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 .
Status of the Claims
Claims 1-5, 7-13, and 16-19 are currently pending.
Claims 13 has been withdrawn from consideration.
Claims 6, 14, and 15 are canceled.
Response to Amendments
No amendments were made to the claim set filed 08/19/2025.
The Section 112(b) rejections have been withdrawn in view of the amendments.
The Section 102 and 103 rejections have been updated in view of Applicant’s previous amendments and arguments.
A new Section 103 rejection has been implemented to reflect Applicant’s amendments.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7-9, 11-12, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Botrie (US 2003/0010515 A1).
Regarding claims 1, 3-4, 8-9, and 12,
Botrie teaches an article comprising a coating comprising a polymeric foam (a polymeric foam layer) and having compression recovery properties (a cushioning article) (Botrie: abstract; par. 0002, 0008, and 0011). The cushioning article comprises: a) a polymeric foam layer composed of elastomeric materials such as silicone elastomers (Botrie: par. 0014, 0018-0019, and 0026-0027) and b) a plurality of conductive fillers (spacer elements) composed of carbonaceous materials such as carbon, graphite, and carbon black fillers, embedded in the polymeric foam layer (Botrie: par. 0020-0025, 0032, 0034, and 0040).
The spacer elements are arranged along the plane formed by the polymeric foam layer, in which the spacer elements are fully embedded into the polymeric foam layer as the filler is dispersed throughout the foam layer (Botrie: Figs. 1 and 2; par. 0014 and 0020). The spacer elements may be considered to be arranged in a ring-shaped pattern as shown in Figure 2 as the spacer elements (represented as dots) is shown to be consistently distributed in the coating layer (3) around the substrate layer (4) (Botrie: Figs. 1 and 2). The spacer elements may be considered longitudinal spacer elements as they have an aspect ratio AR (ratio x/y), wherein x is the length of the greatest dimension of the longitudinal spacer element and y is the length of the smallest dimension of the longitudinal spacer element, and wherein said aspect ratio is from 10/1 to 3000/1, which is within the claimed range of greater than 3 and the narrower range of greater than 4 (Botrie: par. 0023 and 0024).
Regarding the limitation requiring the pattern “when seen from a top view of the article” is satisfied by Botrie as there is no reference or specific structural limitations requiring a specific orientation of said pattern with regard to other elements within the claimed cushioning article. As such, the any angle may be considered “a top view” of the article depending on the orientation of said article when being viewed.
Regarding claim 2,
Botrie teaches the article required by claim 1. Botrie is silent towards the polymeric foam layer comprising a material having a weight loss after 3 min at 600°C of no greater than 70%, when measured according to the thermal stability test method described in the experimental section.
However, Botrie teaches the claimed and disclosed material of the foam layer being a silicone elastomer and would thus be expected to necessarily have the same properties, such as the claimed thermal stability when tested in the claimed manner. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
Regarding claim 5,
Botrie teaches the article required by claim 1. Botrie is silent towards the polymeric foam layer reaches a compression value of at least 60^ when using a compression force of no greater than 700 kPa, when measured according to the compression test method described in the experimental section.
However, Botrie teaches the claimed and disclosed material of the foam layer being a silicone elastomer, with the claimed longitudinal spacer elements of the claimed dimensions and materials and would thus be expected to necessarily have the same properties, such as the claimed compression values when tested in the claimed manner. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
Regarding claim 7,
Botrie teaches the article required by claim 1. Botrie further teaches a ring-shaped pattern in which the spacer elements are in straight or wavy lines which may or may not be parallel depending on the shape of the substrate as shown in Figures 1 and 2 (Botrie: Figs. 1 and 2).
Regarding claims 11 and 18,
Botrie teaches the article required by claim 1. Botrie further teaches the spacer elements may have any suitable form or shape, such as having an overall shape of spherical (circular) (Botrie: par. 0022). Thus, the non-hollow elements may have a uniform shape such as a spherical shape.
Regarding claim 16,
Botrie teaches the article required by claim 1. Botrie further teaches the spacer elements may be composed of materials such as carbon black, graphite, or carbon materials and thus may the spacer elements would not comprise metals (Botrie: par. 0021 and 0040).
Regarding claim 17,
Botrie teaches the article required by claim 1. Botrie further teaches the spacer elements may be non-hollow elements as hollow microspheres are just one of many type of particles and is the only explicitly hollow element (Botrie: par. 0023). Thus, there would be space elements that are non-hollow.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Botrie.
Regarding claim 10,
Botrie teaches the article required by claim 1. Botrie further teaches the diameter of the spacer elements may be from 0.1 to 100 microns with an aspect ratio of (length/diameter) from 10/1 to 3000/1 (Botrie: par. 0024). Thus, the range of the greatest dimension would overlap with the claimed range as the highest amount would be 3,000 x 100 microns which equates to 300,000 microns or 300 mm. A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Botrie in view of Monroe et al. (US 4,250,075).
Regarding claim 19,
Botrie teaches the article required by claim 1. Botrie does not explicitly teach wherein the spacer elements comprise an elastomeric material.
Monroe teaches electrically conductive compositions in the form of elastomeric silicon based fibers which may be coated with conductive particles, such as carbonaceous particles, to provide improved lifetime while maintaining conductive properties (Monroe: abstract; col. 5, lin. 13-64). The materials are contemplated for being used in applications such as gaskets (Monroe: col. 1, lin. 19-22).
Botrie and Monroe are in the corresponding field of electrically conductive compositions, in the form of particles and/or fibers for use in gaskets. Therefore, it would have been obvious to one of ordinary skill in the art to utilize the combination of elastomeric materials with conductive materials, as taught by Monroe, for the fibers and particles in the gasket of Botrie to provide improved lifetime of use while maintaining the intended conductivity as taught by Monroe.
Response to Arguments
Applicant’s arguments filed 08/19/2025 have been fully considered but they are not found persuasive.
Applicant argues that Botrie does not teach the patterns required by amended claim 1 when seen from a top view of the article.
The argument is not found persuasive as the claims do not preclude the interpretation taken of Figure 2 of Botrie showing a ring pattern of filler. Please see the updated rejection for further details and explanation. That is, the claims do not preclude the plurality of filler particles or fibers being dispersed in a coating wherein the combination of the coating plus the particles form a ring (a pattern). Regarding the limitation requiring the pattern “when seen from a top view of the article” is satisfied by Botrie as there is no reference or specific structural limitations requiring a specific orientation of said pattern with regard to other elements within the claimed cushioning article. As such, any angle of viewing may be considered “a top view” of the article depending on the orientation of said article when being viewed.
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 Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
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