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 .
Response to Amendment
The Amendment filed September 16, 2025 has been entered. Claims 1-9, 11-12 and 17-25 remain pending in the application. Claims 10, 13-16 and 26-28 were previously canceled. Claims 8-9, 11-12 and 17-25 were previously withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims. Claims 1-2 were amended and support for amendments are found in the claims and specification as originally filed. Applicant’s amendments to the claims have overcome objections previously set forth in the Non-Final Office Action mailed June 16, 2025.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Grau (WO 2016/110570; cited in the IDS submitted on 09/17/2025; hereafter as “Grau”) in view of Elias (US 4882368; cited in the IDS submitted on 02/13/2023; hereafter as “Elias”).
Regarding Claims 1 and 3-4, Grau teaches a curable silicone composition [Claims 1-2, 5, 18] corresponding to the curable silicone composition of Claim 1. Grau further teaches:
At least one polyorganopolysiloxane [Claims 1-2, 5, 18], corresponding to the (A) at least one non-fluorinated polydiorganosiloxane of Claim 1;
Said polyorganopolysiloxane having alkenyl groups [Claims 1, 3], which is interpreted to having at least two alkenyl groups, thereby reading on the at least two alkenyl groups per molecule in component (A) of Claim 3;
Reinforcing silica [Claim 5, 18], corresponding to the (B) reinforcing silica filler of Claim 1;
Polyorganohydrogensiloxanes [Claims 1, 18], corresponding to organohydrogenpolysiloxane (C)(i) of Claim 1;
Hydrosilylation catalyst [Claim 1], corresponding to (C)(ii) hydrosilylation catalyst of Claim 1; and
Peroxide catalyst [Claim 15], corresponding to the (D) peroxide catalyst of Claims 1 and 3.
However, Grau is silent to the hydrophobic treatment of the reinforcing silica with a fluorinated hydrophobing treating agents of Claims 1 and 4.
Nevertheless, Elias teaches a fluorosilicone rubber composition [Example 1] comprising reinforcing silica filler hydrophobed with tetramethyl di(3,3,3-trifluoropropyl)disilazane [Example 1], thereby reading on the reinforcing silica filler treated with fluorinated silazane (B) of Claim 1. Elias also teaches reinforcing silica filler which has been treated with said tetramethyldi(3,3,3-trifluoropropyl)disilazane exhibit increased durometers at the same filler loading [Column 8, Lines 49-56].
Elias also teaches polymethyl(3,3,3-trifluoropropyl)-siloxane having from 10 to 100 units per molecule and being endblocked with dimethylvinylsiloxy group [Claim 4], thereby reading on silanol terminated trifluoropropylalkyl siloxanes where the alkyl groups have 1 to 6 carbons, and overlapping with the claimed 2 to 20 siloxane repeating units of Claim 4.
Grau and Elias are considered to be analogous art as the claimed invention, as all are in the same field of cured silicone elastomer compositions comprising polyorganopolysiloxane, reinforcing silica, organohydrogensiloxanes, and hydrosilylation catalysts.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the hydrophobically treated silica of Elias with the curable silicone composition of Grau, thereby arriving at the claimed invention.
Furthermore, one of ordinary skill in the art would have considered the invention to have been obvious because the range taught by Elias for the number of siloxane repeating units (10-100 units) overlaps the instantly claimed range (2-20 units) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claims 2 and 6, Grau also teaches:
electrically conductive filler is an optional component [Claims 7, 11-12], which is interpreted to include zero, thereby reading on the ≤ 0.1 wt. % electrically conductive filler of Claim 2;
Flame retardant additives and pigments [Claim 16], thereby reading on the flame retardant and pigment of Claim 6.
Regarding Claim 5, however, Grau is silent to the component (C)(i) of Claim 5.
Nevertheless, Elias also teaches a fluorosilicone rubber comprising methylvinylsiloxane units and endblocked with trimethylsiloxy units [Column 7, Lines 47-48], thereby reading on the trimethylsiloxy-terminated methylhydrogenpolysiloxanes (i) of Claim 5. Elias further teaches said fluorosilicone rubber has a low compression set and improved tensile strength [Column 4, Lines 1-4].
Therefore, it would be obvious to one of ordinary skill before the effective filing date of the claimed invention to use the methylvinylsiloxane units and endblocked with trimethylsiloxy units of Elias with the composition of Grau, thereby arriving at the claimed invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Grau (WO 2016/110570; cited in the IDS submitted on 06/16/2025; hereafter as “Grau”) in view of Elias (US 4882368; cited in the IDS submitted on 02/13/2023; hereafter as “Elias”) and in further view of Maxson et al. (US 5302632; cited in the IDS submitted on 02/13/2023; hereafter as “Maxson”).
