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 Status
Claims 1, 8, 13, and 15 have been amended. Support for the amendment to claim 1 can be found at [p. 0051] of the specification. Support for the amendment to claim 13 can be found at [0034], [0074], and [0098] of the specification. Support for the amendment to claim 15 can be found at [0045], [0049], and [0068-0069] of the specification.
Claims 1-8 and 10-25 are pending.
Response to Arguments
Applicant’s arguments, see p. 7, filed 08/31/2026, with respect to the rejection of claim 8 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection has been withdrawn.
Applicant’s arguments, see p. 8, filed 08/31/2026, with respect to the rejection(s) of claim(s) 1-3, 5, 7, and 11-18 under 35 U.S.C. 102(a)(1) as being anticipated by Meguriya (US 5981610 A) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made of claim(s) 1-3, 5, 7, and 11-18 under 35 U.S.C. 103 over Meguriya as evidenced by Hirabayashi (US 2012/0161066 A1) and Gelest (Vinyl Terminated PDMS).
Applicant's arguments filed 08/31/2026 have been fully considered but they are not persuasive.
Applicant's arguments regarding Meguriya (US 5981610 A) as evidenced by Hirabayashi (US 2012/0161066 A1) and Gelest (Vinyl Terminated PDMS):
Arguments regarding claim 1 (p. 8) – applicants argue, “Meguriya discloses relatively high viscous polysiloxanes (5000 cSt), Example 1-3, and discloses the composition have at least 500 poises (50,000 centipoise), col. 6, 11 25-40. Thus, Meguriya does not disclose the viscosity of the composition as required in amended claim 1.”
In example 1, Meguriya exemplifies the use of a dimethylpolysiloxane with both terminals blocked with dimethylvinylsiloxy group having a kinematic viscosity of 5,000 cSt. Meguriya is silent with respect to a suitable range for the kinematic viscosity of the vinyl terminated organopolysiloxane, however, Meguriya teaches the dynamic viscosity may range from 100-1,000,000 cP (mPa-s) [c. 2, ll. 55-65]. A dimethylpolysiloxane blocked with a vinyl radical at each end of the molecular chain having a dynamic viscosity of 100-1,000,000 cP corresponds to a degree of polymerization of 70-10,000, as evidenced by Hirabayashi [p. 0037]. Therefore, the general teachings of Meguriya obviously embrace vinyl terminated PDMS having a degree of polymerization of 70 or more, which satisfies applicants claimed viscosity range, as vinyl terminated PDMS having a DP of 81 (Mw ~6 kDa)has a kinematic viscosity of 100 cSt, as evidenced by Gelest.
Arguments regarding claim 13 (p. 9) – applicants argue, “Meguriya is silent regarding the flowability of the composition, and discloses relatively high viscous composition have at least 500 poises (50,000 centipoise), col. 6, 11 25-40, which would be very paste-like. Thus, Meguriya does not disclose the limitation as required in amended claim 13. Applicant respectfully requests reconsideration and allowance of claim 13.”
Meguriya teaches the thixotropic silicone rubber composition for injection molding should preferably have a viscosity of at least 500 poises as measured by a BH type viscometer with No. 7 rotor at 20 rpm. The viscosity as measured by the BH viscometer does not dictate whether the composition of Meguriya is free flowing. Instead, a skilled artisan would appreciate that the thixotropic character of the composition and the teaching that the composition is suitable for use in injection molding indicates that the composition is free flowing when force is applied.
Arguments regarding claim 15 (p. 10) – applicants argue, “The rejection alleges Meguriya's specific gravity of 0.55 discloses the required density (g/cc) of the claimed material. First, rejection conflates two different physical properties. Meguriya discloses specific gravity of a cured rubber composition. The rejection improperly conflates the specific gravity of Meguriya's cured rubber composition as disclosing the claimed density. Specific gravity is a dimensionless value relative to water, whereas the claimed density requires absolute measurement of mass per unit volume requiring specific physical units (gram per cubic centimeter). The Examiner has failed to examine the limitation as written.”
The examiner agrees that the Meguriya discloses the specific gravity of the cured composition, which is a dimensionless value relative to water. However, water has a density of 1 g/cc at room temperature. Therefore, in the context used in the rejection, the numerical value of a material’s density and the numerical value of a material’s specific gravity are interchangeable.
