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 Arguments
In their response dated 11/11/2025 the applicants argued following:
Rejection of claims 1 and 5 over Satoji was not traversed.
Rejection of claims 1 and 5 over Wang was not traversed. This rejection is withdrawn because it does not teach silicon or fluorine elastomer
Rejection of claims 1, 2, 507 is withdrawn since Fujieda does not teach the amount of silica as required by instant claim 1.
Rejection of claims 1, 2 and 4 over Arai was not traversed. This reference is withdrawn since the amount of filler per 100 parts of rubber is too high.
Rejection of claims 1, 2, 4 6 and 7 over Yoshinaga (WO 2008/047700) was not traversed. This reference however is withdrawn since the composition is based on epoxy thermosets and does not recite silicon or fluoro rubber.
Rejection of claims 1,2, 4, 5 over Matsuda (IS 2018/0106231) the rejection is withdrawn.
Rejection of claims 1-6 over Wei has not been traversed.
All maintained rejections will be restated to meet limitations of newly amended claims.
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.
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.
Claims 1, 3, 6 and 7 rejected under 35 U.S.C. 103 as being unpatentable over Satoji (US 4,978,763) or Satoji (US 4,976,550).
With respect to claims 1 and 3, Satoji discloses a lubrication g composition comprising diene rubber (Abstract) and silicone or fluorine polymers. Fluorinated polymers are based on polyfluoroalkyls which comprises fluoroalkyl groups having 2-20 carbon atoms as such they are elastomeric compounds. Example of such elastomer is HO-FC, HS-FC utilized in the examples (see Col. 11). HOOC-SIL-1 and HOOC-SIL-2 from Shin-Etsu are also elastomers.
Composition further comprises fillers such as phenolic resin powder and silica (col. 8m l. 45). By way of examples content of the fillers ranges from 64-80 pares per 100 parts of rubber (not including liquid diene, fluorinated or silicon elastomers) shown in table 5. Normalizing the amounts: Total rubber content in examples in Table 4 is normalized to 100%, the total amount of filler is 21.4-60%.
The obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Satoji discloses phenolic resin powder and silica as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine phenolic resin powder and silica in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio. This more or less follows the examples where the two fillers are used at the same time in amounts of 30 and 30 parts or 40 and 35 parts as shown in Table 5. Therefore utilizing silica phenolic resin powder in the same amounts would have been obvious to one having ordinary skill in the art.
With respect to claim 6, the composition is vulcanized (see examples and presence of vulcanizing system).
With respect to claim 7, the composition is utilized as a seal (col. 1, lines 5-10) wherein limitation “for semiconducting manufacturing device” is a recitation of intended use.
Claims 1, 3, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN 103910815).
With respect to claims 1, 3 and 6, Wei discloses composition comprising fluorinated rubber that is vulcanized [0007] with peroxide system [0008]. Inorganic filler is silica [0013] utilized in amount of 10-40parts, phenolic resin that has to pass through 200 mesh is deposited onto silica surface.
In the light of the above disclosure it would have been obvious at one having ordinary skill in the art at the time instant invention was filed that both phenolic powder and silica are in particle form which is then incorporated into the rubber. Specifically, instant invention does not exclude pre-treatment of silica with phenolic resin before the composition is incorporated into the rubber.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Satoji (US 4,978,763) or Satoji (US 4,976,550) as applied to claims 1, 3, 6 and 7 above, and further in view of Yoshinaga (WO 2008/047700).
Discussion of Satoji references from paragraph 1 of this office action is incorporated here by reference.
The difference between instant invention and teachings of Satoji is recitation of the particle size of the phenolic resin.
Similarly to Satoji, Yoshinagawa discloses making of a sealant composition utilizing granular )phenol resin. According to Abstract of Yoshinagawa, the particle diameter of the phenol resin granule is no more than 20 microns.
Phenolic resin of Yoshinagawa is utilized as organic filler just as it is in Satoji. The resin is used in sealant material because it has good balance between heat resistance, mechanical performance and electrical characteristics.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the phenol resin powder of Satoji having the particle size as disclosed in Yoshinaga and thereby obtain the claimed invention. Such particulate when incorporated with silica into elastomeric composition would also impart properties disclosed in Yoshinagawa, especially when Satoji is also making sealant that requires good mechanical properties and heat resistance. Such modification would therefore provide required properties.
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767