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 .
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, 8, and 10-13 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.
Regarding claim 1, the as-amended claim requires that the particles of the silicone elastomer (A) have a volume average particle size of “up to 10 µm” (lines 21-22) and “0.1 to 1 µm” (lines 33-34). These statements are contradictory towards one another, and one having ordinary skill in the art would therefore be unable to determine the full metes and bounds of the claim (for example, one having ordinary skill in the art would be unable to determine if particle sizes of 9 µm fall within the scope of the claimed invention).
Claims 8 and 10-13 are rendered indefinite because they depend on the indefinite claim 1.
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 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, 8, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Inokuchi (US 2015/0118320 A1) in view of Willing (US Patent No. 4,248,751) and Polmanteer (US Patent No 3,697,473).
Regarding claims 1 and 14-15, Inokuchi teaches an aqueous dispersion of silicone elastomer particles (Abstract), comprising:
(A) Silicone elastomer particles (Abstract), formed from the addition reaction of an organo(poly)siloxane having at least two monovalent olefinically unsaturated groups per molecule ([0035]) and an organohydrogen(poly)siloxane having at least three hydrogen atoms each bonded to a silicone atom per molecule([0035]). The organo(poly)siloxane of Inokuchi therefore reads on the claimed component “(A-1),” and the organohydrogen(poly)Siloxane of Inokuchi therefore reads on the claimed component “(A-2).” Inokuchi teaches that the silicone elastomer particles have a 90% volume cumulative diameter ranging from 0.3 to 20 microns (Abstract), which overlaps the claimed ranges, establishing prima facie cases of obviousness.
A polyoxyethylene alkyl ether in amounts ranging from 0.01 to 15 mass % based on the total mass of the aqueous dispersion (Abstract), which reads on the claimed “(C) nonionic surfactant” because the instant Specification states that polyoxyethylene alkyl ethers are suitable nonionic surfactants (c.f. [0045] of instant Specificaiton).
An additional surfactant which may be an anionic surfactant ([0095]) in amounts ranging from 0.1 to 5 parts by mass with respect to the total composition ([0096]), which reads on the claimed “(B) an anionic surfactant.”
From 19 to 94 mass% of water (Abstract)
Inokuchi differs from claim 1 because it is silent with regard to the claimed component “(A-3).” In the same field of endeavor however, Willing teaches a latex of crosslinked silicone prepared by emulsifying a vinyl end-blocked polydiorganosiloxane and an organosilicon having silicon-bonded hydrogen atoms with water and a surfactant (Abstract). The organosilicon is taught as a mixture of an organosiloxane having two silicon-bonded hydrogen atoms per molecule and an organosiloxane having at least three silicon-bonded hydrogen atoms per molecule (col. 4, line 64 to col. 5, line 11). This mixture is taught as functioning as a crosslinker which allows for the formation of an aqueous dispersion of crosslinked particles which remains stable over time and is able to form an elastomeric film upon evaporation of water (col. 3, lines 35-47 and col. 4, lines 48-51). Willing incorporates Polmanteer by reference, the latter teaching the following preferred compound as an organosiloxane having two silicon-bound hydrogen atoms per molecule:
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Preferred organosiloxane compound of Polmanteer (US Patent No. 3,697, 473 at col. 4, line 58).
wherein R’ is a methyl group and X ranges from 0 to 50. This structure is a linear diorganohydrogenpolysiloxane having hydosilyl groups at only both ends of the molecular chain. Polmanteer teaches the blending of the above preferred compound with an organosiloxane containing 3 to 10 silicon-bonded hydrogen atoms per molecule and up to 75 silicon atoms per molecule (Polanteer col. 4, line 55 to col. 5, line 14). The crosslinking composition taught by Polmanteer which contains the above-shown diorganohydrogenpolysiloxane having hydosilyl groups at only both ends of the molecular chain in combination with an organosiloxane containing 3 to 10 silicon-bonded hydrogen atoms per molecule and up to 75 silicon atoms per molecule is therefore included referentially into the teachings of Willing. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the combination of the linear diorganohydrogenpolysiloxane having hydosilyl groups at only both ends of the molecular chain in combination and the organosiloxane containing 3 to 10 silicon-bonded hydrogen atoms per molecule and up to 75 silicon atoms per molecule in place of the single-component organohydrogen(poly)siloxane taught by Inokuchi, as Willing (via Polmanteer) recognizes this combination as suitable for the formation of a crosslinked elastomeric silicone film. In so doing, the aqueous silicone dispersion of Inokuchi as modified meets all of the compositional limitations of the claimed “(A) particles of silicone elastomer.”
Willing teaches the following preferred compound as an organosiloxane having two silicon-bound hydrogen atoms per molecule (which reads on the claimed compound “(A-3)” as described above:
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Preferred organosiloxane compound of Polmanteer (US Patent No. 3,697, 473 at col. 4, line 58).
wherein R’ is a methyl group and X ranges from 0 to 50. This component reads on the claimed component “(A-3)” represented by the claimed “general formula (11)” because it has an identical main polymer chain structure when R’ is methyl and when X is a number between 5 and 50.
