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 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 7-26 are rejected under 35 U.S.C. 103 as being unpatentable over Okami (US 5,104,919) in view of Tasaki (US 2014/0039106 A1).
Regarding claim 7, Okami teaches a curable silicon composition comprising:
An organopolysiloxane containing at least two silicon-bonded unsaturated aliphatic hydrocarbon groups (Abstract), which reads on the claimed component “(A).”
A vinyl group-containing organocyclopolysiloxane (Abstract), which reads on the claimed component “(E-2).”
An organohydrogenpolysiloxane containing at least two silicon-bonded hydrogen atoms in the molecule (Abstract), which reads on the claimed component “(B).”
A platinum family metal catalyst (Abstract), which reads on the claimed component “(C).”
A triazole compound (Abstract), which includes benzotriazole compounds (col. 5, lines 22-41), and which therefore reads on the claimed component “(D).”
Okami further teaches the incorporation of a reaction retarder which may optionally comprise ethynylcyclohexanol (col. 6, lines 13-17), which is an acetylene alcohol compound and which reads on the claimed component “(E-1).”
Okami teaches that the inventive curable composition is prepared as a two-pack system (col. 6, lines 30-31), wherein components A, B, and D are packaged together (corresponding to a first composition containing the claimed components “(A),” “(E-2),” and “(C),” which aligns with the claimed “composition X”), and components A, C, and E are packaged together (corresponding to a second composition containing the claimed components “(A),” “(B),” and “(D)”, which aligns with the claimed “composition Y”) (col. 6, lines 30-34).
Okami differs from claim 7 because, while it teaches the incorporation of a reaction retarder which reads on the claimed component “(E-1),” it is silent with regard to which part of the two-part system said component should be added to.
In the same field of endeavor, Tasaki teaches a two-part curable liquid silicone rubber composition comprising two liquid compositions (Abstract), and teaches that curing inhibitors may be added to the first and/or the second liquid of a two-part composition to enhance the storage stability and handling/workability of the formulation ([0048]). Tasaki also teaches ethynylcyclohexanol as a suitable curing inhibitor, just as Okami does ([0048]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the ethynylcyclohexanol cure inhibitor of Okami into the second part of the two-part system of Okami, as Tasaki teaches that said inhibitor may be added in either part. Doing so would result in a two-part system taught by Okami wherein each of the two parts are comprised of the same components as the claimed compositions “X” and “Y.”
Turning to the compositional limitations of claim 1, Okami teaches the following:
Component A is arbitrarily set to 100 parts, which is identical to the claimed amount of claimed component “(A),” establishing a prima facie case of obviousness. Component C (which reads on the claimed component (B)) is added in amounts such that the number of SI-H atoms ranges between 0.5 and 5 times the amount of silicon-bound vinyl groups in the formula (col. 3, lines 31-34), and exemplifies that quantity in Example 1, wherein 5.0 parts of methylhydrogenpolysiloxane are included (col. 6, lines 67-68), which falls within the claimed range of “0.2 to 20 parts by mass,” establishing a prima facie case of obviousness. Component D (which reads on the claimed component (C)) is added in amounts of 0.5 to 1,000 ppm based on the sum total of components A and B (col. 5, lines 1-5), which encompasses the claimed range of “0.5 to 500 ppm,” establishing a prima facie case of obviousness.
Finally, the amounts of component E (which reads on the claimed component (D)) range from 0.005 to 1 part per 100 parts of component A (col. 5, lines 42-45). Okami additionally exemplifies the amount of component E as 0.03 parts of a 50% benzotriazole solution in ethanol within Example 1 (col. 7, lines 10-25). Within the same formulation, 30 ppm of platinum based on the component A is also added (col. 7, lines 10-12). Using grams as a proxy for parts, this corresponds to 3 mg of platinum (30 ppm equates to 30 milligrams of platinum per 1000 grams of component A, and since 100 grams of component A are included, this corresponds to 3 milligrams of platinum). Given the elemental weight of platinum as 195.08 g/mol, this corresponds to 1.54 E -5 moles of platinum in Example 1. Furthermore, the aforementioned 0.04 parts of a 50% solution of benzotriazole converts to 0.015 grams of benzotriazole (since half is ethanol, then only half of the 0.03 grams is benzotriazole). Using the molecular weight of benzotriazole (119.13 g/mol), this corresponds to 1.26 E -4 moles of benzotriazole. The ratio of benzotriazole to platinum atoms in this example is therefore 1.26 E -4 / 1.54 E -5 = approximately 8.2 moles of benzotriazole per mole of platinum atoms, which falls within the claimed range of “2 to 100,” establishing a prima facie case of obviousness.
Claimed components “(E-1)” and “(E-2),” are not limited in terms of compositional amounts. Therefore, the teachings of Okami in view of Tasaki read on the claimed composition.
Regarding the newly added limitation requiring “a mole ratio between: hydrogen atoms bonded to a silicon atom within the organohydrogenpolysiloxane of the component (B); and a total amount of the alkenyl groups bonded to a silicon atom in the components (A) and (B) (SiH group / alkenyl group) is greater than 2.0 and up to and including 5,” Okami teaches that the number of silicon-bonded hydrogen atoms within inventive component (C) ranges from 0.5 to 5 times the total number of alkenyl groups within inventive components (A) and (B) (co. 4, lines 36-43), which encompasses the claimed range of “greater than 2.0 and up to and including 5,” establishing a prima facie case of obviousness.
