CTNF 18/269,276 CTNF 69529 DETAILED ACTION Claim Rejections - 35 USC § 103 07-20-aia AIA 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 rejections below are maintained from the previous office action. Applicants’ response has been considered but is not deemed persuasive, for reasons noted below. 07-21-aia AIA Claim s 1, 2, 4 to 7 and 9 to 20 are rejected under 35 U.S.C. 103 as being unpatentable over O’Neil 2018/0223070 in view of Clariant Exolit™ AP 462 datasheet . O’Neil teaches a silicone rubber which is used as battery cell casing. See para- graphs 68 to 84. This includes a siloxane having at least two alkenyl groups, a siloxane having at least two SiH groups and a hydrosilylation catalyst. This meets three of the four required components in claim 1. This differs from that claimed in that it does not teach the flame retardant in claim 1. One having ordinary skill in the art would recognize the necessity and desirability of having high flame resistance in the silicone rubber composition of O’Neil in view of its intended use as a casing for electronics, particularly battery cells. As such one having ordinary skill in the art would have been motivated to add a known and commercially available flame retardant to the composition thereof in an effort to take advantage and the known benefits and properties thereof. To this end the skilled artisan would have found it obvious to add Exolit™ AP 462 to the composition of O’Neil. It is prima facie obvious to add a known ingredient to a known composition for its known function. In re Lindner 173 USPQ 356; In re Dial et al 140 USPQ 244. Note that page 8, line 4 of applicant’s specification teaches that Clariant Exolit™ AP 462 meets the claimed phosphorus containing flame retardant. In this manner claim 1 is rendered obvious. The Examiner recognizes that O’Neil teaches other components that function as flame retardants such as ATH and wollastonite (paragraphs 118 -120). These release water upon heating. It would be beneficial to have a flame retardant that functioned at lower temperatures and possessed different features. Additionally it is quite common to employ a mixture of different flame retardants in a single composition in an effort to take advantage of the benefits and specific properties associated with each. For instance, Exolit™ AP 462 also has good smoke and toxicity results and has minimal solubility (see product sheet). As such the presence of these components found in O’Neil do not detract from the obviousness of adding the Exolit compound. For claim 2, note that paragraph 55 of O’Neil teaches the same glass bubbles as applicants teach in their specification as being embraced by their claims. Compare O’Neil paragraph 55 to the specification, page 19, lines 27 to 35. Also see the glass beads used in the working examples, paragraphs 195 to 198. For claim 4 and 20 note that the additives noted supra, found in paragraphs 119 and 120, release water. Thus water is present in these additives and meets the require-ment of claim 4. For claim 5 again see paragraphs 118 to 120. For claim 6 note the two part components found in paragraph 127 to 137. The addition of the flame retardant agent Exolit™ AP 462 to either component would have been obvious since it does not make of different in the final outcome which package it is in. Additionally, given the fact that there are only two choices, the selection of one of the two would have been obvious. For claims 7 and 9, note that supra for claims 2 and 5 as it presently applies. For claim 10 note that paragraph 126 in O’Neil teaches that the components are present in separate packages. For claims 11 and 17, see paragraph 105 which teaches platinum catalysts. For claims 12 and 18, see paragraphs 77 to 82 and the components used in the working examples, paragraphs 189 to 194. For claim 14, see the results in Table 12, paragraph 221-222. For claims 13 and 19, as noted supra, Exolit™ AP 462 meets this requirement. For claim 15, see paragraph 41 which teaches encapsulated battery cells. For claim 16, while O’Neil does not specifically teach a flame barrier sheet, note that such sheets are known in the art as being present in battery cells for the purpose of slowing the spread of heat, smoke and flames or to prevent thermal runaway. As such the presence of such a known beneficial sheet in the battery cell of O’Neil would have been obvious to the skilled artisan in an effort to improve the fire resistance and/or retardance of the battery cells therein . 