DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/11/26 has been entered.
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, 2, 4, 6, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ikeno et al. 7,067,570 in view of Hamamoto et al. 8,431,953.
This rejection is maintained from the previous office action.
Ikeno et al. teach a composition in which components (A), (B), (C), (D) and (E)
correspond to each of the claimed components (A) to (E). See the teachings in column 2, lines 39 to 68.
The general component (A) in Ikeno et al. is broader than the siloxane formula (1) in claimed component (A) but the specific siloxane found in Example 2, column 11, lines 48 to 53, meets each of the claimed requirements of (A). Thus while the general teaching in Ikeno et al. does not teach the specific claimed requirements, Ikeno et al. show a specific siloxane that does meet claimed (A).
For claimed (B), see the preferred siloxane on column 5, lines 50 to 55. See also the SiH siloxane found in Example 2 which meets this requirement.
For claimed (C), see the teachings starting on column 6, line 60. Again, such a component is found in Example 2 as well.
For claimed (D), see the general formula in column 8, lines 10 and on, noting that lines 53 and 54 teach various R2 groups that meet the claimed (CH2)nCH3 with a being from 3 to 7. Note too that trioctyl phosphite, meeting formula (3) in component (D), is specifically disclosed in column 9, line 12, as a preferred phosphite selection. Column 9, lines 45 to 55, teach the amount of phosphite triester per Pt atom as found in claim 1.
For claimed (E) see the peroxides in column 10, lines 10 to 25 which include per-oxides such as 1,1,3,3-tetramethylbutyl hydroperoxide, cumene hydroperoxide and tert butyl hydroperoxide. These meet the claimed half-life requirement and the specific peroxides found in claim 2.
Regarding claimed component (F), as applicants are well aware an antioxidant is an extremely common additive in silicone gel and rubber, used to avoid the deleterious effects of oxidation and aid in storage stability and durability. This provides motivation for one having ordinary skill in the art to add such a compound to the composition of Ikeno et al.
Hamamoto et al. teach in column 16, lines 10 to 57, the addition of a phenolic antioxidant. While this provides heat stability, Hamamoto et al. also teach that using this compound within the range disclosed will avoid undesirable separation and discoloration.
Noting that Hamamoto et al. make specific reference to heat stability, the Examiner draws attention to the fact that line 1 of column 11 in Ikeno et al. teaches the addition of heat resistance imparting agents.
As such, before the effective date of invention, one having ordinary skill in the art would have found it obvious to include a phenolic antioxidant to the composition of Ikeno et al. in an effort to obtain the known benefits and properties associated with this common ingredient. In this manner amended claim 1, the claims that depend thereon, and new claim 8 are rendered obvious.
Regarding the newly added limitation concerning storage stability, as noted above the phenolic antioxidant provides improved storage stability and heat stability such that, given the obviousness of the claimed composition, the skilled artisan would have expected such a property to be necessarily present in the composition rendered obvious by the prior art.
On the other hand, since it is obvious to add a component to the composition of Ikeno et al. to provide enhanced heat and storage stability, the skilled artisan would have found it obvious to adjust and/or optimize this property in the modified composition such that obtaining these results would have been well within routine experimentation and/or optimization of the combination of Ikeno et al. and Hamamoto et al.
The limitations in claims 2, 4 and 6 are addressed in previous office actions and as such this will not be repeated.
For new claim 10, note column 10, lines 26 to 38, which teaches adjusting the amount of the peroxide (E) relative to the amount of (D) (phosphite) such that finding a value within the claimed range would have been obvious to the skilled artisan and well within routine experimentation.
For new claim 11, note that adjusting the amount of the phenolic antioxidant in an effort to determine the useful and optimal amount would have been well within routine experimentation for one having ordinary skill in the art.
Allowable Subject Matter
Claims 3, 5 and 7 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.
These claims require a specific penetration tested on the JIS K6249 scale while the working examples in Ikeno et al. test penetration on the JIS K2220 scale. While the K6249 scale tests properties on silicone rubbers, the K2220 scale tests on greases. Since different tests are required for measurement, it appears that the properties of one composition are distinct from the other. From this there is no motivation to achieve the penetration value found in claim 3 in the composition of Ikeno et al. and, likewise, no motivation to adjust the specific components in amounts or types to obtain this property. Furthermore the Examiner cannot make the position that such a value would have been inherent in the composition of Ikeno et al. since the examples specifically show different properties. As such claims 3, 5 and 7 are neither taught nor suggested by Ikeno et al. alone or in combination with Hamamoto et al.
Response to Arguments
While the Examiner appreciates applicants’ recitation of case law, review of the claimed composition and the teachings in the prior art, this is not sufficient to overcome the obviousness of the claims. Applicants discuss the prior art in a piecemeal fashion, first addressing the claims in Hamamoto et al. This is an aspect of the prior art that has little or nothing to do with the obviousness of the combination.
The recitation of effects of the present composition, allegedly from the combina-tion of (C), (D), (E) and (F), is not supported by evidence and certainly not supported by evidence that is commensurate in with the breadth of the claims. Additionally there is nothing to demonstrate that any differences are unobvious differences.
The prior art is addressed individually but this does not carry weight when the
claims are rendered obvious by a specific combination of references. It does not appear that the combination per se, or the obviousness rationale of the combination, is specifically addressed in this reply.
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
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