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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 28, 2026 has been entered.
Response to Amendments
In response to the Applicant’s reply dated January 28, 2026, there are no amendments. Claims 1-2 and 4-21 are pending and examined. In view of the Applicant’s request for continued examination, the Examiner has reconsidered the instant claims and the prior art of record for all that it teaches. Rejections over the previously provided prior art are below with small modifications for clarity. Further, to advance prosecution, additional rejections are provided over O’neil in view of Wenmao, Meguriya, and Mammarella for claims 1-2, 4-18, and 20-21 and O’neil in view of Wenmao, Meguriya, Mammarella, and Swindells for claim 19.
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.
Claim(s) 1-2, 4-18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over O’neil et al [US20180223069A1 dated August 9, 2018, as provided on the ISR], hereinafter O’neil, in view of Wenmao et al. [CN102491310A, dated June 13, 2012, machine translation relied upon provided], hereinafter Wenmao, in further view of Hemery et al. [WO2019219922A1, dated November 21, 2019], hereinafter Hemery, and in further view of Mammarella et al. [US20170174955A1, dated June 22, 2017], hereinafter Mammarella.
Regarding Claims 1 and 6, O’neil discloses a two-part composition comprising:
a first part comprising [O’neil 0100]:
a vinyl-substituted polysiloxane [O’neil 0024, 0100, and throughout, organopolysiloxane A, which can be vinyl substituted];
a hydrosilylation catalyst [O’neil 0024, 0100, and throughout, hydrosilylation catalyst c];
expandable graphite [O’neil 0039, expandable graphite is an optional additive;]; and
first microspheres [O’neil 0049, 0100, hollow beads D] and
a second part comprising [O’neil 0100]:
a second vinyl-substituted polysiloxane [O’neil 0024, 0100, and throughout, organopolysiloxane A, which can be vinyl-substituted];
a hydrosilyl-substituted polysiloxane [O’neil 0024, 0100, and throughout, silicon compound B; and
second microspheres [O’neil 0024, 0100, hollow beads D].
While O’neil discloses expandable graphite and microspheres in the first part and second part, O’neil does not disclose the expandable graphite comprises moisture, the first microspheres are polymeric and at least partially coated with an inorganic filler, and the second microspheres are polymeric and at least partially coated with aluminum trihydroxide.
Wenmao discloses expanded graphite comprising graphite flake [Wenmao 0005, in reference to Claim 6 limitation of expandable graphite comprises a plurality of graphite flake] with a moisture content [see Claim 1 limitation, expandable graphite comprising moisture] of no greater than 1.5% [Wenmao 0026], which overlaps and obviates the claimed range [see Claim 6, having a moisture content in the range from about 0.05 wt % to about 5 wt % per graphite flake]. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. It would have been obvious to one of ordinary skill in the art before the effective filing date to select a range of moisture content near the range disclosed by Wenmao since Wenmao discloses expanded graphite for sealing applications [Wenmao 0004] and Wenmao’s teachings would be considered an advancement on the invention of O’neil. Further, Wenmao’s teachings show that the moisture content is a result effective variable. Expanded graphite must be washed with water to reduce the pH and dried to produce expanded graphite with low sulfur content to reduce the corrosive properties of residual sulfur [Wenmao 0005, 0015-0016]. It would be expected from the teachings of Wenmao, that for too little drying there will be excess moisture and sulfur present, which could result in eventual corrosion for the applied use of the expanded graphite. At some point, there would be no further benefit from drying to reduce the moisture content and sulfur. Determining the acceptable moisture content could be determined through routine experimentation and would be considered obvious per MPEP 2144.05IIB. Further, the Examiner has reviewed the instant specification for criticality of the claimed range and no evidence of criticality of range or unexpected results was found, therefore the prior art applies.
Hemery teaches curable polyorganosiloxane sealants [Hemery 0002-0004 and throughout] with fillers comprised of hollow glass spheres or plastic hollow spheres, i.e. Expancel or Dualite, with a diameter of 1 mm or less [Hemery 0156]. Hemery’s disclosure of both glass and plastic hollow spheres for use as a filler material in a curable polysiloxane compound demonstrates that plastic hollow spheres are art recognized suitable fillers for polysiloxane compound sealants. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness per MPEP 2144.07. Further, Hemery’s teaching shows they are known equivalents for the function as fillers in polysiloxane compound sealants, which is obvious per MPEP 2144.06. It would be within the ambit of the skilled artisan and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute Hemery’s polymeric microspheres for O’neil’s glass hollow spheres or to combine Hemery’s polymer microspheres with O’neil’s glass hollow spheres with an expectation of success for a polysiloxane compound for use as a sealant [Hemery 0161-0162]. See MPEP 2143 (B) Simple substitution of one known element for another to obtain predictable results.
