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 .
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.
Election/Restrictions
Applicant’s election of Group I, claims 1-14 and 16, in the reply filed on April 13, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
No claims are withdrawn as all non-elected claims have been canceled. Election was made without traverse in the reply filed on April 13, 2026.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 7-8, and 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takiguchi et al. (English machine translation of JP 2014080560A).
Regarding Claims 1-3 and 7: Takiguchi et al. teaches a composite material comprising a rubber (elastic polymer) and 90-97 wt% of inorganic particles such as bismuth oxide (Bi2O3) dispersed in the rubber ([0029], [0031], and [0051]).
Regarding Claims 8 and 10-11: Takiguchi et al. teaches the composite material in the form of a flexible film wherein multiple layers of the film are arranged ([0035], [0050], and [0065]-[0066]).
Regarding Claim 12: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. the lead equivalency, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 13: Takiguchi et al. teaches the material as a molded body (article) ([0050]).
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.
Claim(s) 4-6 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takiguchi et al. (English machine translation of JP 2014080560A) in view of Plamthottam (US Pub. No. 2020/0123374).
Takiguchi et al. teaches the composite material of claim 1 and the article of claim 13 as set forth above.
Regarding Claims 4-6: Takiguchi et al. does not teach the elastic polymer as claimed. However, Plamthottam teaches an A-B-A type block copolymer of styrene and isoprene ([0050]) for use with bismuth oxide particles ([0002], [0050], and [0065]). Takiguichi et al. and Plamthottam are analogous art because they are concerned with the same field of endeavor, namely elastomeric films comprising radiopaque fillers such as barium oxide. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the styrene/isoprene triblock copolymer of Plamthottam in the composite of Takiguchi et al. and would have been motivated to do so because Plamthottam teaches that the composition of styrene/isoprene triblock copolymers allow for improved tactile sensitivity, lower defect rate, and would allow for a dip formable article ([0003], [0005], and [0007]-[0008]).
Regarding Claim 14: Takiguchi et al. does not specify the article as an article of clothing. However, Plamthottam teaches articles of clothing such as a glove ([0039]). Takiguichi et al. and Plamthottam are analogous art because they are concerned with the same field of endeavor, namely elastomeric films comprising radiopaque fillers such as barium oxide. At the time of the invention a person of ordinary skill in the art would have found it obvious to form the article of Takiguchi et al. into an article of clothing such as disclosed by Plamthottam and would have been motivated to do so to provide articles of clothing that are radiopaque for personal protection.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takiguchi et al. (English machine translation of JP 2014080560A).
Takiguchi et al. teaches the composite material of claim 8 as set forth above. Takiguchi et al. teaches that the film of composite material may be 1-10 mm in thickness ([0050]).
Takiguchi et al. does not teach with sufficient specificity the claimed range of 0.1-3 mm. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takiguchi et al. (English machine translation of JP 2014080560A) in view of Plamthottam (US Pub. No. 2020/0123374).
Takiguchi et al. teaches a composite material comprising a rubber (elastic polymer) and 90-97 wt% of inorganic particles such as bismuth oxide (Bi2O3) dispersed in the rubber ([0029], [0031], and [0051]).
Takiguchi et al. does not teach the elastic polymer as claimed. However, Plamthottam teaches an A-B-A type block copolymer of styrene and isoprene ([0050]) for use with bismuth oxide particles ([0002], [0050], and [0065]). Takiguichi et al. and Plamthottam are analogous art because they are concerned with the same field of endeavor, namely elastomeric films comprising radiopaque fillers such as barium oxide. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the styrene/isoprene triblock copolymer of Plamthottam in the composite of Takiguchi et al. and would have been motivated to do so because Plamthottam teaches that the composition of styrene/isoprene triblock copolymers allow for improved tactile sensitivity, lower defect rate, and would allow for a dip formable article ([0003], [0005], and [0007]-[0008]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 June 23, 2026
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