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 .
Claim Rejections - 35 USC § 102
2. 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.
3. 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.
4. Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogushi et al. (JPH11247326A) with citations from machine translation provided with this Office Action further evidenced by Hayashida et al. (US 2016/0369143).
Regarding claim 1, Ogushi discloses a silicone laminate (fire resistant coating for seismically isolated laminated rubber, claims 1 and 2) comprising layers of a silicone rubber layer (A) (cured product of a non-foamable silicone rubber composition [0005]) and a silicone layer (B) with a lower hardness than the silicone rubber layer (A) (cured product of a foamable silicone rubber composition [0005]), wherein the silicone layer (B) is at least one layer selected from the group consisting of a silicone sponge layer (B1) (cured product of a foamable silicone rubber composition [0005]), and the silicone laminate is fire resistant([0005]).
Continuing with claim 1, Ogushi discloses the fire-resistant coating preferably has both the properties of an insulating material with insulating properties and the properties of a fire-resistant sheet with high mechanical strength, large elongation, high flammability, and heat-shielding properties([0012]). Ogushi does not explicitly disclose both the silicone rubber layer (A) and the silicone layer (B) are made of a material that is converted to ceramic and forms a sintered body when burned, so that the material retains its shape. However, a silicone rubber composition which when molded into a silicone rubber article, can retain the original molded shape even after prolonged exposure to fire because the ash of the burned article sinters (into a ceramic mass) as evidenced by Hayashida ([0006]).
Regarding claim 4, Ogushi discloses a thickness of the silicone rubber layer (A) in a stacking direction is 1 to 100 mm (10 mm ([0016]), a thickness of the silicone layer (B) in the stacking direction is 1 to 100 mm (90 mm [0016]), and the silicone layer (B) is 0.1 to 10 times as thick as the silicone rubber layer (A) (90/10 = 9, [0016]).
According to the MPEP, “"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2131.03.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
7. Claim(s) 2 and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogushi et al. (JPH11247326A) with citations from machine translation provided with this Office Action further evidenced by Hayashida et al. (US 2016/0369143) as applied to claim 1 above.
Regarding claim 2, Ogushi discloses the fire resistant coating has both the properties of an insulating material with insulating properties and the properties of a fire resistant sheet with high mechanical strength, large elongation, high flammability, heat shielding properties and may have a multi-layer structure ([0012]) but does not explicitly disclose the silicone rubber layer (A) and the silicone layer (B) are alternately stacked, and a number of layers is two or more for each of the layers (A) and (B), and four or more in total.
It would have been obvious to one of ordinary skill in the art to provide the silicone laminate of Ogushi with the silicone rubber layer (A) and the silicone layer (B) are alternately stacked, and a number of layers is two or more for each of the layers (A) and (B), and four or more in total in order to provide more insulating, mechanical strength, elongating, flammability, heat shield properties, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (MPEP 2144.04 VI).
Regarding claim 5, Ogushi discloses as the fire-resistant sheet, a composition having a dense surface, heat-reflecting properties, and excellent fire resistance that does not melt even at high temperatures is suitable ([0012]) but does not explicitly disclose the silicone laminate has sufficient fire resistance to retain its shape when burned with a gas burner for 5 minutes.
It would have been obvious to one of ordinary skill in the art to provide the silicone laminate of Ogushi with the silicone laminate has sufficient fire resistance to retain its shape when burned with a gas burner for 5 minutes, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 6, Ogushi discloses the silicone laminate has flame retardance as well as the fire resistance([0012], [0018], [0023]), but does not explicitly disclose is classified as 5VB in a vertical burning test under a UL 94 standard.
It would have been obvious to one of ordinary skill in the art to provide the silicone laminate of Ogushi with the silicone laminate is classified as 5VB in a vertical burning test under a UL 94 standard, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 7, Ogushi discloses the silicone sponge layer (B1) is an independent foam with an expansion ratio of 2 to 15 times ([0022]) which overlaps the claim range of 1.2 to 3 times, thus reading on the limitation.
Ogushi is explicitly silent to the claim range however “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). MPEP 2144.05.