Mammarella teaches the use of hollow polymeric microspheres coated with aluminum trihydroxide for flame resistance [Mammarella abstract and throughout] as a low density fillers for sealants [Mammarella 0004]. Mammarella further teaches that polymeric microspheres are coated to minimize agglomeration and make them free-flowing but that some coatings, such as calcium carbonate, increase the flammability of the microspheres and therefore also require the addition of a flame retardant to the compound [Mammarella 0004]. By coating polymeric microspheres with a known flame retardant, adding additional flame retardant to the compound can be avoided, which is preferred since additional flame retardants can change the viscosity of the compound [Mammarella 0004-0005]. It would have been obvious to one of ordinary skill in the art before the effective filing date that coating O’neil modified by Hemery’s first and second microspheres with an inorganic filler to minimize agglomeration [Mammarella 0004-0005, 0011] and in the case of as aluminum trihydroxide [Mammarella 0019] to minimize flammability would be an improvement on the polysiloxane compound of modified O’neil. Further, it would have been obvious to use aluminum trihydroxide as the inorganic coating for either or both of the first and second polymeric microspheres to improve the flammability characteristics of the compound with an expectation of success. See MPEP 2143 (C) Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding Claim 2, modified O’neil discloses the two-part composition of claim 1, wherein the first polymeric microspheres are the same as the second polymeric microspheres [As described above O’neil discloses hollow glass beads D for both the first and second part [O’neil 0100]. In substituting Hemery’s polymeric microspheres [Hemery 0156, see above for example, Expancel or Dualite] for O’neil’s hollow glass beads D in the first and second part, it would have been obvious to one of ordinary skill in the art before the effective filing date to select the same polymeric microspheres for both the first and second polymeric microspheres since O’neil uses the same material for both. Further, using the same material for both supports simplification of the process. See 2143 (B) Simple substitution of one known element for another to obtain predictable result or (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding Claim 4, modified O’neil discloses the two-part composition of claim 1, wherein the inorganic filler on the first polymeric microspheres comprises at least one of aluminum trihydroxide, calcium carbonate, or magnesium hydroxide [Mammarella 0004, 0007, abstract, and throughout (Mammarella discloses calcium carbonate as a known coating for polymeric microspheres to reduce agglomeration and aluminum trihydroxide, and metal hydroxides for coatings on microspheres with improved flammability, which reads on the claimed inorganic fillers. It would have been obvious to one of ordinary skill before the effective filing date to try from Mammarella’s finite list of coatings for the claimed inorganic filler on the first polymeric microspheres. See 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding Claim 5, modified O’neil discloses the two-part composition of claim 1, wherein the hydrosilylation catalyst comprises platinum [O’neil 0024, 0079, 0100, and throughout].
Regarding Claim 7, modified O’neil discloses the two-part composition of claim 1, packaged in a system comprising a first chamber and a second chamber, wherein the first chamber comprises the first part, and wherein the second chamber comprises the second part [O’neil 0099-0100, first package A1 as the first chamber comprising the first part and second package A2 as the second chamber comprising the second part].
Regarding Claim 8, modified O’neil discloses the two-part composition of claim 1, wherein the vinyl-substituted polysiloxane is represented by the formula of claim 8 [O’neil 0024, formula A below, where R’ is preferable a vinyl group].
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Regarding Claim 9, modified O’neil discloses the two-part composition of claim 1, wherein the vinyl-substituted polysiloxane comprises one or more vinyl-substituted polysiloxanes independently having viscosity in a range of from about 100 mPa-s to about 500,000 mPa-s at 25 ° C [O’neil 0073, 0159 O’neil teaches the vinyl polysiloxane component A has a viscosity of 5 to 60,000 mPa-s at 25 ° C, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Further, O’neil discloses an example with component A1 ranging from 80 mPa·s to 120 mPa·s and component A2 ranging from 500 mPa·s to 650 mPa·s. O’neil’s example falls within the claimed range of about 100 to 500,000 mPa*s, and therefore anticipates the claimed range [See MPEP 2131.03].
Regarding Claim 10, modified O’neil discloses the two-part composition of claim 1, wherein the hydrosilyl-substituted polysiloxane is represented by the formula of Claim 10 [O’neil 0024, 0100, 0159-0177, and throughout (O’neil discloses the second package A2 comprises a polysiloxane component B comprising two telechelic hydrogen atoms bonded to silicon per molecule or at least three hydrogen atoms bonded to silicon per molecule [0100]. Further, O’neil’s polysiloxane component B1 has at least two hydrogen atoms bonded to silicon per molecule that can be polydimethylsiloxane with dimethylsilylhydride end-units of formula M’DxM’, where D is a siloxy unit of (CH3)2SiO2/2, M’ is a siloxy unit of (CH3)2(H)SiO1/2, and x is an integer from 8-11 [0159-0177]).].
