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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 7/29/2025.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 7/29/2025. In particular, claims 38 and 46 have been amended to include a self-sensing elastomeric article. This combination of limitations was not present in the original claims. Thus, the following action is properly made final.
Claim Objections
Claim 38 is objected to because the leading “The” should be replaced with “A”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 27-34, 36, and 37 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claims 27, it is unclear whether the preamble/functional language “self-sensing, elastomeric article composition” breathes life and meaning into the claims and therefore necessarily limited to a composition that is only used in self-sensing elastomeric article. Confusion arises from line 7, where the term “a self-sensing elastomeric article” is recited where the leading “a” does not refer back to the preamble/functional language. In the interest of compact prosecution, the preamble/functional language is examined as being just that—intended use and functional language.
With respect to claims 28-34, 36, and 37, they are rejected for failing to cure the deficiency of claim 27.
Claim Rejections - 35 USC § 103
Claims 27-34, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Shah (US 9,447,259).
With respect to claims 27-34, Shah discloses composite materials comprising carbon nanostructure of a polymer matrix and plurality of carbon nanotubes that are branched, crosslinked, and share common walls with other another (abstract), wherein the polymer matrix is selected from elastomers including perfluoroelastomers such as Tecnoflon PFR (also disclosed in the instant application as a FKM fluoroelastomer with a cure-site monomer, paragraph 0134 of specification, i.e., having at least one functional group for crosslinking) (col. 14, lines 1-23). Shah discloses that the amount of carbon nanosturctures ranges from up to 60 wt %, particularly 3-6 wt %, 1-5 wt %, 2-6 wt %, and 10-15wt % (col. 11, lines 36-61), which converts to parts by weight per 100 parts by weight matrix polymer of about 1-17. In Fig. 2, resistivities of the composite are 0.5 and below, which Shah teaches is largely unaffected by type of polymer matrix (col. 8, lines 18-29).
Shah fails to (i) explicitly disclose a dissipative effect or a quantum tunneling effect or (ii) disclose that the composition is capable of being an insulator before compression and then conductive upon compression that allows for determination and evaluation of performance by the change in conductivity.
With respect to (i), it is the examiner’s position that a dissipative effect or a quantum tunneling effect are directly related to conductivity.
Given that the amounts of carbon nanostructure additive anticipate claimed ranges and further given that Shah discloses that the composition has low resistivity (i.e., conductive), it would have been obvious to one of ordinary skill in the art to prepare a composition and article and expect having claimed dissipative and quantum tunneling effects.
With respect to (ii), Shah discloses that the conductive carbon nanostructures can be compressed and the density raised (col. 7, line 45 to col. 8, line 2) and that the polymer matrix is elastomeric, i.e., compressible. Shah also discloses amounts of carbon nanostructures that anticipate claimed ranges.
While Shah does not disclose that the composition is capable of being an insulator before compression and then conductive upon compression, the act of compressing is not required in any of the instant claims. Rather, the effects of compressing are recited but the performance of the article is contingent on the amount of compression and are therefore functional claim language.
Given that an elastomer is highly compressible and further given that the carbon nanostructures are also compressible as taught by Shah and that the amounts of carbon nanostructures in the matrix polymer anticipate applicant’s own preferred ranges, it would have been obvious to one of ordinary skill in the art to obtain an article which is insulative or conductive dependent on the amount of compression because compression provides more contact among carbon fibers and is directly related to compression. It is noted that claim language “the article has a change in conductivity level under compressive stress when in use that enables determination and evaluation of performance of the article in real time” is functional language and the claim is not actually drawn to an article that is evaluating itself in real time. Because Shah teaches that its molded article is compressible and comprises carbon nanostructures, the composite material of Shah is capable of performing the claimed determination and evaluation.
With respect to claim 36, Shah discloses that another filler such as carbon nanotubes and metal nanoparticles (inherently conductive) can be present (col. 12, lines 10-19).
With respect to claim 37, Shah fails to disclose the amount of additional conductive fillers but teaches that they can be added to the interstitial space between the carbon nanotubes of the carbon nanostructures (col. 12, lines 41-45).