Regarding claim 8, Ogushi discloses the fire-resistant coating 13 preferably has both the properties of an insulating material with insulating properties and the properties of a fire-resistant sheet with high mechanical strength, large elongation, high flammability, and heat-shielding properties([0012]) but does not explicitly disclose a compressive strength of the silicone laminate is 1 to 30 N/mm2 when the silicone laminate is compressed to 50%.
It would have been obvious to one of ordinary skill in the art to provide the silicone laminate of Ogushi with a compressive strength of the silicone laminate is 1 to 30 N/mm2 when the silicone laminate is compressed to 50%, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
8. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogushi et al. (JPH11247326A) with citations from machine translation provided with this Office Action further evidenced by Hayashida et al. (US 2016/0369143) as applied to claim 1 above, and further in view of Hara et al. (JPH0569511A) with citations from machine translation provided with this Office Action, further in view of Yoneda et al. (US 5,857,136).
Regarding claim 3, Ogushi discloses a laminate of a hardened foaming silicone rubber composition 14 and a hardened non-foaming silicone rubber composition 16 (abstract, Fig. 1) but does not explicitly disclose the silicone rubber layer (A) has an Asker A hardness of 40 to 80, and the silicone layer (B) has an Asker C hardness of 30 to 70.
Hara teaches manufacture of silicone composite body (title). Hara teaches a silicone composite is obtained consisting of the cure base phase (silicone gel) of composition (A) and the cured surface protective layer (silicone elastomer or silicone resin) of composition (B) ([0017]). Hara teaches the term “elastomer” refers to a cured product having a rubber hardness in the range of more than 0 and less than 100 as measured by an A-type spring hardness tester according to JIS K-6301 ([0020]).
Yoneda teaches belt transport device and belt fixing device (title). Yoneda teaches the fixing roller/drive roller 941 comprises a metal core roller 941b formed of sulfur-free composite cutting steel (SUM22) covered by a protective overcoat surface layer 941a of silicone sponge rubber (hardness: ASKER C30.degree.), or the like(Col. 6, lines 57-62).
It would have been obvious to one of ordinary skill in the art to provide the silicone laminate of Ogushi with the silicone rubber layer (A) has an Asker A hardness of 1 to 100, and the silicone layer (B) has an Asker C hardness of 30 as taught by Hara and Yoneda respectively, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
9. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogushi et al. (JPH11247326A) with citations from machine translation provided with this Office Action further evidenced by Hayashida et al. (US 2016/0369143) as applied to claim 1 above, and further in view of Takahashi et al. (US 5,294,373).
Regarding claim 9, Ogushi discloses the silicone rubber layer (A) is vulcanized with peroxide ([0017]) but does not explicitly disclose the silicone layer (B) is vulcanized with peroxide.
Takahashi teaches conductive silicone rubber composition and conductive silicone rubber (title). Takahashi teaches the non-foamable and foamable conductive silicone rubber compositions can effectively employ normal-pressure hot-air vulcanization using an organic peroxide although the compositions are blended with carbon black and the resulting non-foamed and foamed conductive silicone rubbers can preferably be used for many purposes because they are free from surface tack and superior in heat resistance and conductivity(Col. 10, lines 16-24).
It would have been obvious to one of ordinary skill in the art to modify the silicone laminate of Ogushi with the silicone layer (B) is vulcanized with peroxide as taught by Takahashi in order to provide superior heat resistance and conductivity.
10. Claim(s) 11-13, and 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Neil et al. (US 2018/0223070) as cited in IDS dated 5/11/23 in view of Ogushi et al. (JPH11247326A) with citations from machine translation provided with this Office Action further evidenced by Hayashida et al. (US 2016/0369143).
Regarding claim 11, O’Neil discloses a battery (103, Figs. 1 and 2) comprising a silicone rubber syntactic foam (105, Fig. 4) and the silicone rubber syntactic foam is a cushioning material located between an adjacent pair of cells of the battery ([0023]-[0025]) but does not explicitly disclose a silicone laminate, the silicone laminate comprising layers of a silicone rubber layer (A) and a silicone layer (B) with a lower hardness than the silicone rubber layer (A), wherein the silicone layer (B) is at least one layer selected from the group consisting of a silicone sponge layer (B1) and a silicone gel layer (B2), both the silicone rubber layer (A) and the silicone layer (B) are made of a material that is converted to ceramic and forms a sintered body when burned, so that the material retains its shape, the silicone laminate is fire resistant,
Ogushi teaches a silicone laminate (fire resistant coating for seismically isolated laminated rubber, claims 1 and 2) comprising layers of a silicone rubber layer (A) (cured product of a non-foamable silicone rubber composition [0005]) and a silicone layer (B) with a lower hardness than the silicone rubber layer (A) (cured product of a foamable silicone rubber composition [0005]), wherein the silicone layer (B) is at least one layer selected from the group consisting of a silicone sponge layer (B1) (cured product of a foamable silicone rubber composition [0005]), and the silicone laminate is fire resistant([0005]).
