DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on November 24, 2025 has been fully considered. Addition of new claim 23 is acknowledged. In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. Thus, the following action is properly made final.
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.
3. Claims 1, 4-6, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu et al (US 2007/0254166) in view of Baba et al (US 6,300,384).
4. The rejection is adequately set forth on pages 5-8 of an Office action mailed on August 26, 2025 and is incorporated here by reference.
5. As to newly added claim 23,
Baba et al discloses a silicone composition comprising:
a) an organopolysiloxane having ethylenically unsaturated groups (col. 2, lines 20-27);
b) an organic peroxide curing agent (col. 2, lines 30-31; col. 3, lines 55-60);
c) silica (col. 2, lines 62-col. 3, line 5) and
d) 0.1-10 pbw of a thermally decomposable blowing agent including azo compounds, nitroso compounds (col. 3, lines 30-49, Abstract, col. 1, lines 60-61).
The thermally decomposable blowing agents of Baba et al include azo and azide/hydrazide compounds, which are the same azo and hydrazide compounds as cited as being used in instant specification as the chemical blowing agents (see p. 7, lines 8-25 of instant specification).
6. All ranges in the composition of Qiu et al in view of Baba et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Response to Arguments
7. Applicant's arguments filed on November 24, 2025 have been fully considered.
8. With respect to Applicant’s arguments regarding the rejection of Claims 1, 4-6, 23 under 35 U.S.C. 103 as being unpatentable over Qiu et al (US 2007/0254166) in view of Baba et al (US 6,300,384), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Though Qiu et al does not explicitly teach the variety of optional adjuvants ([0071]) being a chemical foaming agent, the secondary reference of Baba et al was applied for the teachings of that. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
3) Since both Qiu et al and Baba et al are related to compositions based on ethylenically unsaturated silicone compounds, silica and free-radical initiators, and thereby belong to the same field of endeavor, wherein the composition of Qiu et al is cited as being applied by foam applications but is not explicitly specified as further comprising a chemical blowing/foaming agent, and Baba et al recites such compositions comprising chemical blowing agents to form said compositions in expanded/sponge form, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Baba et al and Qiu et al, and include, or obvious to try to include, at least partially and at least in a minor amount, the chemical blowing agents into the composition of Qiu et al, so to ensure it is suitable to be applied by foam application and comprises, at least partially, voids, given such is desired, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
4) The thermally decomposable blowing agents of Baba et al include azo and azide/hydrazide compounds, which are the same azo and hydrazide compounds as cited as being used in instant specification as the chemical blowing agents (see p. 7, lines 8-25 of instant specification).
5) Though Baba et al does not exemplify the use of azo or hydrazide as the blowing agent, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
6) Qiu et al discloses the composition being used as a protective coating for fragile articles such as lenses, mirrors and windows ([0081]). It would have been obvious to a one of ordinary skill in the art to include a blowing agent in the composition for making said protective coating of Qiu et al, given some cushioning and shock-absorbing properties of the protective coating are desired. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
6) Further, Qiu et al recites the coating being formed by foam application, dried and cured ([0086]), wherein the compositions of Baba et al are also heated and cured (col. 4, lines 54-56) to prepare cushioning materials (col. 4, lines 62-64).
Therefore, it is not clear why it would not be obvious to a one of ordinary skill in the art to use the chemical blowing agents of Baba et al to prepare coatings of Qiu et al having at least partially cushioning properties as well, as argued by Applicant.
7) In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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