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 .
Claim Objections
Claim 12 is objected to because of the following informalities: for conciseness, it is suggested Claim 12 be amended to recite “
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 4, 7, and 16 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.
Claims 4 and 16 set forth the flame retardant filler component comprises a filler selected from the recited species. However, many of the recited species are not encompassed by the possible filler compounds set forth in the independent claims. It is consequently unclear if species recited in the dependent claim are intended to be substitutions for the species set forth in the independent claims or are included in addition to the species set forth in the independent claims. For the purposes of further examination, Claims 4 and 16 will be interpreted as setting forth the flame retardant filler component comprises an alkaline salt selected from magnesium dihydroxide, calcium hydroxide, or a combination thereof and/or the flame retardant filler component further comprises a filler selected from a group consisting of boehmite, huntite, gypsum, hydromagnesite, and any combination thereof.
Similarly, Claim 7 sets forth the flame retardant filler component comprises a filler selected from the recited species. However, many of the recited species are not encompassed by the species recited in the independent claim. It is consequently unclear if species recited in the dependent claim are intended to be substitutions for the species set forth in the independent claims or are included in addition to the species set forth in the independent claims. For the purposes of further examination, Claim 7 will be interpreted as setting forth the flame retardant filler component comprises a transition metal oxide selected from iron oxide, titanium oxide, or a combination thereof and/or the flame retardant filler component further comprises a filler selected from a group consisting of iron oxide, titanium oxide, and any combination thereof.
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.
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, 2, 4, 6, 9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0294044 to Kristy et al. (hereinafter Kristy) in view of CN 109575602 to Guo. For the purposes of examination, citations for Guo are taken from a machine translation of the document obtained from the European Patent Office in June 2024.
Regarding Claims 1, 4, 9, and 12. In Example 6, Kristy teaches a foam layer comprising:
a silicone based matrix component, e.g. a poly(dialkylsiloxane) [0039]. In Example 6, it is prepared by mixing a Part A and a Part B in a weight ratio of 20:1. Part A comprises roughly 50 weight parts of the silicone-based matrix component vinyl-PDMS, while Part B consists of the silicone-based matrix component silicone hydride ([102] and Table 2). Using these values, the foam layer of Example 6 can be calculated to contain the silicone-based matrix component in an amount of roughly 53 weight percent;
and aluminum trihydrate (ATH) (Table 2), corresponding to a flame retardant filler component. Using the values set forth in Table 2, ATH can be calculated to be present in an amount of roughly 10 weight percent in Example 6.
The foam layer has a thickness of less than 10 mm [0033].
Kristy does not expressly teach one of the claimed species of flame retardant fillers is included in the composition. However, in the general disclosure, Kristy teaches ATH, magnesium hydroxide, and magnesium carbonate hydroxide pentahydrate are all suitably used as fillers that can participate in formation of a thermal barrier layer and/or absorb water [0047]. Magnesium hydroxide corresponds to an alkaline salt and alkaline salts are set forth as a suitable species of flame retardant filler in instant Claim 1. Magnesium hydroxide is also alternatively known in the art as magnesium dihydroxide. Magnesium carbonate hydroxide pentahydrate corresponds to a metal carbonate. Before the effective filing date of the instantly claimed invention, it would have been obvious to substitute at least a portion of the ATH in Example 6 of Kristy with magnesium hydroxide or magnesium carbonate hydroxide pentahydrate. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Kristy discloses ATH, magnesium dihydroxide, and magnesium carbonate hydroxide pentahydrate are all suitable fillers that can participate in formation of a thermal barrier layer and/or absorb water for use in the disclosed compositions [0047], thus providing evidence of obviousness in substituting one for the other in such compositions.