Continuing with claim 11, Ogushi teaches the fire-resistant coating preferably has both the properties of an insulating material with insulating properties and the properties of a fire-resistant sheet with high mechanical strength, large elongation, high flammability, and heat-shielding properties([0012]). Ogushi does not explicitly teach both the silicone rubber layer (A) and the silicone layer (B) are made of a material that is converted to ceramic and forms a sintered body when burned. However, a silicone rubber composition which when molded into a silicone rubber article, can retain the original molded shape even after prolonged exposure to fire because the ash of the burned article sinters (into a ceramic mass) as evidenced by Hayashida ([0006]).
It would have been obvious to one of ordinary skill in the art to modify the battery of O’Neil with a silicone laminate, the silicone laminate comprising layers of a silicone rubber layer (A) and a silicone layer (B) with a lower hardness than the silicone rubber layer (A), wherein the silicone layer (B) is at least one layer selected from the group consisting of a silicone sponge layer (B1), both the silicone rubber layer (A) and the silicone layer (B) are made of a material that is converted to ceramic and forms a sintered body when burned, so that the material retains its shape, the silicone laminate is fire resistant as taught by Ogushi further evidenced by Hayashida in order to provide a silicone laminate with improved insulating properties, high mechanical strength, large elongation, high flammability, and heat shielding properties.
Regarding claim 12, modified O’Neil discloses the fire resistant coating has both the properties of an insulating material with insulating properties and the properties of a fire resistant sheet with high mechanical strength, large elongation, high flammability, heat shielding properties and may have a multi-layer structure (Ogushi [0012]) but does not explicitly disclose the silicone rubber layer (A) and the silicone layer (B) are alternately stacked, and a number of layers is two or more for each of the layers (A) and (B), and four or more in total.
It would have been obvious to one of ordinary skill in the art to provide the battery of modified O’Neil with the silicone rubber layer (A) and the silicone layer (B) are alternately stacked, and a number of layers is two or more for each of the layers (A) and (B), and four or more in total in order to provide more insulating, mechanical strength, elongating, flammability, heat shield properties, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (MPEP 2144.04 VI).
Regarding claim 13, modified O’Neil does not explicitly disclose side faces of the stacked silicone rubber layers (A) and silicone layers (B) of the silicone laminate face the adjacent pair of cells of the battery.
It would have been obvious to one of ordinary skill in the art to modify the battery of modified O’Neil with side faces of the stacked silicone rubber layers (A) and silicone layers (B) of the silicone laminate face the adjacent pair of cells of the battery in order to provide the properties of silicon rubber layers (A) and silicone layers (B) to adjacent pair of cells of the battery as obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143.
Regarding claim 15, modified O’Neil discloses a thickness of the silicone rubber layer (A) in a stacking direction is 1 to 100 mm (Ogushi, 10 mm ([0016]), a thickness of the silicone layer (B) in the stacking direction is 1 to 100 mm (Ogushi, 90 mm [0016]), and the silicone layer (B) is 0.1 to 10 times as thick as the silicone rubber layer (A) (Ogushi, 90/10 = 9, [0016]).
Regarding claim 16, modified O’Neil discloses as the fire-resistant sheet, a composition having a dense surface, heat-reflecting properties, and excellent fire resistance that does not melt even at high temperatures is suitable (Ogushi [0012]) but does not explicitly disclose the silicone laminate has sufficient fire resistance to retain its shape when burned with a gas burner for 5 minutes.
It would have been obvious to one of ordinary skill in the art to provide the battery of modified O’Neil with the silicone laminate has sufficient fire resistance to retain its shape when burned with a gas burner for 5 minutes, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 17, modified O’Neil discloses the silicone laminate has flame retardance as well as the fire resistance(Ogushi [0012], [0018], [0023]), but does not explicitly disclose is classified as 5VB in a vertical burning test under a UL 94 standard.