Regarding Claim 11, modified O’neil discloses the two-part composition of claim 1, further comprising an alcohol having at least one hydroxyl group or a second inorganic filler [O’neil 0024 (O’neil discloses the following inorganic fillers: wollastonite, aluminum trihydrate, magnesium hydroxide, halloysite, huntite hydromagnesite, expandable graphite, zinc borate, mica or a fumed silica.); Hemery 0153 (Hemery discloses chalk, lime powder, precipitated and/or pyrogenic (fumed) silica, zeolites, bentonites, magnesium carbonate, diatomaceous earth, alumina, clay, tallow, titanium oxide, iron oxide, zinc oxide, sand, quartz, flint, mica, glass powder, aluminum powder, glass, and other ground mineral substances. Further, Hemery discloses alcohols such as ethylene glycol, propylene glycol, and higher glycols.) It would have been obvious to one of ordinary skill in the art before the effective filing date to include such fillers as low density strengtheners [O’neil 0049], fire retardants [O’neil 0093-0094] and rheological adjuvants [O’neil 0095, Hemery 0155-0157] depending on the application of the two-part composition. See MPEP 2143 (C) Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding Claim 12, modified O’neil discloses a sealant comprising a cured product of the two-part composition of claim 1 [O’neil 0045-0048 (O’neil discloses an application for the cured two-part composition, which is effectively used to isolate the battery from moisture and to provide protection against heat transfer within a battery module, which reads on the claimed sealant.); Hemery 0005 and throughout (Hemery discloses a polysiloxane sealant.); Mammarella abstract and throughout (Mammarella discloses a sealant.)].
Regarding Claim 13, modified O’neil discloses the sealant of claim 12 as described above. Since Claims 1, 12, and 13 are drawn to a product and not a method of making, the limitation “prepared from the two-part composition stored for 30 days at room temperature, wherein a compression set of the sealant is not more than 50% higher than a compression set of the sealant prepared from the two-part composition freshly prepared, wherein compression set is measured after 24 hours at 50% compression at 85 ° C” is a product-by-process limitation per MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In this case, the product is a sealant comprising a cured product of the two-part composition of Claim 1. First, the Examiner has reviewed the structure implied by the process steps. The structure indicates a sealant which does not have a compression set of more than 50% after being compressed by 50% at 85 ° C after 24 hours relative to its initial compression set. Such structure would be expected in the invention of O’neil since O’neil’s sealant is made from the two-part composition of claim 1 [See MPEP 2112.01, inherency]. 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, O’neil’s sealant is used in a battery module [O’neil 0045-0047] and has mechanical flexibility and thermal stability over the temperature range of -70 ° C to 200 ° C [O’neil 0047]. For these reasons, It would have been obvious to one of ordinary skill in the art before the effective filing date that the sealant of modified O’neil would inherently have the compression set properties claimed.
Regarding Claim 14 modified O’neil discloses an assembly comprising:
a first substrate [O’neil 0047, battery module casing];
a second substrate [O’neil 0047, battery cells in the casing]; and
a cured product of the two-part composition of claim 1 in contact with the first substrate and the second substrate [O’neil 0047 and throughout (The cured two-part composition of Claim 1 fills partially or fully the open space of the battery module casing by covering partially or totally said battery cells.)].
Regarding Claim 15 and 16, modified O’neil discloses the assembly of claim 14, wherein the first substrate and the second substrate enclose a void defined therebetween [O’neil 0047 (The two-part composition of Claim 1 fills partially or fully the open space of the battery module casing by covering partially or totally said battery cells. The open space is the claimed void therebetween.)], further comprising an electronic component located at least partially within the void [O’neil 0047, battery cells are the electronic component [Claim 15 and 16].
Regarding Claim 17, modified O’neil discloses the two-part composition of claim 1, further comprising a second inorganic filler comprising at least one of a glass, a ceramic, a mineral, or silica [O’neil 0039 and throughout (O’neil discloses wollastonite, halloysite, huntite hydromagnesite, and mica, which read on mineral, and silica.); Hemery 0153 and throughout (Hemery discloses silica as well as zeolites, bentonites, quartz, flint, mica, and other ground mineral substances. Hemery also discloses glass.)]. It would have been obvious to one of ordinary skill in the art before the effective filing date to include such fillers as low density strengtheners [O’neil 0049], fire retardants [O’neil 0093-0094] and rheological adjuvants [O’neil 0095, Hemery 0153-0156] depending on the application of the two-part composition. See MPEP 2143 (C) Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding Claim 18, modified O’neil discloses the two-part composition of claim 1, wherein the first polymeric microspheres are different from the second polymeric microspheres [As described above O’neil discloses hollow glass beads D for both the first and second part [O’neil 0100]. In substituting Hemery’s polymeric microspheres [Hemery 0156 (Hemery discloses using Expancel or Dualite.)] for O’neil’s hollow glass beads D in the first and second part as described in Claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date to select Expancel for one of the first or second polymeric microsphere and Dualite for the other of the first and second polymeric microspheres given that Hemery discloses only two options, which would read on the claimed first polymeric microspheres are different from the second polymeric microspheres. See 2143 (B) Simple substitution of one known element for another to obtain predictable result or (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding Claim 20, modified O’neil discloses the two-part composition of claim 1, wherein at least one of the first polymeric microspheres or the second polymeric microspheres is present in a range from about 0.05 percent by weight to about ten percent by weight, based on the total weight of the two-part composition. [O’neil 0111, 0177, Table 2 formulations 3-5 (Modified O’neil teaches the curable organopolysiloxane (silicone) composition comprises hollow glass beads D that preferably include glass microspheres that are added in an amount of 5-30 parts by weight relative to each of the first package A1 and the second package A2 of the two-part composition [O’neil 0111]. Further, O’Neil discloses examples having glass microspheres in an amount of about 9 wt% [O’neil 0177, Table 2 formulations 3-5]. Modified O’neil’s examples fall within the claimed range of about 0.05 to 10 wt%, and therefore, satisfy the claimed range. See MPEP 2131.03. Further, the range disclosed by O’neil overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding Claim 21, modified O’neil discloses the two-part composition of claim 1, wherein the hydrosilyl-substituted polysiloxane is present in a range from about 0.5 percent by weight to about twenty percent by weight, based on the total weight of the second part [Modified O’neil 0117, Table 2, formulations 3-5 (O’neil’s examples have 8.5 wt % to 13.6 wt % and fall within the claimed range of about 0.5 to 20 wt%. Therefore, the examples satisfy the claimed range per MPEP 2131.03.)].