07-21-aia AIA Claim s 1, 4 to 6, 9 to 20 are rejected under 35 U.S.C. 103 as being unpatentable over CN 103665891, as interpreted by the English language abstract (provided) in view of Clariant Exolit™ AP 462 datasheet . CN teaches a silicone foam material which comprises a vinyl terminated polydi- methylsiloxanes, a hydrogen containing siloxane oil, a Pt catalyst and a flame retardant. The first three components meet the first three components in claim 1. Regarding the flame retardant, under “preferred components” in the CN reference note that ammonium polyphosphate is disclosed as a flame retardant. This differs from that claimed in that it does not specifically teach that the ammonium polyphosphate is encapsulated. As can be seen from the Clariant Exolit™ AP 462 datasheet, under Benefits, the encapsulated APP can be used in all applications where ammonium polyphosphate is suitable. Given this motivation, one having ordinary skill in the art would have found the use of Exolit™ AP 462 in the CN composition to have been obvious. In this manner claims 1, 11, 13 and 19 are rendered obvious. For claims 4 and 20, the preferred foaming agent B of ethylene glycol, glycerol and/or pentaerythritol meets this requirement. The composition also contains water. For claims 5 and 9 the preferred flame retardant can be present in combination (note the use of and/or) such that one having ordinary skill in the art would have been motivated to include a flame retardant in addition to Exolit™ AP 462. As noted supra, it is common to employ a mixture of different flame retardants in a single composition in an effort to take advantage of the benefits and specific properties associated with each. For instance, Exolit™ AP 462 has good smoke and toxicity results and has minimal solubility (see product sheet) while aluminum hydroxide releases water at higher temps. For claims 6 and 10, note that the composition in CN contains two separate parts containing the same components as this claim and that they are packaged separately and mixed only prior to use. This meets the requirements in these claims. For claims 12 and 18, see under Preferred Components that the vinyl siloxane meets the formula in these claims. Additionally, while the hydrogen containing silicon oil is not specifically disclosed, the Examiner notes that the selection of a well known and extremely common hydrogen containing silicon oil such as a polydimethylsiloxane hav-ing SiH groups, would have been obvious to the skilled artisan, particularly in view of the fact that the OH and vinyl terminated siloxanes are polydimethylsiloxanes. For claim 15, under USE the CN reference teaches that the composition is used as a fire proof silicone foam material for cable and high fire proof sealing structures. As is evident from both applicants’ specification and that which would have been known to the skilled artisan, sealing or encapsulating battery cells with silicones is common. The skilled artisan would have found it obvious to use the silicone foam of the CN reference in such a manner, in an effort to take advantage of the ultra-low density, fire proofing and shock absorption properties thereof. In this manner claim 15 is rendered obvious. For claim 16, note that flame barrier sheets are known in the art as being present in battery cells for the purpose of slowing the spread of heat, smoke and flames or to prevent thermal runaway. As such the presence of such a known beneficial sheet in the obvious battery cell of the CN reference would have been obvious to the skilled artisan in an effort to improve the fire resistance and/or retardance . 07-21-aia AIA Claim s 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over CN 103665891, as interpreted by the English language abstract (provided) in view of Clariant Exolit™ AP 462 datasheet and further in view of “3M Glass Bubbles” product information sheet, attached . While the CN reference teaches a reinforcing filler (see under NOVELTY) this does not specifically teach hollow microspheres as claimed. See the information sheet for glass bubbles from 3M. This teaches benefits of such fillers. For instance they are low density. A feature of the composition of the CN reference is the ultra low-density property. The glass bubbles have other benefits and are used as an alternative to conventional fillers. As such the skilled artisan would have found it obvious to use, as a reinforcing filler, a hollow glass bead such as those discussed in this information sheet in an effort to further enhance the low density and other properties of the foam in the CN reference. In this manner these claims are rendered obvious. As an aside applicants’ specification teaches that the 3M bubbles meet the claim-ed microsphere . Response to Arguments Initially the Examiner notes that applicants did not submit the reference that dis-closes the cited teaching regarding Pt catalyzed reactions and nitrogen or phosphorus containing compounds. See page 8 is the response dated 5/12/26. For the rejection over the O’Neill reference, applicants refer to the paragraph on page 6, lines 21 to 27, which is an extremely broad teaching that is narrowly summariz-ed and interpreted by applicants. The prior art is replete with documents that include nitrogen and/or phosphorous compounds in Pt cured silicone compositions. One can look no farther than the CN document relied upon in the rejections noted in paragraphs 4 and 5 supra for such a teaching. Babcock et al. 5,298,536, teaches ammonium polyphosphate microencapsulated with a melamine polymer (the same flame retardant found in applicants’ claims). See column 5, lines 39 to 47 and Table 1. This is used a Pt catalyzed addition reaction. In fact Lewis et al. (5,015,691) teach encapsulating Pt catalysts in melamine resin. See column 3, lines 15 to 30 and Example 1. The Examiner is not using any of