Inokuchi teaches the incorporation of silica as a filler within the inventive formulation ([0090]), but further differs from claim 1 because it is silent with regard to the specific incorporation of the claimed range of colloidal silica.
Willing further teaches the incorporation of colloidal silicas and teaches that colloidal silicas are well-known in the art as being used in similar formulations (col. 6, lines 10-13). Willing teaches the incorporation of up to 70 parts by weight of colloidal silica with respect to the silicone components (col. 6, lines 19-22), which overlaps the claimed range of “0 to 35 parts by weight,” establishing a prima facie case of obviousness.
Regarding the claimed range of hydrosilyl groups with respect to the number of alkenyl groups within the formulation, Willing teaches the SiH to vinyl weight ratio ranges from 0.75/1 to 1.5/1, and teaches that this ratio is important because it allows for the formation of the inventive crosslinked silicone while taking into consideration the differing reactivities/availabilities of each component within the system (col. 3, lines 35-47). As described above, it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the SiH/vinyl ratio taught by Willing, as Willing recognizes this ratio range as suitable for forming a crosslinked silicone elastomer.
Inokuchi further teaches that the silicone elastomer particles have a 90% volume cumulative diameter ranging from 0.3 to 20 microns (Abstract), which overlaps the claimed “volume average particle size of up to 10 µm,” establishing a prima facie case of obviousness.
Now turning to the compositional limitations of claim 1. Inokuchi as modified above teaches the incorporation of 0-70 parts by weight of colloidal silica with respect to 100 parts of the silicone components, therefore comprising from 0 to 70% of the mass of the silicone components. Since Inokuchi teaches that the silicone components may comprise 5-80 wt% of the formulation (Abstract), the colloidal silica may therefore comprise up to 56 wt% of the formulation. The remainer of the components are taught be Inokuchi as weight percentages, as displayed in Table 1, below:
Claimed component
Range taught by Inokuchi
(as modified)
(A-1) (alkenyl organopolysiloxane)
5-80 wt%
(A-2) (3 SiH group-bearing polysiloxane)
(A-3) (Terminal SiH group-bearing polysiloxane)
(B) anionic surfactant
0.1 – 5 wt%
(C) nonionic surfactant
0.01 to 15 wt%
(D) colloidal silica
0-56 wt%
(E) (Water)
19-94 wt%
For the sake of comparison, the required amounts of each component within the claimed composition have been converted to a weight-percentage range, as displayed in Table 2, below. The ranges are determined by first calculating the weight percentage of each component within a formulation containing the minimum amount of said component in a formulation containing the maximum amount of every other component (the minimum wt % of said component), and by then calculating the weight percentage of each component within a formulation containing the maximum amount of said component inf a formulation containing the minimum amount of every other component (the maximum wt % of said component):
Claimed component
Claimed Range
(A-1) (alkenyl organopolysiloxane)
29.6-86.6 wt%
(A-2) (3 SiH group-bearing polysiloxane)
(A-3) (Terminal SiH group-bearing polysiloxane)
(B) anionic surfactant
0.15-1.71 wt%
(C) nonionic surfactant
0-0.43 wt%
(D) colloidal silica
0-23.3 wt%
(E) (Water)
9.8-66.6 wt%
In each case, the amounts taught by Inokuchi as modified overlap, encompass, or fall within the claimed ranges, establishing prima facie cases of obviousness.
Inokuchi finally teaches the curing (and therefore the drying, because the instant Specification states that drying and curing occur simultaneously, c.f. [0003] of instant Specification), at normal temperature (15-20°C, [0070], aligning with normal temperature as defined in the Specification, which at least includes 20-25°C; c.f. instant Specification at [0060]), which reads on the claimed process step of “drying at normal temperature.” Since Inokuchi teaches the drying of the formulation at normal temperature and comprises the same components as claimed, it follows that the composition of Inokuchi is “capable of forming an elastomeric film upon drying at normal temperature” as claimed.
Inokuchi as modified above only requires the incorporation of the siloxane components, the nonionic surfactant, and water (Abstract). Therefore, any additional components within the formulation are optional, and therefore the composition of Inokuchi as modified meets the limitation wherein the composition “consists” of claimed components “(A)” through “(E).”
Inokuchi further teaches that the silicone components react to form the inventive silicone particles ([0035]), but Inokuchi further differs from claim 1 because it is silent with regard to the claimed weight ratio of components “(A-2)” to “(A-3)”.
In the same field of endeavor, Polmanteer teaches a composition comprising a polydiorganopolysiloxane having two vinyl radicals and a mixture of silicone compounds having silicon-bonded hydrogen atoms, as described above (Abstract). Polmanteer teaches that the mixture of silicone compounds, which contains a compound containing 3-to-10 silicon-bonded hydrogen atoms and another compound containing two terminally-connected silicon-bonded hydrogen atoms (which read on claimed components “(A-2)” and (A-3),” respectively) may range in composition from 10:90 to 90:10 (col. 2, lines 50-54). Polmanteer finally teaches that the resulting organosilicon compositions have good handling due to low viscosity and can cure spontaneously at room temperature (col. 1, lines 53-55). Inokuchi as modified by Willing also contemplates formulations curable at room temperature which contain the same combination of organosiloxane components, as described above. Therefore, it would have been obvious to one having ordinary skill in the art to incorporate the ratio of components taught by Polmanteer within the composition of Inokuchi for the purpose of generating low-viscosity films which can cure spontaneously at room temperature. The range of 10:90 to 90:10 overlaps the claimed range of “50:50 to 69:31,” establishing a prima facie case of obviousness.