Kristy also does not expressly teach an insulation filler component is further included in the foam layer of Example 6. However, in the disclosure Kristy does teach such fillers, e.g. vermiculite, may be included in the inventive foam layers [0072]. Secondary reference Guo also teaches a method of making a silicone foam in which vermiculite and perlite are provided as thermal insulation fillers in an amount of 1 to 3 parts by weight [0027]. Vermiculite is additionally set forth as a flame retardant filler in independent Claim 1. Kristy and Guo are analogous art as they are from the same field of endeavor, namely silicone foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide vermiculite or perlite in an amount of 1 to 3 parts by weight, as taught by Guo, in the foam layer of Example 6 of Kristy. The motivation would have been that Guo teaches this as a suitable amount of this type of thermal insulation filler in silicone foams.
Kristy is silent with respect to the 25% strain compression rating and flammability rating according to ASTM D4986 of the foam layer. However, Kristy, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. 25% strain compression rating in the claimed range and HBF flammability rating according to ASTM D4986, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 2. Kristy teaches the foam layer of Claim 1 wherein the silicone based matrix component comprises platinum-catalyzed addition cured silicone foam [0063].
Regarding Claim 6. Kristy teaches the foam layer of Claim 1 wherein the catalyst provided in Example 6 is 1,3-divinyl-1,1,3,3-tetramethyldisiloxane platinum (Tables 1 and 2).
Claims 13, 14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0294044 to Kristy et al. (hereinafter Kristy) in view of CN 109575602 to Guo. For the purposes of examination, citations for Guo are taken from a machine translation of the document obtained from the European Patent Office in June 2024.
Regarding Claims 13 and 16. In Example 6, Kristy teaches a foam layer comprising:
a silicone based matrix component, e.g. a poly(dialkylsiloxane) [0039]. In Example 6, it is prepared by mixing a Part A and a Part B in a weight ratio of 20:1. Part A comprises roughly 50 weight parts of the silicone-based matrix component vinyl-PDMS, while Part B consists of the silicone-based matrix component silicone hydride ([102] and Table 2). Using these values, the foam layer of Example 6 can be calculated to contain the silicone-based matrix component in an amount of roughly 53 weight percent;
and aluminum trihydrate (ATH) (Table 2), corresponding to a flame retardant filler component. Using the values set forth in Table 2, ATH can be calculated to be present in an amount of roughly 10 weight percent in Example 6.
The foam layer has a thickness of less than 10 mm [0033].
Kristy does not expressly teach one of the claimed species of flame retardant fillers is included in the composition. However, in the general disclosure, Kristy teaches ATH, magnesium hydroxide, and magnesium carbonate hydroxide pentahydrate are all suitably used as fillers that can participate in formation of a thermal barrier layer and/or absorb water [0047]. Magnesium hydroxide corresponds to an alkaline salt and alkaline salts are set forth as a suitable species of flame retardant filler in instant Claim 1. Magnesium hydroxide is also alternatively known in the art as magnesium dihydroxide. Magnesium carbonate hydroxide pentahydrate corresponds to a metal carbonate. Before the effective filing date of the instantly claimed invention, it would have been obvious to substitute at least a portion of the ATH in Example 6 of Kristy with magnesium hydroxide or magnesium carbonate hydroxide pentahydrate. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Kristy discloses ATH, magnesium dihydroxide, and magnesium carbonate hydroxide pentahydrate are all suitable fillers that can participate in formation of a thermal barrier layer and/or absorb water for use in the disclosed compositions [0047], thus providing evidence of obviousness in substituting one for the other in such compositions.
Kristy is silent with respect to the 25% strain compression rating and self-ignition time of the foam layer. However, Kristy, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. 25% strain compression rating and self-ignition time when exposed to a hotplate test at 650°C in the claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 14. Kristy teaches the foam layer of Claim 13 wherein the silicone based matrix component comprises platinum-catalyzed addition cured silicone foam [0063].
Regarding Claim 18. Kristy teaches the foam layer of Claim 13 wherein the catalyst provided in Example 6 is 1,3-divinyl-1,1,3,3-tetramethyldisiloxane platinum (Tables 1 and 2).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0294044 to Kristy et al. (hereinafter Kristy) in view of CN 109575602 to Guo. For the purposes of examination, citations for Guo are taken from a machine translation of the document obtained from the European Patent Office in June 2024.