Applicants arguments regarding Hirabayashi (US 2012/0161066 A1) in view of Meguriya (US 5981610 A) as evidenced by Gelest (Vinyl Terminated PDMS):
Arguments regarding claim 1 (p. 12) – applicants argue, “For instance, regarding claim 10, the rejection concedes that Hirabayashi is silent with respect to the viscosity of the composition, NFOA at 8. As discussed above, Meguriya discloses relatively high viscous polysiloxanes (5000 cSt), Example 1-3, and discloses the composition have at least 500 poises (50,000 centipoise), col. 6, 11 25-40. Thus, neither Hirabayashi nor Meguriya disclose the amended limitation of claim 1.”
Hirabayashi teaches the dynamic viscosity of the vinyl-terminated organopolysiloxanes but is silent with respect to the kinematic viscosity. Hirabayashi exemplifies the use of a dimethylpolysiloxane with both terminals blocked with dimethylvinylsiloxy group (DP=300) (Mw ~22 kDa)[example 1]. However, Hirabayashi teaches the alkenyl group-containing organopolysiloxane should preferably have a degree of polymerization (in terms of the number of silicon atoms in the molecule) of 70 or more [p. 0037]. A vinyl terminated PDMS having a degree of polymerization of 70 or more obviously embraces applicants claimed viscosity range, as vinyl terminated PDMS having a DP of 81 (Mw ~6 kDa)has a kinematic viscosity of 100 cSt, as evidenced by Gelest. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Arguments regarding claim 13 (p. 13) – applicants argue, “Hirabayashi is silent regarding the flowability of the rubber sponge composition, and Meguriya also is silent regarding the flowability of the composition, but does disclose a composition having a high viscosity that would be paste-like as described above. Thus, neither Hirabayashi nor Meguriya teach or suggest a composition being a free-flowing fluid as required in amended claim 13.”
The composition of Hirabayashi in view of Meguriya comprises thixotropic agents in order for the composition to have thixotropic properties. Therefore, the composition will flow freely when force is applied.
Arguments regarding claim 15 (p. 14) – applicants argue, “The density of Hirabayashi's rubber foam is far outside the density of the claimed material in amended claim 15. Meguriya does not disclose a density of the product, and thus does not remedy the deficiency of the rejection. Thus, neither Hirabayashi nor Meguriya teach or suggest the limitations of amended claim 15.”
Hirabayashi exemplifies a cured silicone rubber composition having a specific gravity of 0.55 and a void volume ratio of 54 %, wherein the cured composition comprises 7 pbw hollow filler relative to 100 pbw of the composition [example 2, table 3]. Hirabayashi fails to teach general range of suitable densities for the cured silicone rubber composition. However, Hirabayashi teaches the hollow filler should be 0.1 to 50 parts by weight relative to 100 parts by weight of the heat-curable organopolysiloxane composition, so that the resulting composition preferably has a void volume ratio of 10 to 70% [p. 0065, 0086]. Hirabayashi teaches as the density of the cured composition containing the organic resin hollow filler decreases (e.g. more hollow filler), the void volume ratio increases. Hirabayashi teaches the void volume ratio dictates physical properties of the cured composition, such as hardness and heat capacity [p. 0086]. In light of this, a skilled artisan would recognize the amount of hollow filler included in the composition as a result effective variable, as it influences the density of the cured composition, and, in turn, the void volume ratio. Furthermore, the general teachings of Hirabayashi appear to embrace compositions having a specific gravity below 0.5 g/cc as the exemplified composition comprises 7 pbw hollow filler has had a specific gravity of 0.55 g/cc, and Hirabayashi teaches the composition may comprise up to 50 pbw hollow filler. In the absence of evidence of criticality of the claimed range, the density of the cured composition is considered optimization within prior art conditions or routine experimentation."[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 broadens the density range of claim 15, from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-3, 5-8, 10-19, 21, 22, 23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Meguriya et al (US 5981610 A) as evidenced by Hirabayashi (US 2012/0161066 A1) and Gelest (Vinyl Terminated PDMS).
Regarding claims 1-3, 5, 7, 8, 11, 12, and 14; Meguriya is directed to a silicone rubber composition of the addition reaction curing type that is suitable for injection molding [abstract]. Meguriya exemplifies a silicone rubber composition comprising a dimethylpolysiloxane blocked with a vinyl radical at each end of its molecular chain, a hollow filler made of a copolymeric resin primarily of vinylidene chloride and acrylonitrile and having a specific gravity of 0.04, hydrophobized fumed silica as a solid thixotropic agent, polyethylene glycol as a liquid thixotropic agent, and a methylhydrogenpolysiloxane crosslinker having a functionality of 10 [example 1]. Meguriya initiates the curing of the composition with a chloroplatinic acid addition reaction catalyst [example 1].
