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 .
DETAILED ACTION
Note new Examiner due to a reassignment after applicant’s election.
Applicant’s election of Group I (i.e., claim 1-14) in the reply filed on November 3, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant added new claims 16-22 dependent on claim 1 with the response and thus claims 1-14 and 16-22 are examined. Claims 15 and 23 are withdrawn from consideration.
Although claim 3 recites a specific mode of a furnace with a tradename (Nabertherm®), it would not be indefinite since it is related to a known commercial furnace.
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.
Claim 7 is 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.
The recited “which is comprised between 15 and 25” does not make sense.
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 1-4, 8, 11-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ratajac et al. (US 10,145,256) in view of Machine translated CN 106256855 A (Dec. 28, 2016), 3-page product brochure of expandable graphite GHL PX 95 HT 270 supplied by George H Luh-Last updated on Feb. 17, 2021 by Dover Chemical Corporation Copyrighted 2026 and EP 3674380 A1 (July 1, 2020).
Ratajac et al. teach an aircraft propulsion system seal assembly with spring seal element in abstract. Ratajac et al. teach a tubular compliant seal element with an Ω-like cross section in Fig. 2 formed from an elastomeric material including silicone elastomer in lines 21-40 of col. 4.
The Ω-like cross section is also taught in Fig. 1 and para. [0044] of the instant specification.
The instant invention further recites a rubber intumescent mass having an intumescence trigger temperature equal to or higher than 270oC over Ratajac et al.
Machine translated CN teaches an expansion type fireproof silicone composition comprising methyl vinyl silicone rubber and expanded graphite in abstract.
The 3-page product brochure teaches that the expandable graphite GHL PX 95 HT 270 is suitable for application temperatures up to 270oC. In other words, it would have the recited intumescence trigger temperature equal to or higher than 270oC. Although the instant table 1 of page 18 teaches utilization of GHL 95 HT 270. The examiner believes that the GHL PX 95 HT 270 would be same as GHL 95 HT 270 based on the same intumescence trigger temperature equal to or higher than 270oC. Also, the brochure has a copyrighted date of 2026, it also recites that the GHL PX 95 HT 270 supplied by George H Luh-Last update On Feb. 17, 2021 and thus it would be a valid prior art.
EP teaches a seal with the Ω-like cross section comprising a tubular shape with two layers of intumescent materials in abstract and [0009-0010]. EP teaches that the two layers of intumescent materials are activated at different stages when exposed to heat in abstract. The two layers of intumescent materials taught by EP would fall within the instantly recited intumescent material of claim 1 except a rubber intumescent mass having an intumescence trigger temperature equal to or higher than 270oC since the instant claim 1 is silent as to a state/shape of the rubber intumescent material. The two layers of intumescent materials would be expected to fill the cavity when exposed to heat.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the expansion type fireproof silicone composition comprising methyl vinyl silicone rubber and expanded graphite taught by CN with the expandable graphite GHL PX 95 HT 270 taught by the brochure in an inside of the seal element with an Ω-like cross section taught by Ratajac et al. in order to prevent spreading of fire since the seal with the Ω-like cross section comprising a tubular shape with two layers of intumescent materials is known by EP absent showing otherwise
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Further regarding the recited seal (1) having two structural elements (1 and 2) for connection of claim 1, Ratajac et al. teach the seal assembly with spring seal element present two structures 20 and 22 in Fig. 1 and thus the recited two structural elements (1 and 2) for connection would have an obvious design choice to one skilled in the art.
Regarding claim 2, the brochure teaches that same expandable graphite GHL PX 95 HT 270 used in the instant examples and thus the expandable graphite GHL PX 95 HT 270 would be expected meet the recited temperature.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from GHL PX 95 HT 270 taught by the brochure. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Regarding claim 3, the expansion type fireproof silicone composition comprising methyl vinyl silicone rubber and expanded graphite taught by Machine translated CN with the expandable graphite GHL PX 95 HT 270 taught by the brochure would be expected meet the recited properties inherently. See above cited case laws in MPEP 2112.01.
Regarding claim 4, Ratajac et al. teach a tubular compliant seal element with an Ω-like cross section in Fig. 2 formed from an elastomeric material including silicone elastomer which would meet claim 4.
Regarding claim 8 and 14, the expansion type fireproof silicone composition comprising methyl vinyl silicone rubber and expanded graphite taught by Machine translated CN with the expandable graphite GHL PX 95 HT 270 taught by the brochure would be expected meet the recited properties inherently.
Regarding claim 11, Ratajac et al. teach a tubular compliant seal element with an Ω-like cross section in Fig. 2 formed from an elastomeric material including silicone elastomer which would meet claim 11.
Regarding claim 12, Ratajac et al. teach that the silicone elastomeric material may not be reinforced in lines 31-33 of col. 4 which would meet claim 12.
Regarding claim 13, Ratajac et al. teach that the silicon elastomeric may be reinforced with one or more plies of fiber glass in lines 31-34 of col. 4 which would meet claim 13.
Regarding claim 16, the brochure teaches that same expandable graphite GHL PX 95 HT 270 used in the instant examples and thus the expandable graphite GHL PX 95 HT 270 would be expected meet the recited temperature.
CLAIM OBJECTION
Claims 5, 6, 9, 10 and 17-22 are 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.
EXAMINER’S COMMENT
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Machine translated CN 106687100 B (Sep. 4, 2020) teaches phenylpolydimethylsiloxane as a silicone oil in an upper part of page 8. Although para. [0084] of the instant specification teaches that phenylpolydimethylsiloxane as a silicone material the examiner does not see any motivation to utilize the phenylpolydimethylsiloxane taught by CN since it is taught as a silicone oil.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAE H YOON/ Primary Examiner, Art Unit 1762