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 .
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
A new ground of rejection is made in view of Kayashima US 20160333151 and Smale US 20130172446A1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 18, 19, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 states “…the extrusion of one or more polyorganosiloxanes a1) with one or more carbon blacks d) wherein the masterbatch comprises 3 o 25 weight percent based on the total weight of the masterbatch.” It is not clear what component of the masterbatch (a1 or d) is present in the amount of 3-25% based on the total weight of the masterbatch.
Additionally the term “o” the meaning of the character “o” in between 3 and 25 isn’t clear.
Claims 2-4, 18, 19, and 21 depend from claim 1 and are therefore similarly indefinite.
For the purpose of examination on the merits, this phrase will be interpreted as requiring that the masterbatch comprises 3-25 wt% of one or more carbon blacks d), consistent with the Applicant’s description of amended claim 1 in their remarks.
Claim Rejections - 35 USC § 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 1-2 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kayashima US 20160333151.
Regarding claim 1 and 2, Kayashima teaches a composition comprising a mercapto functional polysiloxane and a filler (Abstract, Paragraph [0030])). Kayashima also teaches the composition is mixed using an extruder (Paragraph [0045]). Kayashima also teaches that the filler and mercapto functional polysiloxane are mixed together using the extruder (Paragraph [0045]). Kayashima describes this mixture as a masterbatch (Paragraph [0045]).
Kayashima teaches a curing agent can be added to the masterbatch (Paragraph [0045]). However, the formation of the masterbatch occurs without the presence of a curing agent which reads on the instant Specification’s definition of the term noncurable (Paragraph [0045]).
Kayashima teaches the filler can be carbon black (Paragraph [0018]). It would have been obvious for the filler of Kayashima to be carbon black because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.This reads on the claimed carbon black.”
Kayashima teaches the composition comprises at least 5 to up to 200 phr filler per 100 parts rubber (Paragraph [0042]) and at least 5 phr mercapto polysiloxane (Paragraph [0043]). This translates to 4.5-65% filler. This overlaps with the claimed range of 3-25% filler.
Regarding claim 2, Kayashima teaches the mercapto functional polysiloxane comprises a monovalent organic group which can be an alkenyl group (Paragraph [0032]). It would have been obvious for the monovalent organic group of Kayashima to be the alkenyl group because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.This reads on the claimed “unsaturated.”
Regarding claim 21, Kayashima is silent on the masterbatch comprising a solvent This reads on the limitations of claim 21.
Claims 1, 3-4, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Smale US 20130172446A1.
Regarding claims 1 and 4, Smale teaches a masterbatch composition comprising carbon black (Paragraph [0067]). Smale also teaches the masterbatch composition comprises a polymer (10) (Paragraph [0023]). Smale teaches that polymer 10 can be a silicone rubber (Paragraph [0044]). Smale also teaches the composition is extruded (Paragraph [0033]).
Smale teaches a curing agent may be added to the masterbatch (Paragraph [0038]). However Smale teaches the formation of the masterbatch occurs without the presence of a curing agent which reads on the instant Specification’s definition of the term noncurable (Paragraph [0022-0033]).
Smale also teaches he composition comprises the 10-120 phr filler (Paragraph [0027]). Therefore Smale teaches the composition comprises a ratio of from 10:100 to 120:100 filler to polyorganosiloxane. This corresponds to a range of 0.9-54.5% filler this overlaps with the claimed range of 3-25% filler. This also overlaps with the claimed range of 90:10 to 75:25.
Regarding claims 18 and 19, Smale teaches the extruder is a twin screw extruder (Paragraph [0033]).
Conclusion
THIS ACTION IS MADE FINAL. 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 LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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