Grau and Elias teach the non-fluorinated polydiorganosiloxane, silica filler and catalyst of Claim 1 as set forth above and incorporated herein by reference.
However, Grau and Elias are silent to wherein the composition is stored in two parts prior to use, a Part A containing components (A), (B) and (C)(ii), and a Part B containing components (A), (B), (C)(i) and (C)(iii).
Nevertheless, Maxson teaches an organosiloxane composition comprising fluorinated and non-fluorinated polyorganosiloxanes [Abstract], comprising:
Organohydrogenpolysiloxane [Column 7, Lines4-17], corresponding to the organohydrogenpolysiloxane (C(i));
Hydrosilylation catalyst [Column 7, Lines4-17], corresponding to the Hydrosilylation catalyst (C(ii)); and
Inhibitor [Column 7, Lines4-17], corresponding to the cure inhibitor (C(iii)).
Maxson further teaches it is desirable to package the Part A and Part B in two parts to achieve long term storage stability. Both Parts A and B typically contain polymers A and/or B, which correspond to the claimed components (A) and (B). Storage stability is achieved by packaging the organohydrogenpolysiloxane and the hydrosilylation catalyst in separate parts of the composition, corresponding to wherein the composition is stored in two parts prior to use of Claim 7.
Grau, Elias and Maxson are considered to be analogous art as the claimed invention, as all are in the same field organosiloxane compositions.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the rubber composition of Grau and Elias with the cure inhibitor of Maxson, thereby arriving at the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6 of copending Application No. US 2022/0049097 A1 (US ‘097).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and co-pending application US ‘097 both disclose non-fluorinated polydiorganosiloxane, reinforcing filler, organohydrogenpolysiloxane, hydrosilylation catalyst, cure inhibitor, peroxide catalyst, conductive or semi conductive filler, and flame retardants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed September 16, 2025 have been fully considered but they are not persuasive.
Applicant argues (1) that the allowance of the same or similar claims in other jurisdictions as suggest that the claimed invention possesses the requisite novelty and inventive step/non-obviousness, including over Elias. However, U.S. patent law is distinct and the allowance of the same or similar claims in other jurisdictions is not predictive of whether said claims are allowed in the U.S. Thus, applicant’s argument is not persuasive.
Applicant argues (2) that contrary to the claimed invention, Elias requires at least two separate and distinct components that are fluorinated. However, attention is directed to the disclosure of Grau in view of Elias, as set forth above, wherein Grau teaches polyorganopolysiloxane [Claims 1-2, 5, 18], corresponding to the (A) non-fluorinated polydiorganosiloxane; reinforcing silica [Claim 5, 18], corresponding to the (B) reinforcing silica filler; polyorganohydrogensiloxanes [Claims 1, 18], corresponding to organohydrogenpolysiloxane (C)(i); hydrosilylation catalyst [Claim 1], corresponding to (C)(ii) hydrosilylation catalyst; and peroxide catalyst [Claim 15], corresponding to the (D) peroxide catalyst, and Elias further teaches reinforcing silica filler hydrophobed with tetramethyl di(3,3,3-trifluoropropyl)disilazane [Example 1], thereby reading on the reinforcing silica filler treated with fluorinated silazane (B). Thus, applicant’s argument is not persuasive.
Applicant argues (3) the claimed invention provides new and unexpected results over the prior art. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, applicant’s argument is not persuasive. Furthermore, the data presented in the Specification as originally filed has been considered but are not found to be convincing. The data [Specification, Tables 1a-1e] demonstrate a comparative Example 1.1 having no fluorinated silica versus Examples 1.2-1.8 with increasing amounts of fluorinated silica, and the volume resistivity decreasing as a function of the amount of fluorinated silica in the example. This data implies that the fluorinated silica is responsible and essential for the new and unexpected results over the prior art, but does not show that the fluorinated silica needs to be the only fluorinated part of the composition. In other words, the presented data only presents results from non-fluorinated polydiorganosiloxane, and thus cannot show the essentialness of the fluorinated silica being the only fluorinated part of the composition. As such, it is suggested that data be presented to show the volume resistivity with and without fluorinated polydiorganosiloxane, while maintaining the amount of fluorinated silica constant, confers unexpected results. Thus, applicant’s argument is not persuasive.
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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764