Regarding Claim 19. Kristy teaches a composite thermal management sheet comprising a silicone foam layer and a reactive filler composition disposed therein, wherein the second filler forms a thermal barrier layer with a decomposition product of the first filler [0006]. The silicone foam layer of Example 6 specifically comprises:
a silicone based matrix component, e.g. a poly(dialkylsiloxane) [0039]. In Example 6, it is prepared by mixing a Part A and a Part B in a weight ratio of 20:1. Part A comprises roughly 50 weight parts of the silicone-based matrix component vinyl-PDMS, while Part B consists of the silicone-based matrix component silicone hydride ([102] and Table 2). Using these values, the foam layer of Example 6 can be calculated to contain the silicone-based matrix component in an amount of roughly 53 weight percent;
and aluminum trihydrate (ATH) (Table 2), corresponding to a flame retardant filler component. Using the values set forth in Table 2, ATH can be calculated to be present in an amount of roughly 10 weight percent in Example 6.
The foam layer has a thickness of less than 10 mm [0033].
Kristy does not expressly teach one of the claimed species of flame retardant fillers is included in the composition. However, in the general disclosure, Kristy teaches ATH, magnesium hydroxide, and magnesium carbonate hydroxide pentahydrate are all suitably used as fillers that can participate in formation of a thermal barrier layer and/or absorb water [0047]. Magnesium hydroxide corresponds to an alkaline salt and alkaline salts are set forth as a suitable species of flame retardant filler in instant Claim 1. Magnesium hydroxide is also alternatively known in the art as magnesium dihydroxide. Magnesium carbonate hydroxide pentahydrate corresponds to a metal carbonate. Before the effective filing date of the instantly claimed invention, it would have been obvious to substitute at least a portion of the ATH in Example 6 of Kristy with magnesium hydroxide or magnesium carbonate hydroxide pentahydrate. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Kristy discloses ATH, magnesium dihydroxide, and magnesium carbonate hydroxide pentahydrate are all suitable fillers that can participate in formation of a thermal barrier layer and/or absorb water for use in the disclosed compositions [0047], thus providing evidence of obviousness in substituting one for the other in such compositions.
Kristy also does not expressly teach an insulation filler component is further included in the foam layer of Example 6. However, in the disclosure Kristy does teach such fillers, e.g. vermiculite, may be included in the inventive foam layers [0072]. Secondary reference Guo also teaches a method of making a silicone foam in which vermiculite and perlite are provided a thermal insulation filler in an amount of 1 to 3 parts by weight [0027]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide vermiculite in an amount of 1 to 3 parts by weight, as taught by Guo, in the foam layer of Example 6 of Kristy. The motivation would have been that Guo teaches this to be a suitable amount of this type of thermal insulation filler in silicone foams.
Kristy is silent with respect to the 25% strain compression rating and flammability rating according to ASTM D4986 of the thermal barrier composite. However, Kristy, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. 25% strain compression rating in the claimed range and HBF flammability rating according to ASTM D4986, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claims 1, 2, and 6 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0294044 to Kristy et al. (hereinafter Kristy) in view of US 5,438,081 to Lewis et al. (hereinafter Lewis).
Regarding Claims 1, 7, and 8. In Example 6, Kristy teaches a foam layer comprising:
a silicone based matrix component, e.g. a poly(dialkylsiloxane) [0039]. In Example 6, it is prepared by mixing a Part A and a Part B in a weight ratio of 20:1. Part A comprises roughly 50 weight parts of the silicone-based matrix component vinyl-PDMS, while Part B consists of the silicone-based matrix component silicone hydride ([102] and Table 2). Using these values, the foam layer of Example 6 can be calculated to contain the silicone-based matrix component in an amount of roughly 53 weight percent.
The foam layer has a thickness of less than 10 mm [0033].
