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 .
Claims 1-6, 8-19 are pending.
Claims 1-6, 8-10, 16-19 are under examination on the merits.
Claims 1, 4 are amended.
Claim 7 is newly canceled.
Claims 16-19 are newly added.
Election/Restrictions
The election of Group I, claims 1-10 in the previous action with traverse is acknowledged. In Remarks filed 8/20/25 applicant states that a proper search for the foam layer (Group I) would overlap with a search for a process of making a foam layer (Group II). This is not found convincing because Group I is to a product and thus any method of making that product reads on the product. A search for the product includes terms specific to the resultant foam layer, while a search for the method requires different terms unique to the claimed method of making.
Claims 11-15 remain withdrawn.
This requirement is made final.
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.
The rejection in the previous action of claim 4 under 35 U.S.C. 112 (b) is withdrawn in view of applicant’s amendment to item (b).
Claims 16-19 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 16, 18 and 19 are further rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. Claims 16, 18 and 19 contain parentheses, which are confusing as their presence brings into question whether the contents of the parenthetical phrase is required or not. Applicant may delete the parentheses or the phrase in each case. For the purposes of compact prosecution, in each case it will be assumed that the parentheses are deleted but the phrase remains.
Claim 19 is further rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. Claim 19 recites the limitation "the gaseous cavities" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 19 depends on claim 1; claim 1 describes “cavities having an oblong shape” but it is not clear if these are equivalent to “gaseous cavities” in claim 19. For the purpose of compact prosecution “gaseous cavities” will be assumed to refer to all cavities in the silicone rubber foam layer.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The rejection in the previous action of claim(s) 1-6, 8-10 under 35 U.S.C. 102(a)(1) as being anticipated by US 4593049 by Bauman is repeated and amended below to reflect applicant’s amendment. New claims 16-18 are rejected under the same premise.
Regarding claim 1, Bauman describes a silicone rubber foam layer (col 12 ln 47-51). Bauman meets the claim’s broadest reasonable interpretation by describing a silicone foam, which will not have completely ubiquitous spherical cells and must contain some cells which are longer in the thickness direction than other directions.
The process of the claim is product-by-process language. “[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 re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since the first and second films of the instant process may be removed, they are not required to be present in the instant product. Furthermore, the process is “comprising the steps of” the process; the product claimed includes those made with additional, undisclosed steps. For example after step g) the foam may be compressed before curing, rendering the oblong cavities spherical. Bauman describes the instant product by describing a silicone rubber foam layer.
Regarding claim 2, Bauman describes for example hydrogen gas (col 4 ln 9-10).
Regarding claim 3, Bauman describes an addition curing type two part silicone composition (instant p.8 ln 15-18; Bauman col 11 ln 10-35).
Regarding claim 4, Bauman describes:
a) an organopolysiloxane (item (1))
b) an organohydrogenpolysiloxane with at least three hydrogen atoms per molecule (item (4))
c) a hydroxyl-containing compound, a hydroxylated polydiorganosiloxane (item (2))
d) a catalyst (item (3)) (the above items are cited from col 2 ln 45-65)
e) optionally a blowing agent (col 3 ln 39-44)
Regarding claim 5 and 6 Bauman meets the claim wherein the films are removed.
Regarding claim 8, Bauman exemplifies ceramic fibers (e.g. col 18 ln 50-53) and describes carbon and aramide fibers alternatively (col 10 ln 28-30).
Regarding claim 9, Bauman exemplifies the presence of ceramic fiber and aluminum trihydrate (col 20 ln 4-5, Table VIII Foam 8). Bauman further describes fume silica (silicates;glasses), potassium titanate (titanates), diatomaceous earth (clay), zinc oxide (metal oxide) (col 10 ln 44-48).
Regarding claim 10, Bauman describes a density less than 160 kg/m3 (col 2 ln 40-44).
Regarding claim 16, Bauman describes the resultant product of the claimed process; see rejection of claim 1 above. There is no requirement that the solid films be present in the final product and Bauman describes the silicone rubber foam.
Regarding claim 17, Bauman describes for example hydrogen gas (col 4 ln 9-10) as well as air (col 12 ln 47-50).
Regarding claim 18, Bauman does not describe the presence of ceramic or polymeric shells surrounding the cavities (e.g. Example 1).
Claims 1-6, 16, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20050143480 by Hirayama et al.