In example 1, Meguriya exemplifies the use of a dimethylpolysiloxane with both terminals blocked with dimethylvinylsiloxy group having a kinematic viscosity of 5,000 cSt. Meguriya is silent with respect to a suitable range for the kinematic viscosity of the vinyl terminated organopolysiloxane, however, Meguriya teaches the dynamic viscosity may range from 100-1,000,000 cP (mPa-s) [c. 2, ll. 55-65]. A dimethylpolysiloxane blocked with a vinyl radical at each end of the molecular chain having a dynamic viscosity of 100-1,000,000 cP corresponds to a degree of polymerization of 70-10,000, as evidenced by Hirabayashi [p. 0037]. Therefore, the general teachings of Meguriya obviously embrace vinyl terminated PDMS having a degree of polymerization of 70 or more, which satisfies applicants claimed viscosity range, as vinyl terminated PDMS having a DP of 81 (Mw ~6 kDa)has a kinematic viscosity of 100 cSt, as evidenced by Gelest.
Regarding claim 13; Meguriya is directed toward a thixotropic composition suitable for injection molding [c. 1, ll. 40-55]. A skilled artisan would appreciate that the thixotropic character of the composition and the teaching that the composition is suitable for use in injection molding indicates that the composition is free flowing when force is applied.
Regarding claim 15-18; Meguriya exemplifies a cured composition comprising 4 parts of hollow filler having a specific gravity of 0.54 g/cc, wherein the hollow filler comprises 43% by volume of the composition [example 1]. However, Meguriya is silent with respect to a suitable range for the specific gravity of the cured composition [c. 5, ll. 10-15]. Meguriya teaches the hollow filler (E) (i.e., micro balloon) is effective for reducing the weight of a cured part by introducing gaseous cells therein [c. 4, ll. 25-30]. Meguriya teaches the hollow filler (E) is blended in an amount of 0.5 to 30 parts per 100 parts by weight of the organopolysiloxane (A). Less than 0.5 part of the hollow filler is too small to achieve sufficient weight reduction whereas more than 30 parts of the hollow filler is difficult to blend and adversely affect rubber strength. In this case, the hollow filler (E) should preferably be contained in an amount of 10 to 80% by volume, especially 15 to 75% by volume in the hollow filler-containing silicone rubber composition [c. 4, ll. 50-60]. In light of this, a skilled artisan would recognize the amount of hollow filler included in the composition as it influences weight of cured parts prepared from the composition, and, in turn, the physical properties of the cured parts.
One having ordinary skill in the art at the time the invention was filed would recognize that the general teachings of Meguriya obviously embrace compositions having a density less than 0.5 g/cc as a composition comprising 4 pbw hollow filler has a specific gravity of 0.54 g/cc, and Meguriya teaches the hollow filler can be blended in amounts up to 30 pbw. In the absence of evidence of criticality of the claimed range, the density of the cured composition is considered optimization within prior art conditions or routine experimentation."[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 10; Meguriya is silent with respect to the viscosity of the composition. However, a person with ordinary skill in the art would expect a composition resulting from the teachings of Meguriya to obviously embrace embodiments capable of satisfying these properties as the composition of Meguriya significantly satisfies the chemical and material limitations of the claimed composition.
Regarding claims 6, 21, and 22; Meguriya teaches the organohydrogenpolysiloxane (B) is more preferably blended at about 0.8 to 2.5 mol of silicon atom-attached hydrogen atoms (SiH radicals) in component (B) are available per mol of alkenyl groups in component (A) [c. 4, ll. 40-50]. Therefore, the general teachings of Meguriya embrace embodiments wherein the ratio of vinyl to silane functional groups in the composition is no more than 10 % excess of the vinyl to silane functional groups, as well as embodiments wherein the ratio of vinyl to silane is at least 1.0 vinyl functional groups to about 0.9 silane functional groups. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 19; Meguriya teaches the addition reaction catalyst (D) is used in a catalytic amount, typically about 1 to 1,000 parts, preferably about 5 to 200 parts by weight of platinum per million parts by weight of components (A) and (B) combined. [c. 4, ll. 23-26]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 23 and 25; Meguriya exemplifies the use of polyethylene glycol as the liquid thixotropic compound [example 1]. However, Meguriya teaches suitable examples of liquid thixotropic compounds include polyether compounds such as block copolymers of polyethers and polysiloxanes [c. 3, ll. 50-67; c. 4, ll. 1-8]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to select a polyether thixotropic compound having both hydrophobic and hydrophilic segments.