Kristy does not expressly teach an insulation filler or one of the claimed species of flame retardant fillers is included in the composition. However, Kristy does teach in the general disclosure that metal oxides and calcium carbonate may be included in the silicone foam layer as additional fillers [0072]. Metal oxide and metal carbonates are both set forth as flame retardant fillers in independent Claim 1. Secondary reference Lewis teaches iron oxide, as well as calcium carbonate, may be provided as fillers in silicone foams in an amount of at least about 2 weight percent and preferably about 20 to 30 weight percent (Column 4, Lines 29 – 33 and Column 5, Lines 13 – 14). Kristy and Lewis are analogous art as they are from the same field of endeavor, namely silicone foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to further provide iron oxide or calcium carbonate in the foam layer of Example 6 of Kristy in an amount in the preferred range of 20 to 30 weight percent taught by Lewis. As iron oxide and calcium carbonate each correspond to both a flame retardant filler and an insulation filler, inclusion of the either compound in Kristy in the preferred range of Lewis would result in a flame retardant filler being present in an amount of at least 10 weight percent and not greater than 20 weight percent, as well as an insulation filler component in an amount of 1 to 25 weight percent of the foam layer. The motivation would have been that Kristy teaches such fillers provide insulative properties [0072], while Lewis shows discloses this to be a suitable amount of such fillers in silicone foams.
Kristy is silent with respect to the 25% strain compression rating and flammability rating according to ASTM D4986 of the foam layer. However, Kristy, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. 25% strain compression rating in the claimed range and HBF flammability rating according to ASTM D4986, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 2. Kristy teaches the foam layer of Claim 1 wherein the silicone based matrix component comprises platinum-catalyzed addition cured silicone foam [0063].
Regarding Claim 6. Kristy teaches the foam layer of Claim 1 wherein the catalyst provided in Example 6 is 1,3-divinyl-1,1,3,3-tetramethyldisiloxane platinum (Tables 1 and 2).
Claims 13, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0294044 to Kristy et al. (hereinafter Kristy) in view of US 5,438,081 to Lewis et al. (hereinafter Lewis).
Regarding Claim 13. In Example 6, Kristy teaches a foam layer comprising:
a silicone based matrix component, e.g. a poly(dialkylsiloxane) [0039]. In Example 6, it is prepared by mixing a Part A and a Part B in a weight ratio of 20:1. Part A comprises roughly 50 weight parts of the silicone-based matrix component vinyl-PDMS, while Part B consists of the silicone-based matrix component silicone hydride ([102] and Table 2). Using these values, the foam layer of Example 6 can be calculated to contain the silicone-based matrix component in an amount of roughly 53 weight percent.
The foam layer has a thickness of less than 10 mm [0033].
Kristy does not expressly teach an insulation filler or one of the claimed species of flame retardant fillers is included in the composition. However, Kristy does teach in the general disclosure that metal oxides and calcium carbonate may be included in the silicone foam layer as additional fillers [0072]. Metal oxide and metal carbonates are both set forth as flame retardant fillers in independent Claim 13. Secondary reference Lewis teaches iron oxide, as well as calcium carbonate, may be provided as fillers in silicone foams in an amount of at least about 2 weight percent and preferably about 20 to 30 weight percent (Column 4, Lines 29 – 33 and Column 5, Lines 13 – 14). Kristy and Lewis are analogous art as they are from the same field of endeavor, namely silicone foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to further provide iron oxide or calcium carbonate in the foam layer of Example 6 of Kristy in an amount in the preferred range of 20 to 30 weight percent taught by Lewis. As iron oxide and calcium carbonate each correspond to both a flame retardant filler and an insulation filler, inclusion of the either compound in Kristy in the preferred range of Lewis would result in a flame retardant filler being present in an amount of at least 10 weight percent and not greater than 20 weight percent of the foam layer, as well as an insulation filler component in an amount of 1 to 25 weight percent. The motivation would have been that Kristy teaches such fillers provide insulative properties [0072], while Lewis shows discloses this to be a suitable amount of such fillers in silicone foams.
