DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/1/26 has been entered.
Claim Rejections - 35 USC § 102 and § 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, 4, 6 to 8 and 12 to 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/116892, as interpreted by the English language equivalent 11,578,209, herein Araki.
This rejection is maintained from the previous office action. As it applies to the
amended claims, see the rationale noted with bold font.
Araki teaches a two part silicone composition that consists of the two claimed
components. See column 15, lines 2 to 8, which teach a two part composition in which a first part contains (A), (C) and (D) (as defined by Araki) and a second part contains (A) and (B).
is defined starting in column 4, lines 40 and on, and meets the requirement of
formula (1), claimed component (A).
is defined starting on column 5, lines 6 and on, and meets the requirement of
formula (3), claimed component (B).
As such the part that contains only (A) and (B) in Araki et al. corresponds to the claimed first pack. Note that claimed (D) and (F) are not required in this pack.
The other pack contains (A), (C) and (D).
is defined starting on column 9, line 25 and on, and meets the requirement of
component (C) and, again, prior art (A) meets claimed (A).
As for the presence of (D) in this pack, please note the following. While (D) is referred to as a heat enhancer, the individual components per se are within the breadth of the claimed components, even considering the consisting of language.
Both the cerium carboxylate (D-b) and the titanium compound (D-c) (column 10, line 64 to column 12, line 20) are known condensation catalysts. See paragraph 42 of the instant specification which discloses titanium catalysts and references such as US 4,895,766 and 4,322,517 which teach such cerium compounds as condensation catalysts. As such these components are embraced by the claimed component (C) in the second pack.
For the siloxane (D-a) component in Araki et al. note see column 10, lines 28 to 63, as well as the siloxane used in the examples as found in column 17, lines 17-18. This siloxane is embraced by the organopolysiloxane (F) found in the claimed second pack.
Thus while Araki et al use different language and perhaps different purposes for these compounds, each are embraced by the claimed second pack as meeting the requirement of a curing catalyst and a polyorganosiloxane, (C) and (F) respectively.
Each component in Araki is present in an amount as claimed. See specifically column 9, lines 10 to 15, and column 10, lines 10 to 15.
Thus Araki teaches a two part composition consisting of one part that consists of the claimed components (A) and (C) (and additional components that meet (C) and (F)) and a second part that contains the claimed components (A) and (B) in amounts as claimed.
Regarding the requirement of (E) in the first pack note that column 14 teach-es component (G) which meets this requirement. While this is not specifically disclosed as being in the first pack, note that 1) there are only 1 of 2 packs that can contain (G) and given this limited selection the skilled artisan would have anticipated the presence in the first pack and 2) recognizing that the catalyst will undergo premature curing of Si bonded alkoxy groups in the presence of a catalyst, the skilled artisan would anticipate the presence of the component (G) in the pack without the catalyst, i.e. the first pack.
Regarding the requirement of at least .1 part by weight filler note that such a filler is disclosed in column 13, line 60, through column 14. Since this can be present in either the first or second pack, the presence thereof in either or both packs would have been anticipated by the skilled artisan.
In view of the above, the totality of the requirements in claim 1 are anticipated.
For claim 4, see component (D-a) and note that the preferred viscosity in both column 10, line 58, and the working example reflects a viscosity that is within this claimed “p” range. Generally a viscosity of 1,000 mPa.s corresponds to an “p” value of 400. Furthermore note that amount that is used in the working example (albeit as a one pack composition) that meets the claimed amount.
For claims 6 to 8, note that column 15, lines 10 to 30, teach the cured product. Also note that these claims are limited solely by the presence of the composition or cured composition of claim 1 such that these compositions anticipate the claims.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/116892, as interpreted by 11,578,209, herein Araki.
While Araki does not teach a ratio of the two parts, the skilled artisan would have been motivated to adjust the proportions of each part in an effort to obtain amounts of each component that fall within the ranges found in Araki. This optimization of amounts is considered to be within routine experimentation of the teachings in Araki and thus is considered to be obvious.
For new claims 12 to 14 please see column 9, lines 10 to 14, column 10, lines 10 to 14, and column 14, lines 45 to 47, respectively.
For reasons of record, claim 11 is not included in this rejection.
Claims 1, 4 to 8 and 12 to 14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/116892, as interpreted by 11,578,209, herein Araki.
This rejection is an alternative to that above, made with the expectation
that applicants will argue and/or amend to avoid the anticipation rejection.
The rejection in paragraph 3 above and paragraph 4 in the office action dated 2/2/26 summarize the teachings in Araki and the manner in which they anticipate the claims. In an effort to overcome the anticipation rejection applicants have amended the claims in an effort to exclude the component (D), the heat resistance enhancer. This is not sufficient to render the claims unobvious.
One having ordinary skill in the art would recognize that not all uses for the gel composition in Araki will require or desire enhanced thermal resistance. In such instances the skilled artisan would have found it obvious to remove the component (D) as it would be unnecessary and add an extra expense to production costs. Note that it has been held that the omission of an element and its function is obvious if the function of the element is not desired. To this extent, please see MPEP 2144.04 II.A. While the Examiner recognizes that not all case law is a “one fits all” scenario, Ex parte Wu is extremely similar to the instant case such that this rationale currently applies.
Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) (Claims at issue were directed to a method for inhibiting corrosion on metal surfaces using a composition consisting of epoxy resin, petroleum sulfonate, and hydrocarbon diluent. The claims were rejected over a primary reference which disclosed an anticorrosion composition of epoxy resin, hydrocarbon diluent, and polybasic acid salts wherein said salts were taught to be beneficial when employed in a freshwater environment, in view of secondary references which clearly suggested the addition of petroleum sulfonate to corrosion inhibiting compositions. The Board affirmed the rejection, holding that it would have been obvious to omit the polybasic acid salts of the primary reference where the function attributed to such salt is not desired or required, such as in compositions for providing corrosion resistance in environments which do not encounter fresh water.).
As such, one having ordinary skill in the art would have found the removal of the component (D) and its function to have been obvious, thereby rendering obvious the instant claims.
Note that above for newly added claims 12 to 14.
Claims 1, 4 - 8, 11 - 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. 2017/0130031, in view of “Explore the Difference Between RTV and RTV-2 Silicone”.
This rejection is maintained from the previous office action. Applicants’ traversal
has been considered but is not deemed persuasive for reasons noted below.
Yamaguchi et al. teach a silicone rubber composition that is prepared by curing the same components as found in instant claim 1. See the siloxane having in paragraph 15, the silane crosslinking agent in paragraph 16, the catalyst in paragraph 43, the filler in paragraph 46 and the adhesion promoter in paragraph 48. The components are present in amounts as claimed. See also the working examples which show such cured silicone rubber products.
This differs from that claimed in that it does not specifically teach a two part system as claimed.
The “Explore” reference teaches what is well known in the silicone RTV art. Such compositions can be packaged in either a one part or a two part kit. This teaches that an RTV-2 silicone is ideal for potting or electronic components and molding, intended uses of the composition in Yamaguchi et al. (paragraph 58). Other benefits including customizable hardness and uniform hardness. Compared to one part RTV, two part RTV provides faster curing at greater depths.
As such one having ordinary skill in the art would have been motivated to pre-pare the RTV composition of Yamaguchi et al. as a two part system in an effort to take advantage of the known properties and benefits thereof. In addition the skilled artisan would have been motivated to include the crosslinking agent (claimed (B)) and the coupling agent (claimed E) and the curing catalyst (claimed (C)) in separate parts to avoid any premature curing that could occur by means of the Si bonded hydrolysable groups. The presence of the inert filler in either part would have been obvious since such components would not have been expected to interfere with packaging or the resulting product.
Regarding the new limitation that the viscosity of (A) is 20 to 5,000 mPa.s, see paragraph 28 which embraces such a range as well as the working examples which include an organopolysiloxane having a viscosity within this range.
In this manner claim 1 is rendered obvious.
For claim 4, see component (G) in paragraph 51.
For claim 5, while Yamaguchi et al. do not teach a ratio of the two parts, the skilled artisan would have been motivated to adjust the proportions of each part in an effort to obtain amounts of each component that fall within the necessary ranges. This optimization of amounts is considered to be within routine experimentation.
For claims 6 to 8, see paragraphs 58 and 59 which teaches rubber and other products formed from this composition.
For claim 11, note that Table 1 shows silicone rubber compositions that meet this requirement.
For claims 12 to 14, see paragraphs 40, 45 and 47, respectively, which teach amounts of these components that fall within the claimed ranges.
Response to Arguments
The Examiner believes that the detailed rejection rationale supra for the Araki reference addresses applicants’ arguments over the teachings in Araki. The arguments were related to the component (D) in the prior art and the intention of excluding it from the claims.
The traversal over the Yamaguchi et al. reference is not persuasive to establish unobvious. The traversal relies mainly on the position of improved “fast and deep cure” of the claimed composition.
Regarding this point, the Examiner again refers to the Explore reference. This
specifically states the RTV-1 compositions (such as in Yamaguchi) “present challenges when it comes to curing in deeper sections”. This point is reinforced by stating that RTV-2 compositions have the advantage of uniform cure both inside and out, i.e. deep cure. As such the claimed composition may possess improved deep cure but applicants have provided no reason as to why this difference would be unexpected.
Applicants present Comparative Example 1 to support the position of unobvious for RTV-1 versus RVT-2 composition. Comparative Example 3 uses the same reaction conditions as Example 1 which includes air and 50% RH. See specification, paragraph 69. Yamaguchi et al. teach that prior art composition cures immediately upon exposure to air and/or moisture. See paragraphs 56 to 58 and paragraph 67 which mentions shielding moisture (i.e. keeping the composition free from moisture). Premature curing/gelation during mixing under the conditions in applicants’ Example 1 does not reflect an unexpected or unobvious result.
As such applicants’ position of unexpected results over the obvious composition noted in the prior art rejection is not persuasive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
6/7/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
Prosecution Insights