Claims 1-8 and 10-25 are rejected under 35 U.S.C. 103 as being unpatentable over Hirabayashi et al (US 2012/0161066 A1) in view of Meguriya et al (US 5981610 A) as evidenced by Gelest (Vinyl Terminated PDMS).
Regarding claims 1, 3, 5, 8, 11, 14, and 17; Hirabayashi et al exemplifies a silicone rubber foam composition having a density of 0.77 g/cm3comprising [table 3, example 1]:
dimethylpolysiloxane with both terminals blocked with dimethylvinylsiloxy groups;
hydrophobized fumed silica, a thixotropic agent as evidenced by Meguriya et al [example 1];
gas filled expandable organic resin hollow filler (A) having a specific gravity of 0.04 and an average particle diameter of 40 um ("Expancel DE" made by Akzo Nobel N.V.);
methylhydrogenpolysiloxane as a crosslinking agent having a degree of polymerization of 17 and Si--H groups on both terminals and side chains.
Hirabayashi teaches the dynamic viscosity of the vinyl-terminated organopolysiloxanes but is silent with respect to the kinematic viscosity. Hirabayashi exemplifies the use of a dimethylpolysiloxane with both terminals blocked with dimethylvinylsiloxy group (DP=300) (Mw ~22 kDa)[example 1]. However, Hirabayashi teaches the alkenyl group-containing organopolysiloxane should preferably have a degree of polymerization (in terms of the number of silicon atoms in the molecule) of 70 or more [p. 0037]. A vinyl terminated PDMS having a degree of polymerization of 70 or more obviously embraces applicants claimed viscosity range, as vinyl terminated PDMS having a DP of 81 (Mw ~6 kDa)has a kinematic viscosity of 100 cSt, as evidenced by Gelest. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Hirabayashi teaches the thermally conductive silicone rubber sponge composition may be incorporated with, as an optional additive (F) for the purpose of reducing permanent compression set [p. 0078]. Hirabayashi teaches examples of (F) include polymers of polyhydric alcohol such as polyethylene glycol and partially silyated products thereof [p. 0078]. However, Hirabayashi fails to teach these additives as thixotropic additives.
Meguriya is directed towards the blending of thixotropic agent(s) into silicone rubber compositions comprising alkenyl radical-terminated organopolysiloxane, an organohydrogenpolysiloxane, an addition reaction catalyst, and filler balloons [abstract]. Meguriya teaches that in silicon rubber compositions comprising hollow fillers, there often occurs a separation phenomenon wherein the hollow filler becomes afloat in a short time due to the light weight of the hollow filler and hence, the substantial difference in specific gravity between the rubber base and the hollow fillers [c. 1, ll. 20-50]. Meguriya teaches that by blending in the composition a thixotropic agent for imparting thixotropy, there is obtained an injection molding silicone rubber composition which effectively prevents floating and separation of the hollow filler, and thus remains stable over a long term [c. 1, ll. 40-50]. Meguriya et al further teaches it is preferable to blend at least one liquid thixotropic agent and at least one solid thixotropic agent in combination in order to exert the thixotropic property fully and stably [c. 4, ll. 1-8]. Meguriya teaches the thixotropic agents in solid state at room temperature (ex. 25.degree. C.) include fumed silica, fumed titanium oxide, and carbon [c. 3, ll. 50-67]. Meguriya et al teaches typical examples of liquid thixotropic compounds include polyether compounds such as block copolymers of polyethers and polysiloxanes [c. 3, ll. 50-67; c. 4, ll. 1-8].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition Hirabayashi with a liquid thixotropic polyether (component (F)) in addition to the solid thixotropic fumed silica, as Meguriya teaches the combination of a liquid and a solid thixotropic agent is preferred as the thixotropic properties remain stable, which, in turn, prevents the phenomenon of the hollow filler floating and separating with time.
Regarding claim 13; Hirabayashi is silent with respect to the flowability of the resin composition. However, the composition of Hirabayashi in view of Meguriya comprises thixotropic agents in order for the composition to have thixotropic properties. Therefore, the composition will flow freely when force is applied.
