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 .
Election/Restrictions
Applicants’ election of those embodiments of the instant invention for which the film-former is a polyolefin is acknowledged. There will be no assessment of the patentability of the claims as they relate to any of the other film-former embodiments at the present time.
Claim Interpretation
The Examiner had originally considered the naming conventions used by Applicant to identify specific embodiments of the additives confusing, and possibly meriting a 35 USC 112(b) rejection, insofar as commas generally are understood to separate the name of one permutation from the next but, in this instance, they are being employed in the naming of the permutations themselves. It was ultimately concluded that, because each of the names was followed by a Chemical Abstracting Service No., or CAS#, the scope of these claims was knowable notwithstanding the fact that commas are used both to separate different embodiments, but in their naming also.
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 126 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 99 is directed to a composition, not a substrate coated with said composition. Therefore, claim 126, which discloses a spatial orientation of an additive relative to a substrate and a coating layer, is not further limiting of claim 99.
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 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.
Claims 99-133 are rejected under 35 U.S.C. 103 as being unpatentable over Mullaney et al., U.S. Patent Application Publication No. 2003/0199201 in view of Gamarra, U.S. Patent # 4,942,270 and/or Chen, U.S. Patent # 4,369,284.
Mullaney is directed to connector assemblies for telephone line connections (abstract,[0002]) and sealant materials incorporated inside the housing that constitutes an aspect of said assembly. Suitable sealants are generally oil-extended solids that, by virtue of their substantial dilution, acquire the low modulus of gels [0054]. Among the polymer materials of which the gels may be comprised are polysiloxanes, polyurethanes, and, relevant to the present discussion, styrene copolymer gels such as those disclosed in Gamarra ‘270 and Chen ‘284. See [0056].
Applicant is referred to column 2, lines 44-51, column 5, lines 24-40 of Gamarra where the polymer- and oil candidates of the gel are disclosed. See also column 2, lines 8-24 of Chen.
Mullaney further contemplates in [0059] the incorporation of additives anticipatory of the classes of additive set forth in claim 100 including phenol antioxidants, UV stabilizers, colorants, tackifiers, etc.
As for claim 102, the first-named phenol antioxidant is anticipated by the reference’s mention of Irganox™ 1076 as evidenced by the attached data sheet that attaches the same CAS# to this product.
Regarding claim 105, Irgafos™ 168 is the product name of for tris(2,4-di-tert-butylphenyl)phosphite according to an attached product page from Azelis accessible at https://azelislmf-us.com/product/irgafos-168/
As for claims 106, Irganox™ D1024 is the second-named embodiment of a passivator having a CAS# of 32687-78-8 as evidenced by an attached product data sheet from BSAF and a TCI product page that depicts the same compound shown in the BASF data sheet and gives the same CAS# as is attached to the second embodiment of claim 106.
Concerning claim 107, paragraph [0059] also advocates the use of Cyasorb UV-531, which a NIST page for octabenzone verifies is a commercial name for the benzophenone compound.
As for claims 103-104, 108, 110, and 113-114, these claims are unpatentable because, although neither Mullaney nor Gamarra/Chen teach these particular embodiments of an antioxidant, rheology modifier, dispersing agent, leveling agents, or colorant, these are not required components. That is, claim 103, as one example, does not stipulate the presence of amine oxidants but, rather, merely says that where they are present, they will be one of the compounds mentioned within that claim.
Regarding claim 115, at least Chen characterizes the gels as being viscoelastic and, to the extent that the gels of Gamarra are similarly-constituted, they too will exhibit this same property.
There is no apparent source of volatile organic compounds in the prior art composition hence it is the Examiner’s position that it will inherently satisfy the limitation of claim 118.
As for claim 119, claim 99 is directed to a composition “for forming a conformal gel coating to…”, which is statement of intended use. Claim 119 is not further limiting of the composition, but of the conformal gel coating. (Claims 99 and 119, read together, would disclose a composition, “for forming a conformal gel coating has (having) a thickness ranging from…”) A similar treatment applies to claims 126 and 127. To reiterate, claim 99 discloses a composition, not a substrate coated with the composition. That said, insofar as an anticipatory passivator is being added to a gel having equivalent makeup, a skilled practitioner as a reasonable expectation that the former will also migrate to a region between the gel and connector substrate thus satisfying claims 126 and 127.
The background section of the reference makes clear that the role of the gel composition/sealant will be to encapsulate connectors subject to corrosive conditions involving some combination of salt, humidity (water vapor), etc. Accordingly, each of claims 120-123 are rendered unpatentable.
The body of claim 124 defines electrical events that are mitigated by the composition of claim 99 due to its electrical insulation properties. In the Examiner’s estimation, it is not necessary that the reference disclose the prevention of these events (although it may be that the nature of the failure mentioned in [0002] between connectors once corroded is, in fact, arcing/current leakage). Rather, the prior art sealants need only be capable of mitigating these events when utilized in the manner claimed. To the extent that the gels taught by Gamarra and Chen, in combination with the additives contemplated by Mullaney, are patentably indistinct from those set forth in claim 1, it is the Examiner’s position that they are indeed capable of mitigating the aforementioned electrical events.
Claim 109 and 111 are rejected under 35 U.S.C. 103 as being unpatentable over Mullaney et al., U.S. Patent Application Publication No. 2003/0199201 in view of Gamarra, U.S. Patent # 4,942,270 and/or Chen, U.S. Patent # 4,369,284 as applied to claims 99-133 above, and further in view of Watanabe et al., JP 2008-189763.
Mullaney mentions the employment of tackifiers as a general class of additive but does not volunteer any specific embodiments. In the absence of any indication as to what may be suitable in this regard, a skilled artisan would consult the related literature to ascertain what materials have utility as tackifiers for styrene-based block copolymer coatings and, even better, those styrene block copolymers that are taught in the context or protective/water-based coatings for electronic devices. One such reference in the same field of endeavor is Watanabe. This disclosure describes a paint for electronic components where styrene-based block copolymers, including SEBS, are blended with a tackifying resin, and solvent [0006,0009]. The tackifiers may be petroleum- or rosin-based with alicyclic- and hydrogenated petroleum resins being listed among the former [0013]. The role of the tackifier is to enhance both the moisture resistance and adhesion of the coating according to [0016-0017] and one of ordinary skill would be motivated to utilize those advocated by Watanable in the practice of the invention to Mullaney to realize the same benefits.
As an aside, while Mullaney doesn’t expressly mention coupling agents, also known as adhesion promoters, in the list of suitable additives outlined in [0059], one of ordinary skill is motivated by Watanable to also include a silane according to the teachings at [0021-0023] to improve further adhesion/moisture resistance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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August 24, 2026
/MARC S ZIMMER/Primary Patent Examiner Art Unit 1765
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