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over O’neil et al [US20180223069A1 dated August 9, 2018, as provided on the ISR], hereinafter O’neil, in view of Wenmao et al. [CN102491310A, dated June 13, 2012, machine translation relied upon provided], hereinafter Wenmao, in further view of Hemery et al. [WO2019219922A1, dated November 21, 2019], hereinafter Hemery, and in further view of Mammarella et al. [US20170174955A1, dated June 22, 2017], hereinafter Mammarella, as applied to Claim 1, in further view of Swindells et al. [US 20130045358A1, dated February 21, 2013], hereinafter Swindells.
Regarding Claim 19, modified O’neil discloses the two-part composition of claim 1 and discloses expandable graphite comprising moisture as described in Claim 1 but is silent to the weight percentage of expandable graphite. Swindells discloses 6.5 g expandable graphite ADT1002 mixed with 25 g Dow 9601 silicone and a 1.2 g catalyst DC9600 [Swindells 0063-0068], which would be comparable to the first part of modified O’neil. Swindells’ example has expandable graphite that is 19.9 wt %, and therefore anticipates the claimed range [See MPEP 2131.03] from about 0.05 percent by weight to about thirty percent by weight, based on the total weight of the first part. It would have been obvious to one of ordinary skill in the art before the effective filing date to use a wt % of expandable graphite range around the range taught by Swindells for the expandable graphite filler taught by modified O’neil as described in Claim 1 since Swindells teaches expandable graphite as fillers for silicone sealants in wt percentage described above suppress direct heat transfer, which supports structural integrity and fire/ heat resistance [Swindells 0075-0076]. Further, the skilled artisan would expect the same benefits described by Swindells for the expandable graphite wt% taught by Swindell in the two-part composition of modified O’neil. See MPEP 2143 (A) Combining prior art elements according to known methods to yield predictable results.
For purpose of compact prosecution and an alternative rejection is provided:
Claim(s) 1-2, 4-18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over O’neil et al [US20180223069A1 dated August 9, 2018, as provided on the ISR], hereinafter O’neil, in view of Wenmao et al. [CN102491310A, dated June 13, 2012, machine translation relied upon provided], hereinafter Wenmao, in further view of Meguriya [US20020014712A1, as provided on the IDS dated 01/28/2026], and in further view of Mammarella et al. [US20170174955A1, dated June 22, 2017], hereinafter Mammarella.
Regarding Claims 1 and 6, O’neil discloses a two-part composition comprising:
a first part comprising [O’neil 0100]:
a vinyl-substituted polysiloxane [O’neil 0024, 0100, and throughout, organopolysiloxane A, which can be vinyl substituted];
a hydrosilylation catalyst [O’neil 0024, 0100, and throughout, hydrosilylation catalyst c];
expandable graphite [O’neil 0039, expandable graphite is an optional additive;]; and
first microspheres [O’neil 0049, 0100, hollow beads D] and
a second part comprising [O’neil 0100]:
a second vinyl-substituted polysiloxane [O’neil 0024, 0100, and throughout, organopolysiloxane A, which can be vinyl-substituted];
a hydrosilyl-substituted polysiloxane [O’neil 0024, 0100, and throughout, silicon compound B; and
second microspheres [O’neil 0024, 0100, hollow beads D].
While O’neil discloses expandable graphite and microspheres in the first part and second part, O’neil does not disclose the expandable graphite comprises moisture, the first microspheres are polymeric and at least partially coated with an inorganic filler, and the second microspheres are polymeric and at least partially coated with aluminum trihydroxide.
