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 .
Election/Restrictions
Claim 5-17 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election of group 1, claims 1-4, and 18-19 drawn to a process of manufacture for a noncurable silicone composition, was made without traverse in the reply filed on 12/10/2025.
The Applicant submits claim 20 should fall in group 1. However, claim 20 relates to a process of manufacturing an insulator rather than a process to manufacture a non-curable silicone composition. Notably, claim 20 relates to a processes of manufacturing a curable composition.
The technical feature common to claim 20 and the previously articulated groups of claims, is not a special technical feature as it does not make a contribution over the prior art in view of Carbary US 20120124931 A1. Claim 20 is therefore considered withdrawn.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carbary US 20120124931 A1.
Regarding claims 1, 3 and 18-19, Carbary teaches a composition comprising a silicone resin and an organopolysiloxane (Abstract). This reads on the claimed “silicone composition” and the claimed “organopolysiloxane.” Carbary teaches the composition can be non-curable (Paragraph [0016]). This reads on the claimed “non-curable.” Carbary also teaches the composition comprises a filler which is carbon black (Paragraph [0051]). Carbary teaches a production method wherein the resin is extruded through a twin screw extruder (Paragraph [0076]). This reads on the claimed “twin screw extruder.”
Regarding claim 2, Carbary also teaches the silicone resin (a) includes alkenyl groups like vinyl or allyl (Paragraph [0019]). This reads on the claimed polyorganosiloxane comprising an unsaturated group.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Carbary US 20120124931 A1.
Regarding claim 4, Carbary teaches the filler is carbon black. Carbary teaches in example 8 a composition that comprises 19.2 parts polyorganosiloxane and 5 parts filler (Table 3). This corresponds to a ratio of 79.34:20.6. This overlaps with the claimed range of 90:10 to 75:25. It would have been obvious to one of ordinary skill in the art at the time of filing to use the ratio of filler to polyorganosiloxane in example 8 as the ratio of filler to organopolysiloxane in the composition because this is taught to be a suitable ratio of polyorganosiloxane to filler for the composition.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762