Kristy is silent with respect to the 25% strain compression rating and self-ignition time of the foam layer. However, Kristy, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. 25% strain compression rating and self-ignition time when exposed to a hotplate test at 650°C in the claimed ranges, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 14. Kristy teaches the foam layer of Claim 13 wherein the silicone based matrix component comprises platinum-catalyzed addition cured silicone foam [0063].
Regarding Claim 18. Kristy teaches the foam layer of Claim 13 wherein the catalyst provided in Example 6 is 1,3-divinyl-1,1,3,3-tetramethyldisiloxane platinum (Tables 1 and 2).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0294044 to Kristy et al. (hereinafter Kristy) in view of US 5,438,081 to Lewis et al. (hereinafter Lewis).
Regarding Claim 19. Kristy teaches a composite thermal management sheet comprising a silicone foam layer and a reactive filler composition disposed therein, wherein the second filler forms a thermal barrier layer with a decomposition product of the first filler [0006]. The silicone foam layer of Example 6 specifically comprises:
a silicone based matrix component, e.g. a poly(dialkylsiloxane) [0039]. In Example 6, it is prepared by mixing a Part A and a Part B in a weight ratio of 20:1. Part A comprises roughly 50 weight parts of the silicone-based matrix component vinyl-PDMS, while Part B consists of the silicone-based matrix component silicone hydride ([102] and Table 2). Using these values, the foam layer of Example 6 can be calculated to contain the silicone-based matrix component in an amount of roughly 53 weight percent.
The foam layer has a thickness of less than 10 mm [0033].
Kristy does not expressly teach an insulation filler or one of the claimed species of flame retardant fillers is included in the composition. However, Kristy does teach in the general disclosure that metal oxides and calcium carbonate may be included in the silicone foam layer as additional fillers [0072]. Metal oxide and metal carbonates are both set forth as flame retardant fillers in independent Claim 19. Secondary reference Lewis teaches iron oxide, as well as calcium carbonate, may be provided as fillers in silicone foams in an amount of at least about 2 weight percent and preferably about 20 to 30 weight percent (Column 4, Lines 29 – 33 and Column 5, Lines 13 – 14). Kristy and Lewis are analogous art as they are from the same field of endeavor, namely silicone foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to further provide iron oxide or calcium carbonate in the foam layer of Example 6 of Kristy in an amount in the preferred range of 20 to 30 weight percent taught by Lewis. As iron oxide and calcium carbonate each correspond to both a flame retardant filler and an insulation filler, inclusion of the either compound in Kristy in the preferred range of Lewis would result in a flame retardant filler being present in an amount of at least 10 weight percent and not greater than 20 weight percent, as well as an insulation filler component in an amount of 1 to 25 weight percent of the foam layer. The motivation would have been that Kristy teaches such fillers provide insulative properties [0072], while Lewis shows discloses this to be a suitable amount of such fillers in silicone foams.
Kristy is silent with respect to the 25% strain compression rating and flammability rating according to ASTM D4986 of the thermal barrier composite. However, Kristy, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. 25% strain compression rating in the claimed range and HBF flammability rating according to ASTM D4986, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach or suggest a foam layer comprising all of the instantly claimed ingredients in the instantly claimed amounts including 20 to 85 weight percent of a silicone based matrix component and 0 to 20 weight percent of a flame retardant filler comprising talc or wollastonite, and which foam layer has the claimed properties of a 25% strain compression ratio of 5 to 500 kPa and a HBF flammability rating as measured according to ASTM D4986.
US 6,084,002 to Nicholson et al. (hereinafter Nicholson) corresponds to the closest prior art. Nicholson teaches a foam layer comprising a silicone based matrix component and 1 to 60 weight percent of wollastonite, based on the weight of the silicone based matrix component. Thus, Nicholson teaches an amount of wollastonite as a flame retardant filler which overlaps with the instantly claimed range. Using the various values of the components in the foam layer reported by Nicholson in the general disclosure, the amount of the silicone based matrix component can also be calculated to be roughly 61 to 99 weight percent, which overlaps with the claimed amount of 20 to 85 weight percent. Nicholson further teaches additional fillers may be provided in the foam layer but does not expressly teach suitable amounts thereof.
