DETAILED ACTION
For claim interpretation purposes, the Examiner notes that the “consisting of” language in line 2 of claim 1 limits the composition to only the first and second packs as claimed. These packs, though, use the language “comprising” such that each pack is open to the presence of other components that are not specifically claimed. This is evident from the fact that depending claims allow for additives not specifically noted in claim 1.
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.
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 and 6 to 8 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.
Araki teaches a two part silicone composition that contains each of the 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).
is defined starting on column 9, line 25 and on, and meets the requirement of
component (C).
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 contains the claimed components (A) and (C) (and an additional component that is embraced by the language “comprising”) and a second part that contains the claimed components (A) and (B) in amounts as claimed. In this manner claim 1, prior to the amendment dated 11/24/25, is anticipated.
Regarding the newly added requirement of (D) and (E) that is now present in claim 1, see component (F) in Araki, starting on the bottom of column 13 through column 14, and component (G) in Araki, starting on column 14, line 25.
While these are optional components they are clearly disclosed as contemplated components in the composition of Araki et al. such that the skilled artisan would have anticipated these components in the claimed amounts. For instance note that Araki et al. teach the effects of each component in the composition.
In view of the above, the totality of the requirements in claim 1 are anticipated.
For claim 4, see component (E) in Araki, starting on the bottom of column 12 through column 13. The value of “m” as at least 10, combined with the specific viscosities found in lines 31 and on, anticipate a siloxane having from 1 to 2,000 “p” units. Note that “at least 10” covers a significant portion of claimed “p” while the viscosities reflect polyorganosiloxanes that fall within the range of 1 to 2,000.
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.
Note that the above rejection, as it applies to claims 1, 4 and 6 to 8, does not apply to the newly amended claims that require the composition to be a rubber. As applicants argue in the remarks dated 11/24/25, the teachings in Araki et al. are distinct from a rubber composition. Thus, while applicants’ remarks have been considered they are all directed to a rubber and the difference between a rubber and a gel. However this claims do not require a rubber such that the gel in Araki et al. meet the claimed requirements. Note that claims 9 to 11 are not included in the above rejection.
In view of applicants’ amendment to the claims, limiting the product to a rubber, the following new ground of rejection is being made.
8. Claims 9 to 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamaguchi et al. 2017/0130031.
These claims do not require that the composition be in two parts. In these claims
the composition has already been mixed and cured and in the form of a rubber.
Yamaguchi et al. teach a silicone rubber composition that is prepared by curing the same components as found in instant claim 1. See for instance 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 compon-ents are present in amounts as claimed. See also the working examples which show such cured silicone rubber products. While the Durometer A hardness is not a claimed feature in these claims, note that the silicone rubbers prepared in the examples meet the hardness within the range of claim 11. See Table 1.
Thus, while this rubber is prepared from a different starting composition than that claimed (i.e. a one part versus a two part) the final resulting products appear to be the same. That is, they are both silicone rubbers prepared from the same reactants.
As applicants are no doubt aware, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
In view of applicants’ addition of new claim 11, which requires that the two part composition results in a silicone rubber with a certain hardness requirement, the follow-ing new ground of rejection is being made. Note that this claim is directed to a two part composition and not the final product per se.
Claims 1 and 5 to 11 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”.
Yamaguchi et al. teach a silicone rubber composition that is prepared by curing the same components as found in instant claim 1. See for instance 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 compon-ents 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 prepare 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 curing catalyst (claimed (C)) in separate parts to avoid any premature curing that could occur. The presence of the inert filler and adhesion promoter in either part would have been obvious since such components would not have been expected to interfere with packaging or the resulting product.
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 10, 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.
10. 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 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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/MARGARET G MOORE/Primary Examiner, Art Unit 1765