these references in the rejection above, as the obviousness rejection does not require them. Rather these references are used to rebut applicants’ arguments. In view of this the Examiner does not agree with the position that the skilled artisan would not have had a reasonable expectation of success in adding the Exolit flame retardant to the composition of O’Neil et al. Applicants’ reliance on the examples in the specification is not persuasive since a singular comparative example clearly is not representative of the prior art. There are differences between CE1 and Ex. 10 other than the flame retardant selection such that the skilled artisan cannot assume that the flame retardant results in different properties. Similarly the Examiner cannot assume from the fact that only one type of catalyst is used in the Examples that these properties will be comparable for any and all platinum catalysts. In short, this data is not sufficient to render the claims unobvious. Applicants have neither presented a sufficient number of examples such that the skilled artisan can ascertain a trend within the breadth of the claimed composition, nor have they provided a sufficient number of comparative examples such that the skilled artisan can determine unobviousness over the breadth of the prior art. Applicants’ request regarding claim 16 appears disingenuous as applicants’ own company makes thermal (flame) barrier sheets for such a utility. The Examiner would be surprised if applicants did not know of these materials. See for instance – 3M™ Thermal Barrier 5000 Series | 3M United States For the rejection over the CN reference, see above regarding the expectation of success in using amine and phosphorus containing compounds in Pt catalyzed silicone compositions as well as the ineffectiveness of the examples in the specification in over-coming an obviousness rejection. Applicants refer to the presence of a hydroxyl terminated polydimethylsiloxane in the CN working examples. Applicants specification includes inventive compositions that contain such a polydimethylsiloxane and claim 1 uses “comprising” which allows for such a component. Applicants’ position in the last full paragraph on page 11 of the reply is merely guess work that not supported by facts. For claims 15 and 16, applicants are reminded that an obviousness rejection is based on the level of knowledge of one having ordinary skill in the art and the skilled artisan would have realized that sealing or encapsulating battery cells with silicones is common and has been done so for years. The Examiner questions applicants’ sincerity in the traversal of these specific claims, again noting that 3M manufactures barriers for protection of cells in electrical components. Such a utility is also disclosed by the O’Neil et al. reference and in column 1, lines 35 to 39, of 6,486,237 to Howe et al. A quick search on the internet revealed this – PNG media_image1.png 453 853 media_image1.png Greyscale In view of the above, these rejections are maintained. Applicants’ response does make a persuasive argument that claims 3 and 8 were not property rejected in the previous office action. To address these claims the following new grounds of rejection is being made. As such this action cannot be made final. New Grounds for Claim Rejections - 35 USC § 103 07-21-aia AIA Claim s 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over O’Neil 2018/0223070 in view of Clariant Exolit™ AP 462 datasheet and over CN 103665891, as interpreted by the English language abstract (provided) in view of Clariant Exolit™ AP 462 datasheet, both taken further in view of Howe et al. 6,486,237 . The combination of O’Neil and the CN reference, both in view of the Clariant Datasheet, fails to teach hollow polymeric microspheres coated with an inorganic filler. As taught in columns 1 and 2 of Howe et al., filling silicones with hollow micro-spheres is known in the art. Particularly, using elastomeric microspheres in place of glass is has known benefit of improving cushioning. See lines 54 to 58 in column 1. Howe et al. specifically teach using hollow polymeric microspheres that are coated with calcium carbonate. See column 4, lines 15 to 41 as well as the top of column 13. From this one having ordinary skill in the art would have been motivated to include such hollow microspheres in the composition of O’Neil et al. or the CN reference in an effort to take advantage of the benefits and properties thereof. The prior art clearly provides a reasonable expectation of success in such a utility, thereby rendering obvious the instant claims. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Mgm 5/26/26 /MARGARET G MOORE/Primary Examiner, Art Unit 1765 Application/Control Number: 18/269,276 Page 2 Art Unit: 1765 Application/Control Number: 18/269,276 Page 3 Art Unit: 1765 Application/Control Number: 18/269,276 Page 4 Art Unit: 1765 Application/Control Number: 18/269,276 Page 5 Art Unit: 1765 Application/Control Number: 18/269,276 Page 6 Art Unit: 1765 Application/Control Number: 18/269,276 Page 7 Art Unit: 1765 Application/Control Number: 18/269,276 Page 9 Art Unit: 1765
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