Detailed Office 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 .
Acknowledgement of Election
2. Applicant's election with traverse of the silicon elastomer species in response to Election of Species Requirement One and the silicon-containing moieties species in response to Election of Species Requirement Two in the reply filed on 2 January 2026 is acknowledged. The traversal is on the ground(s) that the examination of all of the species is not believed to create an undue burden on the Office. This is not found persuasive because applicants’ statement without more is insufficient to rebut the reasons of record supporting the election requirements.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1-20 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.
Firstly, it is unclear exactly what constitutes the tack decrease; it is not seen that it is a standard or well-known property. Absent a claimed way of calculating it, it unclear to what extent it constitutes a definitive limitation. Similarly, with respect to claim 6, it is unclear exactly what constitutes dust pick-up decrease and how it has been calculated.
Secondly, regarding claims 2, 3, and 9-11, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Also, the language denoted by “or even” renders the claims indefinite, because it is unclear if or to what extent it modifies other language within the claims.
Thirdly, with respect to claim 8, it is unclear how to interpret the language, “through a thickness of the article”; a deposition layer will add a degree of thickness to the article; therefore, it is unclear if this is what is being referenced.
The examiner notes that the language, “silica-like moieties”, has been defined within the specification.
Prior Art Rejections
5. 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.
6. Claims 1-4, 6, 7, 9-16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 102005023017 A1.
DE 102005023017 A1 discloses the surface modification of silicone rubber, such as in the form of a tube or molded part, wherein the rubber is subjected to flame treatment using a flammable gas, as claimed, to create a silicate-containing functional layer. The modified surface shows very low adhesion or stickiness. In view of this disclosure and since the silicone rubber and the flame treatment correspond to that claimed, applicants’ claimed properties are considered to be inherent features of the treated rubber. See provided abstract.
7, Claims 1-7, 9-12, 14-16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2008-132610 A.
JP 2008-132610 A discloses the surface modification of silicone moldings, wherein the silicone is subjected to the combustion of an organosilicon compound by means of flame treatment using a flammable gas to produce a silicon oxide coat. The modified surface shows decreased adhesion. See abstract and paragraphs [0004]-[0006], [0010], [0020], [0021], [0032], [0035], and [0036] within the translation. In view of these disclosures and since the silicone and the flame treatment correspond to that claimed, applicants’ claimed properties are considered to be inherent features of the treated silicone.
8. Claims 1-12, 14-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugiyama et al. (US 2016/0289401 A1).
Sugiyama et al. disclose the surface modification of silicones, comprising silicone polymers corresponding those claimed, wherein the silicone is subjected to plasma treatment using a silicon containing gas, corresponding to that claimed. See abstract and paragraphs [0013]-[0021]. The modified surface shows decreased adhesion. See abstract and paragraphs [0004]-[0006], [0010], [0020], [0021], [0032], [0035], and [0036] within the translation. Table 2 of the reference demonstrate that the treated polymers display a reduction in frictional force and coefficient of friction; in view of these results and since the silicone and the plasma treatment correspond to that claimed, applicants’ claimed properties are considered to be inherent features of the treated silicone. Regarding claim 8, to the extent claimed, the plasma deposition is expected to penetrate the surface to some depth/thickness, thereby satisfying the claim.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/ Primary Examiner, Art Unit 1765