Regarding claim 15, Hirabayashi exemplifies a cured silicone rubber composition having a specific gravity of 0.55 and a void volume ratio of 54 %, wherein the cured composition comprises 7 pbw hollow filler relative to 100 pbw of the composition [example 2, table 3]. Hirabayashi fails to teach general range of suitable densities for the cured silicone rubber composition. However, Hirabayashi teaches the hollow filler should be 0.1 to 50 parts by weight relative to 100 parts by weight of the heat-curable organopolysiloxane composition, so that the resulting composition preferably has a void volume ratio of 10 to 70% [p. 0065, 0086]. Hirabayashi teaches as the density of the cured composition containing the organic resin hollow filler decreases (e.g. more hollow filler), the void volume ratio increases. Hirabayashi teaches the void volume ratio dictates physical properties of the cured composition, such as hardness and heat capacity [p. 0086]. In light of this, a skilled artisan would recognize the amount of hollow filler included in the composition as a result effective variable, as it influences the density of the cured composition, and, in turn, the void volume ratio. Furthermore, the general teachings of Hirabayashi appear to embrace compositions having a specific gravity below 0.5 g/cc as the exemplified composition comprises 7 pbw hollow filler has had a specific gravity of 0.55 g/cc, and Hirabayashi teaches the composition may comprise up to 50 pbw hollow filler. In the absence of evidence of criticality of the claimed range, the density of the cured composition is considered optimization within prior art conditions or routine experimentation."[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 4: Hirabayashi et al teaches the alkenyl group-containing organopolysiloxane should preferably have a degree of polymerization (in terms of the number of silicon atoms in the molecule) of at least 70, which corresponds to a molecular weight of at least 5,180 Da (dimethylsiloxane repeat unit = 74.15 g/mol) [p. 0037]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10; Hirabayashi is silent with respect to the viscosity of the composition. However, a person with ordinary skill in the art would expect a composition resulting from the teachings of Hirabayashi to obviously embrace embodiments capable of satisfying these properties as the composition of Hirabayashi significantly satisfies the chemical and material limitations of the claimed composition.
Regarding claims 2, 12, 16, 18, ; Hirabayashi teaches the silicone rubber sponge (foam) composition is produced by mixing together the components sequentially, wherein the platinum hydrosilylation catalyst is the last component added [example 1, p. 0062, 0081, 0091-0099]. Hirabayashi teaches silicone rubber sponge (foam) composition may be molded by cast molding, compression molding, injection molding, and coating [p. 0082, 0087].
Regarding claim 19: Hirabayashi et al teaches the platinum group metal catalyst is present in an amount of 0.5 to 1,000 ppm [p. 0033]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 20: Hirabayashi et al teaches curing is performed for ten seconds to one hour, and curing may be followed by post-curing (or secondary curing) for 30 minutes to 70 hours [p. 0082]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claims 6, 21 and 22; Hirabayashi teaches the amount of organohydrogenpolysiloxane may be expressed in terms of a molar ratio of Si—H groups to alkenyl groups [p. 0060]. The general teachings of Hirabayashi are that the ratio of Si—H to alkenyl groups is most preferably from 0.8 to 2.5 mol/mol, which embraces a composition having no more than 10% excess of vinyl to silane groups [p. 0060]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 24; Hirabayashi et al teaches curing is performed for ten seconds to one hour, and curing may be followed by post-curing (or secondary curing) for 30 minutes to 70 hours [p. 0082]. Hirabayashi is silent with respect to the cure time of an otherwise identical composition without microballoons. However, a person with ordinary skill in the art would expect an otherwise identical composition of Hirabayashi without microballoons to obviously embrace embodiments capable of satisfying these properties as the composition of Hirabayashi significantly satisfies the chemical and material limitations of the claimed composition.
Regarding claims 22 and 24; Hirabayashi teaches the thermally conductive silicone rubber sponge composition may be incorporated with, as an optional additive (F) for the purpose of reducing permanent compression set [p. 0078]. Hirabayashi teaches examples of (F) include polymers of polyhydric alcohol such as polyethylene glycol and partially silyated products thereof [p. 0078]. Meguriya et al teaches typical examples of liquid thixotropic compounds include polyether compounds such as block copolymers of polyethers and polysiloxanes [c. 3, ll. 50-67; c. 4, ll. 1-8]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to select a polyether for component (F) having both a hydrophilic and hydrophobic portion as they are taught by Hirabayashi as suitable for additive (F), and Meguriya teaches they are suitable liquid thixotropic compounds.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