Wenmao discloses expanded graphite comprising graphite flake [Wenmao 0005, in reference to Claim 6 limitation of expandable graphite comprises a plurality of graphite flake] with a moisture content [see Claim 1 limitation, expandable graphite comprising moisture] of no greater than 1.5% [Wenmao 0026], which overlaps and obviates the claimed range [see Claim 6, having a moisture content in the range from about 0.05 wt % to about 5 wt % per graphite flake]. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. It would have been obvious to one of ordinary skill in the art before the effective filing date to select a range of moisture content near the range disclosed by Wenmao since Wenmao discloses expanded graphite for sealing applications [Wenmao 0004] and Wenmao’s teachings would be considered an advancement on the invention of O’neil. Further, Wenmao’s teachings show that the moisture content is a result effective variable. Expanded graphite must be washed with water to reduce the pH and dried to produce expanded graphite with low sulfur content to reduce the corrosive properties of residual sulfur [Wenmao 0005, 0015-0016]. It would be expected from the teachings of Wenmao, that for too little drying there will be excess moisture and sulfur present, which could result in eventual corrosion for the applied use of the expanded graphite. At some point, there would be no further benefit from drying to reduce the moisture content and sulfur. Determining the acceptable moisture content could be determined through routine experimentation and would be considered obvious per MPEP 2144.05IIB. Further, the Examiner has reviewed the instant specification for criticality of the claimed range and no evidence of criticality of range or unexpected results was found, therefore the prior art applies.
Meguriya teaches a curable polysiloxane compound with hollow organic resin microsphere fillers [0005-0006, 0034, and throughout]. Meguriya further teaches the use of hollow organic resin microsphere fillers has advantages over glass or ceramic hollow microsphere fillers due to the specific gravity of glass hollow fillers not providing weight reduction for the sealant and not lowering the heat conductivity [Meguriya 0005]. Meguriya further teaches hollow organic resin fillers swell during curing, which makes them moldable [Meguriya 0034 and throughout] and shock-absorbing [Meguriya 0049 and throughout] with good cushioning and low compression set [Meguriya abstract and throughout], which overcomes the shortcomings of glass microspheres which are insufficient cushioning and have a high compression set [Meguriya 0005]. Meguriya teaches the hollow polymer microspheres may be coated with an inorganic filler to strengthen the hollow polymer filler particles [Meguriya 0034 and throughout]. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Meguriya’s teaching of the benefits of hollow polymer microspheres coated with an inorganic filler as a substitute for O’neil’s first and second hollow glass microspheres for the predictable result of a lightweight, curable and moldable cushioning material with low compression set [Meguriya abstract 0005-0005, 0049, and throughout] for use as a silicone rubber foam with good heat resistance [O’neil 0002 and throughout ; Meguriya 0004-0005].
Meguriya teaches hollow polymeric microspheres coated with an inorganic filler [Meguriya 0034 and throughout] but Meguriya does not explicitly teach aluminum trihydroxide. Mammarella teaches the use of hollow polymeric microspheres coated with aluminum trihydroxide for flame resistance [Mammarella abstract and throughout] as a low density fillers for sealants [Mammarella 0004]. Mammarella further teaches that polymeric microspheres are coated to minimize agglomeration and make them free-flowing but that some coatings, such as calcium carbonate, increase the flammability of the microspheres and therefore also require the addition of a flame retardant to the compound [Mammarella 0004]. By coating polymeric microspheres with a known flame retardant, adding additional flame retardant to the compound can be avoided, which is preferred since additional flame retardants can change the viscosity of the compound [Mammarella 0004-0005]. It would have been obvious to one of ordinary skill in the art before the effective filing date that coating O’neil modified by Meguriya’s first and/or second microspheres with an inorganic filler to minimize agglomeration [Mammarella 0004-0005, 0011] and in the case of as aluminum trihydroxide [Mammarella 0019] to minimize flammability would be an improvement on the polysiloxane compound of modified O’neil. Further, it would have been obvious to use aluminum trihydroxide as the inorganic coating for either or both of the first and second polymeric microspheres to improve the flammability characteristics of the compound with an expectation of success. See MPEP 2143 (C) Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding Claim 2, modified O’neil discloses the two-part composition of claim 1, wherein the first polymeric microspheres are the same as the second polymeric microspheres [As described above O’neil discloses hollow glass beads D for both the first and second part [O’neil 0100]. In substituting Meguriya’s polymeric microspheres coated with an inorganic filler for O’neil’s hollow glass beads D in the first and second part (where the first and/or second part is coated by aluminum trihydroxide for its flame retarding properties [Mammarella 0019]), it would have been obvious to one of ordinary skill in the art before the effective filing date to select the same polymeric microspheres for both the first and second polymeric microspheres since O’neil uses the same material for both. Further, Meguriya teaches using a single type of hollow filler or two different hollow fillers [Meguriya 0036, 0043, and throughout]; therefore, it would be obvious to use the same single type for both for simplification of the process. See 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding Claim 4, modified O’neil discloses the two-part composition of claim 1, wherein the inorganic filler on the first polymeric microspheres comprises at least one of aluminum trihydroxide, calcium carbonate, or magnesium hydroxide [Mammarella 0004, 0007, abstract, and throughout (Mammarella discloses calcium carbonate as a known coating for polymeric microspheres to reduce agglomeration and aluminum trihydroxide, and metal hydroxides for coatings on microspheres with improved flammability, which reads on the claimed inorganic fillers.); Meguriya 0071 (Meguriya provides an example with calcium carbonate coating.) It would have been obvious to one of ordinary skill before the effective filing date to try from Meguriya’s and Mammarella’s finite list of coatings for the claimed inorganic filler on the first polymeric microspheres. See 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.].