Regarding claim 8, Okami teaches that the component B (which reads on the claimed component (E-2), has the following structure:
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Formula (I) of Okami (US 5,104,919, col. 3, lines 1-6)
Wherein R represents a substituted or unsubstituted monovalent hydrocarbon group having from 1 to 6 carbon atoms excluding unsaturated aliphatic hydrocarbon groups and n represents an integer of 3 to 8 (col. 1, lines 56-60). This structure reads on the claimed “alkenyl-group-containing cyclic organopolysiloxane” because it is identical to the claimed structure when R is a methyl group.
Regarding claims 9 and 10, Okami teaches the incorporation of fumed silica (col. 6, lines 5-6) in amounts ranging from 3 to 500 parts by mass (col. 6, lines 1-6), which overlaps the claimed range of “5 to 100 parts by mass,” establishing a prima facie case of obviousness.
Regarding claims 11 and 12, Okami teaches the use of silica with a specific surface area of 200 m2/g (col. 8, line 44), which overlaps the claimed range of “50 m2/g or more, establishing a prima facie case of obviousness.
Regarding claims 13-18, Okami as modified is silent with regard to the claimed “T10” and “T90” characteristics. Nevertheless, Okami as applied above results in a composition that is structurally and compositionally identical to the claimed composition, which contains all of the same components in all of the required compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “T10” and “T90” characteristics will therefore necessarily be present in Okami as modified and as applied above.
Regarding claims 19-26, Okami as modified is silent with regard to the claimed “η24” characteristic. Nevertheless, Okami as applied above results in a composition that is structurally and compositionally identical to the claimed composition, which contains all of the same components in all of the required compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “η24” characteristic will therefore necessarily be present in Okami as modified and as applied above.
Response to Arguments
Applicant's arguments filed October 24, 2025 have been fully considered but they are not persuasive.
Applicant argues that Okami only uses materials reading on claimed component “(E-1)” in one-pack embodiments of the inventive composition, citing exemplified formulations of Okami and citing a passage within Okami which states that “in the case where the composition of the present invention is prepared as a one-pack type one, a retarder for addition reaction is preferably added to the composition so that curing may be controlled during storage” (Okami col. 6, lines 36-41). Applicant argues that one having ordinary skill in the art would therefore not be motivated to incorporate said material within the two part embodiment of Okami, and would not have looked to secondary reference Tasaki (or other prior art) for adding said material to any part of a two-part system.
However, Okami plainly states that “the composition of the present invention may optionally contain…retarder for addition reaction…. such as ethynylcyclohexanol.” (col. 6, lines 13-17). Okami further states that “the composition of the present invention can be prepared by mixing the respective components described above uniformly. Normally, it is often prepared as a two-pack type…” (col. 6, lines 28-31). Therefore, Okami teaches that the retarder for addition reaction may be added to a two-pack system.
Furthermore, while Okami states that it prefers to add the retarder such that the composition is controlled during storage, as argued by the Applicant, this specific use in a one-part system does not rebut the fact that said retarding component is also included in two-part systems.
Finally, regarding the applicant’s arguments directed towards the preferred embodiments of Okami, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). One having ordinary skill in the art would know to add a retarder to the particular composition as claimed because Okami teaches both the composition as claimed and the retarding component therein. Tasaki is relied upon in the rejections above (and in the previous Office Action) merely for adding said retarder component to the same part of the two-pack system as claimed.
Applicant’s next arguments relate to the prior art not contemplating the advantages recognized by the present disclosure. However, The motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV). The combination of Okami and Tasaki therefore reads on the claimed composition regardless of whether or not it recognizes the advantages discovered by the Applicant.
Applicant’s next arguments are directed towards the newly-added limitation within claim 6, which requires a particular ratio between silicon-bonded hydrogen atoms and alkenyl groups within the formulation. Applicant admits that the claimed ratio is parallel to that referred to the passage in col. 4, lines 36-43 of Okami (see Applicant’s remarks p. 13), and argues that the claimed range lies outside the most preferred range of Okami.
However, as described above, Okami additionally recites a broader range including a ratio of 0.5 to 5 (col. 4, lines 36-43), which overlaps the claimed range of “more than 2.0 and up to and including 5,” establishing a prima facie case of obviousness. Importantly, while Okami prefers a range of 1 to 2, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). The teachings of Okami therefore present the claimed ratio despite said range being a non-preferred embodiment of the inventive composition.
Applicant finally argues that Okami contemplates a higher curing temperature as compared to the instant disclosure; however, the low cure temperature recited in the instant specification is not a feature of the composition as claimed. Therefore, this difference has no bearing on the patentability of the claimed composition. Assuming arguendo, however, that the claimed composition did require that the composition was capable of curing at the low temperature discussed in the present disclosure, the composition of Okami as modified by Tasaki meets all of the compositional limitations as claimed. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Said curability at said temperature would therefore necessarily be present in the formulation of Okami as modified by Tasaki.
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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762