Therefore, it would have been obvious to one of ordinary skill in the art to utilize the conductive filler in an amount that is less than the total amount of carbon nanostructures which less than about 150 parts by weight per 100 parts by weight of matrix polymer.
Claims 27-34, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa (US 8,451,011) in view of Shah (US 9,447,259).
With respect to claims 38, 46, 48, 53, Hayakawa discloses an electrostatic capacity-type sensor comprising a pair of electrodes and a dielectric film comprising an elastomer and a conductive filler which exhibits a change in conductivity under deformation (abstract), e.g., in Figure 10 show that increases in compression result in higher capacitance. Hayakawa teaches that the amount of conductive filler is desirably 30 vol % or less to provide for expansion/contraction properties (col. 7, lines 47-61). The exemplified rubber is an acrylic rubber which is vulcanized (crosslinked) (col. 12, lines 34-40) and therefore inherently has a functional group for crosslinking.
Hayakawa teaches that the conductive filler is preferably formed of a carbon material (col. 4, lines 6-11) but fails to disclose that the carbon material is a 3-dimensional, branched and/or crosslinked carbon nanostructure additive.
Shah discloses composite materials comprising carbon nanostructure of a polymer matrix and plurality of carbon nanotubes that are branched, crosslinked, and share common walls with other another (abstract), wherein the polymer matrix includes elastomers (col. 14, lines 1-23). Shah teaches that the carbon nanostructures are readily dispersible in a fluid medium without the use of a surfactant because they are in a pre-exfoliated state (col. 4, lines 47-54). In Fig. 2, resistivities of the composite are 0.5 and below, which Shah teaches is largely unaffected by type of polymer matrix (col. 8, lines 18-29). Shah discloses that the conductive carbon nanostructures can be compressed and the density raised (col. 7, line 45 to col. 8, line 2) and that the polymer matrix is elastomeric, i.e., compressible.
Give that Hayakawa is open to the use of conductive carbon materials and further given that Shah discloses an advantageous carbon nanostructure material that is conductivity and readily dispersed, it would have been obvious to one of ordinary skill in the art to utilize the carbon nanostructure material of Shah as the conductive filler of Hayakawa to form a self-sensing elastomeric article having a quantum tunneling effect as defined in paragraph 0028 of the instant specification as originally filed.
With respect to claim 41 and 54, Hayakawa teaches that the current is measured with a parallel circuit (col. 14, lines 17-20; Figure 14).
With respect to claim 49, Shah teaches that the polymer matrix is selected from elastomers including perfluoroelastomers such as Tecnoflon PFR (also disclosed in the instant application as a FKM fluoroelastomer with a cure-site monomer, paragraph 0134 of specification, i.e., having at least one functional group for crosslinking) (col. 14, lines 1-23).
Claims 39 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa (US 8,451,011) in view of Shah (US 9,447,259) and further in view of Aisenbrey (US 2005/0167133).
The discussion with respect to Hayakawa and Shah in paragraph 8 above is incorporated here by reference.
Hayakawa and Shah disclose elastomeric materials comprising conductive carbon materials but fails to disclose a seal or gasket material.
Aisenbrey discloses gaskets manufactured from conductive loaded resin-based materials comprising conductive powders and fibers (abstract) and a resin such as rubber (paragraph 0040).
Given that both elastomeric and conductive composites are suitable for use in gaskets as taught by Aisenbrey, it would have been obvious to one of ordinary skill in the art to utilize the conductive composite of Hayakawa and Shah in a gasket.
Response to Arguments
Applicant's arguments filed 7/29/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Shah does not disclose a self-sensing elastomeric article.
The examiner agrees, however, claims 27-34, 36, and 37 are drawn to a composition that has an intended use of being used in a self-sensing, elastomeric article. For the remaining claims, new grounds of rejection are set forth above to address positively reciting a self-sensing, elastomeric article and a method of making a self-sensing, elastomeric article.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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