Regarding Claim 5, modified O’neil discloses the two-part composition of claim 1, wherein the hydrosilylation catalyst comprises platinum [O’neil 0024, 0079, 0100, and throughout; Meguriya 0042, 0053, Examples 1-3 and 5 use platinum as a catalyst.].
Regarding Claim 7, modified O’neil discloses the two-part composition of claim 1, packaged in a system comprising a first chamber and a second chamber, wherein the first chamber comprises the first part, and wherein the second chamber comprises the second part [O’neil 0099-0100, first package A1 as the first chamber comprising the first part and second package A2 as the second chamber comprising the second part].
Regarding Claim 8, modified O’neil discloses the two-part composition of claim 1, wherein the vinyl-substituted polysiloxane is represented by the formula of claim 8 [O’neil 0024, formula A below, where R’ is preferable a vinyl group].
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Regarding Claim 9, modified O’neil discloses the two-part composition of claim 1, wherein the vinyl-substituted polysiloxane comprises one or more vinyl-substituted polysiloxanes independently having viscosity in a range of from about 100 mPa-s to about 500,000 mPa-s at 25 ° C [O’neil 0073, 0159 O’neil teaches the vinyl polysiloxane component A has a viscosity of 5 to 60,000 mPa-s at 25 ° C, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Further, O’neil discloses an example with component A1 ranging from 80 mPa·s to 120 mPa·s and component A2 ranging from 500 mPa·s to 650 mPa·s. O’neil’s example falls within the claimed range of about 100 to 500,000 mPa*s, and therefore anticipates the claimed range [See MPEP 2131.03].
Regarding Claim 10, modified O’neil discloses the two-part composition of claim 1, wherein the hydrosilyl-substituted polysiloxane is represented by the formula of Claim 10 [O’neil 0024, 0100, 0159-0177, and throughout (O’neil discloses the second package A2 comprises a polysiloxane component B comprising two telechelic hydrogen atoms bonded to silicon per molecule or at least three hydrogen atoms bonded to silicon per molecule [0100]. Further, O’neil’s polysiloxane component B1 has at least two hydrogen atoms bonded to silicon per molecule that can be polydimethylsiloxane with dimethylsilylhydride end-units of formula M’DxM’, where D is a siloxy unit of (CH3)2SiO2/2, M’ is a siloxy unit of (CH3)2(H)SiO1/2, and x is an integer from 8-11 [0159-0177]).].
Regarding Claim 11, modified O’neil discloses the two-part composition of claim 1, further comprising an alcohol having at least one hydroxyl group or a second inorganic filler [O’neil 0024 (O’neil discloses the following inorganic fillers: wollastonite, aluminum trihydrate, magnesium hydroxide, halloysite, huntite hydromagnesite, expandable graphite, zinc borate, mica or a fumed silica.); Meguriya 0043 (Meguriya teaches silica, calcium carbonate, silicon resins, conductive zinc white, metal powders, iron oxide, cerium oxide.) Further, Meguriya teaches alcohols [Meguriya 0037-0038]. It would have been obvious to one of ordinary skill in the art before the effective filing date to include such fillers as low density strengtheners [O’neil 0049], fire retardants [O’neil 0093-0094], reinforcements and heat stabilizers [Meguriya 0042], and rheological adjuvants [O’neil 0095] in the compound taught by O’neil depending on the specific application of the two-part composition. Further, it would have been obvious to combine Meguriya’s teachings about the use of alcohols to promote the formation of an open cell structure during heating and curing of the silicon rubber composition filled with hollow polymeric microspheres [Meguriya 0037]. See MPEP 2143 (C) Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding Claim 12, modified O’neil discloses a sealant comprising a cured product of the two-part composition of claim 1 [O’neil 0045-0048 (O’neil discloses an application for the cured two-part composition, which is effectively used to isolate the battery from moisture and to provide protection against heat transfer within a battery module, which reads on the claimed sealant.); Mammarella abstract and throughout (Mammarella discloses a sealant.)].
Regarding Claim 13, modified O’neil discloses the sealant of claim 12 as described above. Since Claims 1, 12, and 13 are drawn to a product and not a method of making, the limitation “prepared from the two-part composition stored for 30 days at room temperature, wherein a compression set of the sealant is not more than 50% higher than a compression set of the sealant prepared from the two-part composition freshly prepared, wherein compression set is measured after 24 hours at 50% compression at 85 ° C” is a product-by-process limitation per MPEP 2113. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In this case, the product is a sealant comprising a cured product of the two-part composition of Claim 1. First, the Examiner has reviewed the structure implied by the process steps. The structure indicates a sealant which does not have a compression set of more than 50% after being compressed by 50% at 85 ° C after 24 hours relative to its initial compression set. Such structure would be expected in the invention of O’neil since O’neil’s sealant is made from the two-part composition of claim 1 [See MPEP 2112.01, inherency]. 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, O’neil’s sealant is used in a battery module [O’neil 0045-0047] and has mechanical flexibility and thermal stability over the temperature range of -70 ° C to 200 ° C [O’neil 0047]. For these reasons, It would have been obvious to one of ordinary skill in the art before the effective filing date that the sealant of modified O’neil would inherently have the compression set properties claimed. Further, Meguriya teaches a polysiloxane composition with low compression set after 150 ° C and 180 ° C for 22 hrs [Meguriya 0048-0049, Table 1 Examples 1-6], which provide additional evidence that the two-part composition of O’neil would be expected to meet the claim limitation.