However, it is the Office’s position that there is insufficient guidance in Nicholson to simultaneously select amounts of silicone based matrix, wollastonite as a flame retardant filler, and further an insulation filler component all in an amounts each within the instantly claimed ranges. Nor is any other prior art reference suitably combined with Nicholson to arrive at this combination of limitations. As Nicholson does not expressly teach a foam layer comprising all of the claimed ingredients in the claimed amounts, it cannot then be presumed that the claimed properties regarding of a 25% strain compression ratio of 5 to 500 kPa and a HBF flammability rating as measured according to ASTM D4986 would necessarily be achieved in the foam layer disclosed by Nicholson.
Response to Arguments
Applicant's arguments filed April 13, 2026 have been fully considered. The Office responds as follows:
Claim Objections
The Office agrees that the amendments to Claims 4 and 16 obviate the outstanding objections to the claims. Accordingly, these objections have been withdrawn. With respect to Claim 12, this objection has been maintained, as the recitations of perlite, vermiculite, silica, and respective species of each of these genera are redundant.
35 U.S.C. 112
The Office agrees that the amendments to Claim 10 obviate the outstanding rejection of the claim under 35 U.S.C. 112(b). Accordingly, this rejection has been withdrawn.
However, the rejections of Claims 4, 7, and 16 under 35 U.S.C. 112(b) have been maintained. While the Office recognizes that some of the species (magnesium dihydroxide, calcium hydroxide, huntite, and hydromagnesite) are encompassed by the broader categories in the independent claims and that the use of the word “comprises” allows for the inclusion of additional components, the Office maintains that the scope of these claims remains indefinite. The simultaneous grouping of species which are encompassed by categories set forth in the independent claims and additional species which are not makes it unclear as to the scope of the dependent claims, i.e. whether the dependent claims are improperly broadening the scope of the independent claims. Accordingly, the rejections under 35 U.S.C. 112(b) have been maintained.
35 U.S.C. 103
Kristy in view of Guo
Applicant argues that Tables 1 and 2 of the instant specification shows that layers S1, S2, and S3 exhibit a synergistic effect due to the inclusion of a flame retardant filler and insulation filler in the ranges recited in the independent claims.
Whether the 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 re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) The Office respectfully submits that the proffered data is not commensurate in scope with the claims.
The claims sets forth a flame retardant filler which comprises a filler selected from a group consisting of a platinum compounds, transition metal oxides, metal carbonates, calcium silicate, aluminum silicates, magnesium silicates, glass frits, alkaline salts, vermiculites, and any combination thereof. On the other hand, the instant specification does not discloses what compound(s) are used as the flame retardant filler. Even assuming arguendo that the compound(s) are used as the flame retardant filler, it would be unlikely that this limited showing would be representative of the instantly claimed flame retardant filler which comprises, in any amount, a filler selected from the large genus of platinum compounds, transition metal oxides, metal carbonates, calcium silicate, aluminum silicates, magnesium silicates, glass frits, alkaline salts, vermiculites, and any combination thereof.
Additionally, only three insulation filler components are tested in the examples (expanded perlite, alumina, or silica), whereas there is no limitation for the insulation filler component which may be provided in the instant and thus it may also correspond to a large number of species. The data provided in the instant specification does not then show that the alleged unexpected synergistic effect would necessarily be obtained in a foam layer according to the instant claims in which is provided any insulation filler and any flame retardant filler which comprises, in any amount, a filler selected from platinum compounds, transition metal oxides, metal carbonates, calcium silicate, aluminum silicates, magnesium silicates, glass frits, alkaline salts, vermiculites, and any combination thereof.
Kristy in view of Lewis
Applicant’s arguments with respect to unexpected results have been responded to in the previous section.
In response to applicant’s argument that the claims require both “a flame retardant filler component” and “an insulation filler component” as separate components, the Office respectfully submits that the claim does not presently include any language which requires these limitations be met by different/distinct compounds.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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