. [P12; L64] encompasses the claimed range. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize and utilize the range of the curing at temperatures below 110' C [P12; L64] as taught by VanWert, and further apply into the composition formation. Doing so would further promote the hydrolysis/condensation reaction [C5; L6] and further lead to the desired combination of storage stability and curing speed at the selected curing temperature [C5; L59] as taught by VanWert.
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). See MPEP § 2144.05.
Regarding Claims 11-13, VanWert and Yusuke teach the composition and process as set forth above in claim 1, which can lead to the application as the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). [MPEP 2144.07].
Regarding Claims 14, 15, VanWert teaches encapsulants and potting compositions for protecting delicate electronic devices such as transistors and integrated circuits from damage by moisture. [C10; L21]; and the compositions can be used to coat either the individual devices or a circuit board containing a number of these devices together with other electronic components. [C10; L27], collectively read on the electronic components are adhered with the curable organopolysiloxane composition.
Regarding Claim 16, VanWert teaches (A) polyorganosiloxane containing at least two alkenyl radicals per molecule [C2; L67], but does not explicitly teach the wherein component (A) comprises: a straight chain organopolysiloxane having at least one alkenyl group at each terminal and a resinous organopolysiloxane having a least two alkenyl groups. However, Yusuke teaches (A) organopolysiloxane having at least two alkenyl groups in one molecule [P7; Para. 1], wherein, component (A), is mixture of the component (A-1) and the component (A-2) [ P11; Para. 4], and the (A-1) general formula: R 1 3 SiO (R 1 2 SiO) m SiR 1 3(In the formula, R 1 is the same or different monovalent hydrocarbon group, provided that at least two R 1 are alkenyl groups in one molecule, and m is an integer of 5 to 1,000.) [P4; Para. 2; and FOR P5; L10], wherein, the general formula above indicates the straight chain organopolysiloxane having three alkenyl group at each terminal, lies in the claimed range; Yusuke further teaches (A-2) an average unit formula:(R 1 SiO 3/2 ) a (R 1 2 SiO 2/2 ) b (R 1 3 SiO 1/2 ) c (SiO 4/2 ) d (XO 1/2 ) e [FOR; P5; L13](In the formula, R 1 is the same as above, X is a hydrogen atom or an alkyl group, and a, b, c, d) , and e are 0 ≦ a ≦ 1.0, 0 ≦ b ≦ 1.0, 0 ≦ c <0.9, 0 ≦ d <0.5, 0 ≦ e <0.4, and a + b + c + d = 1. [P5; Para. 1], which indicates A-2 is resinous organopolysiloxane having 3 alkenyl groups lies in the claimed range; and the units of (R 1 SiO 3/2 ) a and (SiO 4/2 ) d indicates the formation of resinous organopolysiloxane.
VanWert and Yusuke are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the hydrosilylation reaction based curable silicone resin formation for coating application toward metallic substrates. 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 VanWert to substitute the teachings of Yusuke and provide wherein said the organopolysiloxane having at least two alkenyl groups in one molecule [P7; Para. 1], wherein, component (A), is mixture of the component (A-1) and the component (A-2) [ P11; Para. 4] and the structure specifications into composition formation. Doing so would further lead to the desired handleability of the resulting composition and mechanical property [P12; Para. 1] via specific polyorganosiloxane structures selection and combination, as taught by Yusuke.
Regarding Claim 17, VanWert and Yusuki teach the composition as set forth above in claim 16. VanWert further teaches silica filler [C8; L41], as inorganic filler (H).
Claims 5, 6, 7, 18 are rejected under 35 U.S.C. 103 as being unpatentable over VanWert (US5270425, herein VanWert), Yusuke (WO2015053412, herein Yusuke, a machine translation is being used for citation purpose) as set forth in claims 1 and 17, and in the further view of Fujisawa (WO2018043270, herein Fujisawa, the US20200347229 is used as English language equivalent).