Regarding Claim 14 modified O’neil discloses an assembly comprising:
a first substrate [O’neil 0047, battery module casing];
a second substrate [O’neil 0047, battery cells in the casing]; and
a cured product of the two-part composition of claim 1 in contact with the first substrate and the second substrate [O’neil 0047 and throughout (The cured two-part composition of Claim 1 fills partially or fully the open space of the battery module casing by covering partially or totally said battery cells.)].
Regarding Claim 15 and 16, modified O’neil discloses the assembly of claim 14, wherein the first substrate and the second substrate enclose a void defined therebetween [O’neil 0047 (The two-part composition of Claim 1 fills partially or fully the open space of the battery module casing by covering partially or totally said battery cells. The open space is the claimed void therebetween.)], further comprising an electronic component located at least partially within the void [O’neil 0047, battery cells are the electronic component [Claim 15 and 16].
Regarding Claim 17, modified O’neil discloses the two-part composition of claim 1, further comprising a second inorganic filler comprising at least one of a glass, a ceramic, a mineral, or silica [O’neil 0039 and throughout (O’neil discloses wollastonite, halloysite, huntite hydromagnesite, and mica, which read on mineral, and silica.); Meguriya 0042 (Meguriya teaches silica, calcium carbonate.)]. It would have been obvious to one of ordinary skill in the art before the effective filing date to include such fillers as low density strengtheners [O’neil 0049], fire retardants [O’neil 0093-0094] and rheological adjuvants [O’neil 0095] and other fillers as taught be Meguriya [0042] depending on the application of the two-part composition. See MPEP 2143 (C) Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding Claim 18, modified O’neil discloses the two-part composition of claim 1, wherein the first polymeric microspheres are different from the second polymeric microspheres [As described above Meguriya’s polymeric microspheres coated with an inorganic filler are substituted for O’neil’s hollow glass beads D in the first and second part (where the first and/or second part is coated by aluminum trihydroxide for its flame retarding properties [Mammarella 0019]). Meguriya further discloses the advantages of using two or more different hollow organic resin fillers of different softening points [Meguriya 0036, 0043, and throughout]. It would have been obvious to one of ordinary skill in the art before the effective filing date to select different polymeric microspheres for the first and second polymeric microspheres to create an open-cell structure [Meguriya 0036] for a sealing composition where an open-cell structure is required . See 2143 (E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding Claim 20, modified O’neil discloses the two-part composition of claim 1, wherein at least one of the first polymeric microspheres or the second polymeric microspheres is present in a range from about 0.05 percent by weight to about ten percent by weight, based on the total weight of the two-part composition. [O’neil 0111, 0177, Table 2 formulations 3-5 (Modified O’neil teaches the curable organopolysiloxane (silicone) composition comprises hollow glass beads D that preferably include glass microspheres that are added in an amount of 5-30 parts by weight relative to each of the first package A1 and the second package A2 of the two-part composition [O’neil 0111]. Further, O’Neil discloses examples having glass microspheres in an amount of about 9 wt% [O’neil 0177, Table 2 formulations 3-5]. Modified O’neil’s examples fall within the claimed range of about 0.05 to 10 wt%, and therefore, satisfy the claimed range. See MPEP 2131.03. Further, the range disclosed by O’neil overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or are “merely close” a prima facie case of obviousness exists.].
Regarding Claim 21, modified O’neil discloses the two-part composition of claim 1, wherein the hydrosilyl-substituted polysiloxane is present in a range from about 0.5 percent by weight to about twenty percent by weight, based on the total weight of the second part [Modified O’neil 0117, Table 2, formulations 3-5 (O’neil’s examples have 8.5 wt % to 13.6 wt % and fall within the claimed range of about 0.5 to 20 wt%. Therefore, the examples satisfy the claimed range per MPEP 2131.03.)].
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over O’neil et al [US20180223069A1 dated August 9, 2018, as provided on the ISR], hereinafter O’neil, in view of Wenmao et al. [CN102491310A, dated June 13, 2012, machine translation relied upon provided], hereinafter Wenmao, in further view of Meguriya [US20020014712A1], and in further view of Mammarella et al. [US20170174955A1, dated June 22, 2017], hereinafter Mammarella, as applied to Claim 1, in further view of Swindells et al. [US 20130045358A1, dated February 21, 2013], hereinafter Swindells.