Finally, Inokuchi is silent with regard to the claimed hardness and elongation characteristics. Nevertheless, Inokuchi as modified teaches a composition which is identical to the claimed composition, containing all of the same components in required ranges. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed hardness and elongation characteristics will therefore necessarily be present in Inokuchi as modified, and as applied above.
Regarding claim 8, as described above Inokuchi as modified by willing teaches the incorporation of colloidal silica in amounts which encompass the claimed range. The narrower claimed range of claim 8 is therefore also encompassed by the teachings of Inokuchi as modified by Willing, establishing a prima facie case of obviousness.
Regarding claim 10, Inokuchi teaches that the inventive organohydrogen(poly)siloxane, which reads on the claimed component “(A-2)” as described above, may have the following structure ([0045]):
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Organohydrogen(poly)siloxane as taught by Inokuchi (US 2015/0118320 A1) in paragraph ([0045])
Wherein q and q’ are numbers such tht the organohydrogen(poly)siloxane has a dynamic viscosity of 25°C of 100,00 mm2/s or less, more preferably 10,000 mm2/s or less, q’ is not zero, and R4 is independently of each other, an alkyl group including inter alia a methyl group. Example formulations utilize components of this structure wherein q is 24 and q’ is 8 (Example 1 [0117]). Components having this structure read on the claimed component “(A-2)” represented by the claimed “general formula (7)” because q’ must be at least 1 based on the limitations described therein and the terminal silicon atoms in this structure contain two R4 groups, corresponding to an “al” value of 1, identical to the claimed value. The structure taught by Inokuchi thereby satisfies the inequality provided in the claim,
Regarding claim 11, Inokuchi teaches that the organo(poly)siloxane containing vinyl groups may comprise methyl groups ([0037]), and exemplifies the usage of methylvinylpolysiloxane ([0117]).
Regarding claim 12, Inokuchi teacehs that the organohydrogen(poly)siloxane may comprise methyl groups ([0037]), and exemplifies the usage of methlorganohydrogen(poly)siloxane ([0117]).
Regarding claim 13, as described above, Polmanteer (and therefore Willing) teaches the use of teaching the following preferred compound as an organosiloxane having two silicon-bound hydrogen atoms per molecule (which reads on the claimed compound “(A-3)” as described above:
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Preferred organosiloxane compound of Polmanteer (US Patent No. 3,697, 473 at col. 4, line 58).
wherein R’ is a methyl group and X ranges from 0 to 50. This structure is a linear dimethylhydrogenpolysiloxane having a hydrosilyl at both ends.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed October 27, 2025, with respect to the rejection(s) of claim(s) 1-14 under 35 USC 112(b) have been fully considered and are persuasive. Therefore, the previous grounds of rejection have been withdrawn. However, upon further consideration, a new ground of 112(b) rejection is made in view of the amended claims, as set forth above.
Applicant's arguments with respect to 35 USC 103 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually (e.g., Inokuchi), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s next arguments are directed towards an example of Willing which falls outside of the scope of the claimed invention. However, the presence of an example within Willing which falls outside of the scope of the claimed invention does not rebut the presence of teachings within Willing which fall within the scope of the claimed invention. Furthermore, Patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Applicant next argues that Polmanteer discloses the ratio range of components reading on the claimed components “(A-2)” and “(A-3)” with insufficient specificity to read on the claimed composition. However, the question of “sufficient specificity” is relevant to assertions of anticipation, not assertions of obviousness (see MPEP 2131.03). In the instant case, the disclosure of Polmanteer in combination with the other prior art, as described above, has rendered a prima facie determination of obviousness. Furthermore, Polmanteer specifically discloses organosiloxanes having two terminal Si-H groups (c.f. e.g., Polmanteer col. 5, line 12). Finally, the ratio range as claimed (50:50 to 69:31, equivalent to a range of 1:1 to about 2.3:1) comprises approximately 16% of the range disclosed by Polmanteer (10:90 to 90:10, as described above, equivalent to a range of 1:9 to 9:1). The claimed range therefore comprises a significant portion of the range taught by Polmanteer.
Applicant’s final arguments are directed towards the combination of prior art references not being motivated by the combination of features set forth in the claims of the instant application. However, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Applicant states that “absent impermissible hindsight, the cited references would not have led a skilled artisan to the claimed invention.” However, In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As described in the rejections and arguments set forth above, the prior art provides motivation to combine the claimed features, and therefore renders obvious the claimed invention even if said motivation differs from that of the Applicant.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762