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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/31/2026 has been entered.
Claim Status
Claims 1, 3, 4, 13, 15, 23, and 24 have been amended
Claim 9 is canceled.
Claim 13 has been rewritten in independent form.
Claim 25 is new, support is found in [p. 0055] of the originally filed specification.
Claims 1-8 and 10-25 are pending.
Response to Arguments
Applicant’s arguments, see p. 7-14, filed 03/31/2026, with respect to the rejection(s) of claim(s) 1-23 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 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 Therefore, the rejection has been withdrawn.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 in view of Meguriya et al (herein ‘Meguriya’; US 5981610 A) and Hirabayashi et al (US 2012/0161066 A1) in view of Meguriya et al (US 5981610 A).
The rejection of claim 24 under 35 U.S.C. 112(b) has been overcome by amendment and is withdrawn.
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.
Claim 8 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. Claim 8 is dependent on claim 1, claim 1 recites, “A composition of a resin for room temperature vulcanizable rubber, the composition comprising: a vinyl-terminated polysiloxane with vinyl and/or silanol reactive functionality of at least 2; a crosslinker reactive toward vinyl and/or silanol functionality…”. In claim 1, the silanol functionality is optional. Claim 8 further limits the crosslinker to an alkoxy blocked silane. However, alkoxy blocked silanes are not reactive with vinyl functionalities. It is unclear how a room temperature vulcanizable rubber composition can be prepared with this combination.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5, 7, and 11-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meguriya et al (herein ‘Meguriya’; US 5981610 A).
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]. The cured silicone rubber composition of Meguriya has a specific gravity of 0.55 [example 1].
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 6, 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).
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).
Regarding claims 1, 3, 5, 8, 11, 13-15, 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 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 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
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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