It would have been obvious to one of ordinary skill in the art to provide the battery of modified O’Neil with the silicone laminate is classified as 5VB in a vertical burning test under a UL 94 standard, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 18, modified O’Neil discloses the silicone sponge layer (B1) is an independent foam with an expansion ratio of 2 to 15 times (Ogushi [0022]) which overlaps the claim range of 1.2 to 3 times, thus reading on the limitation.
Modified Ogushi is explicitly silent to the claim range however “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). MPEP 2144.05.
Regarding claim 19, modified O’Neil discloses the fire-resistant coating 13 preferably has both the properties of an insulating material with insulating properties and the properties of a fire-resistant sheet with high mechanical strength, large elongation, high flammability, and heat-shielding properties(Ogushi [0012]) but does not explicitly disclose a compressive strength of the silicone laminate is 1 to 30 N/mm2 when the silicone laminate is compressed to 50%.
It would have been obvious to one of ordinary skill in the art to provide the battery of modified O’Neil with a compressive strength of the silicone laminate is 1 to 30 N/mm2 when the silicone laminate is compressed to 50%, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
11. Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Neil et al. (US 2018/0223070) as cited in IDS dated 5/11/23 in view of Ogushi et al. (JPH11247326A) with citations from machine translation provided with this Office Action further evidenced by Hayashida et al. (US 2016/0369143) as applied to claim 11 above, and further in view of Hara et al. (JPH0569511A) with citations from machine translation provided with this Office Action, further in view of Yoneda et al. (US 5,857,136).
Regarding claim 14, modified O’Neil discloses a laminate of a hardened foaming silicone rubber composition 14 and a hardened non-foaming silicone rubber composition 16 (Ogushi, abstract, Fig. 1) but does not explicitly disclose the silicone rubber layer (A) has an Asker A hardness of 40 to 80, and the silicone layer (B) has an Asker C hardness of 30 to 70.
Hara teaches manufacture of silicone composite body (title). Hara teaches a silicone composite is obtained consisting of the cure base phase (silicone gel) of composition (A) and the cured surface protective layer (silicone elastomer or silicone resin) of composition (B) ([0017]). Hara teaches the term “elastomer” refers to a cured product having a rubber hardness in the range of more than 0 and less than 100 as measured by an A-type spring hardness tester according to JIS K-6301 ([0020]).
Yoneda teaches belt transport device and belt fixing device (title). Yoneda teaches the fixing roller/drive roller 941 comprises a metal core roller 941b formed of sulfur-free composite cutting steel (SUM22) covered by a protective overcoat surface layer 941a of silicone sponge rubber (hardness: ASKER C30.degree.), or the like(Col. 6, lines 57-62).
It would have been obvious to one of ordinary skill in the art to provide the battery of modified O’Neil with the silicone rubber layer (A) has an Asker A hardness of 1 to 100, and the silicone layer (B) has an Asker C hardness of 30 as taught by Hara and Yoneda respectively, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
12. Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Neil et al. (US 2018/0223070) as cited in IDS dated 5/11/23 in view of Ogushi et al. (JPH11247326A) with citations from machine translation provided with this Office Action further evidenced by Hayashida et al. (US 2016/0369143) as applied to claim 11 above, and further in view of Takahashi et al. (US 5,294,373).
Regarding claim 20, modified O’Neil discloses the silicone rubber layer (A) is vulcanized with peroxide (Ogushi [0017]) but does not explicitly disclose the silicone layer (B) is vulcanized with peroxide.
Takahashi teaches conductive silicone rubber composition and conductive silicone rubber (title). Takahashi teaches the non-foamable and foamable conductive silicone rubber compositions can effectively employ normal-pressure hot-air vulcanization using an organic peroxide although the compositions are blended with carbon black and the resulting non-foamed and foamed conductive silicone rubbers can preferably be used for many purposes because they are free from surface tack and superior in heat resistance and conductivity(Col. 10, lines 16-24).
It would have been obvious to one of ordinary skill in the art to modify the battery of modified O’Neil with the silicone layer (B) is vulcanized with peroxide as taught by Takahashi in order to provide superior heat resistance and conductivity.
Conclusion
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724