Regarding Claim 19, modified O’neil discloses the two-part composition of claim 1 and discloses expandable graphite comprising moisture as described in Claim 1 but is silent to the weight percentage of expandable graphite. Swindells discloses 6.5 g expandable graphite ADT1002 mixed with 25 g Dow 9601 silicone and a 1.2 g catalyst DC9600 [Swindells 0063-0068], which would be comparable to the first part of modified O’neil. Swindells’ example has expandable graphite that is 19.9 wt %, and therefore anticipates the claimed range [See MPEP 2131.03] from about 0.05 percent by weight to about thirty percent by weight, based on the total weight of the first part. It would have been obvious to one of ordinary skill in the art before the effective filing date to use a wt % of expandable graphite range around the range taught by Swindells for the expandable graphite filler taught by modified O’neil as described in Claim 1 since Swindells teaches expandable graphite as fillers for silicone sealants in wt percentage described above suppress direct heat transfer, which supports structural integrity and fire/ heat resistance [Swindells 0075-0076]. Further, the skilled artisan would expect the same benefits described by Swindells for the expandable graphite wt% taught by Swindell in the two-part composition of modified O’neil. See MPEP 2143 (A) Combining prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments on pgs. 4-7 are directed at the Examiner’s rejection of claim 1 in the Office Action dated 8/28/2025 over the combination O’neil with Hemery with Hemery’s plastic hollow spheres substituted for O’neil’s glass microspheres in the first and second part. Specifically, Applicant argues on pgs. 3-4 that O’neil’s polysiloxane employs addition cured silicone chemistry with a hydrosilylation catalyst, which is different from Hemery. The Examiner respectfully disagrees with the Applicant’s argument that one of ordinary skill in the art would not expect that Hemery’s plastic hollow spheres can be substitution for O’neil’s glass spheres for the claimed two-part composition. Hemery teaches curing catalysts [Hemery 0091-0108] used with polysiloxanes [Hemery 0159 and throughout] and fillers [Hemery 0156]. The skilled artisan would be expected that, since both O’neil’s and Hemery’s hollow spheres are used as fillers [Hemery 0156, O’neil 0049] in a polysiloxane composition [Hemery and O’neil discussed throughout] and Hemery discloses both hollow glass spheres and hollow plastic spheres as fillers, hollow spheres made of plastic can be used for the same function as the hollow spheres made of glass, which is to reduce the density of the polysiloxane-based curable foam compositions [O’neil 0049]. The Examiner recited MPEP 2144.07, art recognized suitability for an intended purpose, which provides the basis for obviousness. An art-recognized substitution of a known filler in a polysiloxane composition is motivation enough alone. Further, Hemery’s taught composition is used as a sealant [Hemery 0161-0162]. Therefore, it would be obvious that there would be a reasonable expectation of success that Hemery’s teachings of plastic or glass hollow spheres in a polysiloxane compound can be combined with O’neil by substituting Hemery’s plastic hollow spheres as the filler instead of/or with O’neil’s glass hollow spheres in O’neil’s two part composition of a polysiloxane compound as a sealant.
Regarding Applicant’s arguments on pgs. 5-6, Applicant recites MPEP 2144.06 on pg. 5. In the Office Action dated 08/28/2025, the Examiner recited MPEP 2144.07 since the prior art of Hemery specifically provides the use of plastic hollow spheres as a filler in a polysiloxane composition as described above. However, with regard to Applicant’s recitation of MPEP 2144.06, substituting equivalents known for the same purpose, Hemery’s usage of either hollow glass spheres or hollow plastic spheres as fillers in a polysiloxane compound used as a sealant is evidence that the equivalency is recognized in the prior art. Thus, the Applicant’s arguments further support the Examiner’s position.
Regarding Applicants continued arguments on pg. 5-6 about compressive strengths and melting points, the instant claims are not commensurate with what is argued and therefore these arguments do not advance prosecution. If future instant claims require specific melting points and compressive strengths, any future arguments regarding criticality of such melting points and compressive strengths would be considered by the Examiner.
Applicant’s arguments regarding the insufficiency of the rejection rationale and lack of reasonable expectation for success are not persuasive as Hemery clearly provides for the usage of hollow glass spheres or hollow plastic spheres as fillers in a curable polysiloxane composition, which would be considered analogous art for O’neil’s two-part curable polysiloxane composition with glass hollow spheres. As described above, the Examiner has recited MPEP 2144.07 to demonstrate the basis for obviousness as it applies to the prior art. As argued by the Applicant, MPEP 2144.06 also applies.
For the reasons provided above, evidence of obviousness over the prior art outweighs evidence of nonobviousness, and the previous rejections are maintained.
While the Examiner maintains the previous rejections for the reasons provided above, in an effort toward compact prosecution, the Examiner has provided alternative rejections over O’neil in view of Wenmao, Meguriya, and Mammarella for claims 1-2, 4-18, and 20-21 and O’neil in view of Wenmao, Meguriya, Mammarella, and Swindells for claim 19. Specifically as it relates to Applicant’s arguments, Meguriya teaches the benefits of hollow plastic spheres over hollow glass spheres as fillers in a polysiloxane composition. In addition to the alternative rejections provided above, Meguriya’s teachings provide additional evidence in support of the combination of O’neil with Hemery.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. T. LEONARD whose telephone number is (571)270-1681. The examiner can normally be reached Mon-Fri 8:30-5 EST.
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/M. T. LEONARD/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724