Regarding Claims 5-7, VanWert and Yusuki teach the composition as set forth above. VanWert is silent on the component (F) and range, however, Fujisawa teaches 0.05 to 10 parts by mass of a trialcoxysilyl containing siloxane [0024] matches the claimed range, and the trialcoxysilyl containing siloxane represented by the following formula [0033], matches the claimed formula, with R1 is -CH3; R2 is -CH3; R3 is -CH2CH2-, p=1.
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VanWert and Fujisawa are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of hydrosilylation reaction based curable silicone resin formation for coating application on metallic substrates. 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 VanWert to add the teachings of Fujisawa and provide wherein said the specified trialkoxysilyl containing siloxane and the range into composition formation. Doing so would achieve firm and flexible adhesion to base materials in terms of both adhesiveness at low temperatures, owing to the Component (B) has a trialcoxysilyl group, accordingly giving it excellent reactivity, with multiple condensation reaction functional groups simultaneously reacted [0061], as taught by Fujisawa, who explicitly teaches the trialkoxysilyl containing siloxane react with organopolysiloxane, also react with crosslinking agents, and the technical effects of improving adhesion properties, etc. are exerted as a result of a random (nonselective) progress of the reaction between components (B) and (A) in the curing reaction alongside other crosslinking reactions [0076].
Regarding Claim 18, VanWert and Yusuki teach the composition as set forth above in claim 17.
VanWert teaches silica filler [C8; L41], as inorganic filler, and silicas can be of the precipitated or a fume type [C8; L41] which treated by hexaorganodisilazanes that hydrolyze under the conditions used to treat the silica to form compounds with silicon-bonded hydroxyl groups [C8; L59] as genius, VanWert does not explicitly teach the utilization of the hexamethyldisilazane as surface modifier as species. However, Fujisawa teaches reinforcing filler is fumed silica fine powder, surface treated with treatment agents including hexamethyldisilazane [0120], as fumed silica surface treated with hexamethyldisilazane [0165]. VanWert and Fujisawa are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of hydrosilylation reaction based curable silicone resin formation for coating application toward metallic substrates via the inclusion of surface treated silica filler. 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 VanWert and substitute the teachings of Fujisawa and provide wherein said the specified fumed silica surface treated with hexamethyldisilazane [0165] and apply into the composition formation. Doing so would further lead to the composition having excellent handleability at a low viscosity [0123] as taught by Fujisawa, wherein, the modification of silica filler can improve the dispersion process, hence, further tailor the viscosity of the organopolysiloxane composition.
Response to Arguments
Applicant’s arguments, filed 2/6/2026, 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 VanWert (US5270425, herein VanWert), and Yusuke (WO2015053412, herein Yusuke, a machine translation is being used for citation purpose).
In this case, VanWert and Yusuke collectively teach the composition as set forth above in the new rejection, whereas the applicant’s arguments are directed toward the amendment to independent claim 1, which has been addressed by the new rejection set forth above.
In response to the applicant’s argument regarding the “JIS A hardness”, the argument is persuasive. Therefore, the rejection has been withdrawn.
In response to the applicant’s argument regarding the “high-energy rays”, the argument is still not persuasive, wherein, the term “high-energy rays” in claim 1 is a relative term which still renders the claim indefinite, as set forth in the rejection above.
In response to the applicant’s argument that “unexpected results”, the argument is not persuasive.
First, the argument is directed towards a feature not claimed, that of the cured product made of the composition. The instant claims are directed towards a composition and not the cured product. As a result, the cured product properties are highly dependent upon the composition including: the organopolysiloxane, curing inhibitor used and the amounts there of.
Second, the data in the table provides subjective qualitative data rather than quantitative data.
Third, when Examples 1-4 and Comp. Examples 1-3 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 4 is open to the content of component (E) is 0.001 to 0.5 mass % relative to the total mass of the curable organopolysiloxane composition. However, Examples 1-4 and Comp. Examples 1-3 only have the single value of the component E concentration as (E-1)+(E-2)=0.14+0.4=0.54 parts by mass. [Instant App. US20220049097; P13; Table 1] Hence, these examples with the single concentration value are not reasonably commensurate in scope with the claimed range. Examples 1-4 and Comp. Examples 1-3 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).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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