Hirayama describes a silicone elastomer porous body.
Regarding claim 1, Hirayama describes a silicone rubber porous body (e.g. Example 1 paragraph 53-54). Hirayama describes “the water removed by evaporation leave cells” (paragraph 42), i.e. reads on “a foam” wherein water vapor is present in lieu of a chemical foaming agent. Hirayama describes a layer of the silicone body (paragraph 44). Hirayama describes some cells which are not perfectly spherical, i.e. reads on the broadest reasonable interpretation of “comprises cavities having an oblong shape” (paragraph 18-20, Fig.1-2).
Regarding the process steps a)-j), Hirayama need not prepare his silicone in the same way in order to read upon the product. “[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 re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The instant steps do not result in further properties in the product. The first and/or second solid film of the instant silicone foam layer may be removed (item j)) so their presence is not required in the product.
Regarding claim 2, Hirayama describes evaporating water, i.e. the gas in the pores of the silicone rubber is filled with water vapor and air (paragraph 42), meeting the instantly claimed product.
Regarding claim 3, notably the precursor is not claimed, the foam is claimed, however in the interest of compact prosecution- Hirayama describes addition-reaction two part mixtures (paragraph 28, 52).
Regarding claim 4, notably the foam is claimed, not the precursor of the silicone rubber foam, but in the interest of compact prosecution, Hirayama describes:
a) a organopolysiloxane (paragraph 28 “polysiloxane having unsaturated aliphatic group or groups)
b) an active hydrogen-containing polysiloxane comprising preferably three or more hydrogen atoms (paragraph 30)
c) water, a hydroxyl-containing compound (paragraph 35), which also acts as e) the foaming agent (paragraph 42)
d) a curing catalyst in an effective amount (paragraph 32, 36)
Regarding claims 5 and 6, Hirayama reads on this claim at least wherein the films are removed (claim 1 instant step j).
Regarding claim 16, Hirayama reads on this claim because the description of when the second film is applied has not been demonstrated to necessarily affect the properties of the resulting product, especially when other steps are allowed (“comprises” in claim 1) and the films are removed (claim 1 step j). Hirayama need not prepare his silicone in the same way in order to read upon the product. “[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 re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 18, Hirayama describes no ceramic or polymeric shell (paragraph 42).
Regarding claim 19, Hirayama describes a specific example with an average cell diameter of 28 microns (Table 1 Example 1). Prior art which teaches a range overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity (see MPEP section 2131.03). Hirayama also describes a range of average size of 30 microns or less (paragraph 24).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20050143480 by Hirayama et al in view of US 4593049 by Bauman.
Hirayama is described above.
Regarding claim 8, Hirayama describes the presence of additives (paragraph 39) but is silent as to the specific ones claimed.
Bauman is described above.
Bauman states that adding non-flammable fibers and carbon black produces superior flame retardancy (col 4 ln 29-32). Bauman specifically describes carbon fibers, ceramic fibers and aramide fibers (col 10 ln 27-34). Thus it would be obvious to add these fibers to Hirayama’s invention with carbon black in order to arrive at superior flame retardancy in Hirayama’s composition.
Response to Arguments
Applicant’s argument p.8 final paragraph of Remarks submitted 8/20/25 has been considered but is not persuasive. Applicant state that the instant steps of film application results in a foamed layer with an advantageous porous structure. This is not found convincing because the claims are broader than the specification. Claim 1 is open to further steps and also is not specific about the ingredients or properties of the foam, meaning that it includes foams with other specific morphologies than those in the instant examples. Also, the films are not necessary in the final product due to step j).
Applicant further states that the Office’s premise that Bauman meets the instant term “oblong” is erroneous. This is not found convincing because of the breadth of the instant phrase “comprises cavities having an oblong shape”. “Comprises” means that only some oblong cavities need be present to meet the phrase, and “oblong” is not defined in the specification. Thus only a foam with 100% spherical cells would not read on the claim. One of ordinary skill understand that there is necessarily some level of variety of cell size and shape in each foam, and that a foam with 100% spherical cells would need that fact to be disclosed to be achieved. Since Bauman does not describe his cells as 100% spherical, the ones that are not- i.e. “oblong”- read on the instant phrase. Furthermore, the “cavities having an oblong shape” are now tucked into step g), prior to curing, and it is not clear that they are necessarily present after curing, i.e. in the claimed product.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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