DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 1 to 4 are 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.
It is confusing to state that “m” is a positive number and can be 0, as the latter is
not a positive number. For claim interpretation this language is being considered as including m values of 0, as such a siloxane is shown in the specification (paragraph 42).
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 1 to 4 are rejected under 35 U.S.C. 103 as being unpatentable over Otomo et al. 8,999,485 in view of Kato et al. 2018/0134871.
Otomo et al. teach a silicone rubber composition that contains components that
either anticipate or render obvious each of claimed (A) to (E).
See column 6, lines 8 and on, which teach claimed component (A).
See column 6, lines 17 and on, which teach claimed (B).
See column 6, line 22, which teaches claimed (C).
Each of these claimed components are fully anticipated by Otomo et al. See column 9, line 17, which teaches an amount (C) as claimed as well as the amounts of SiH siloxane found in the various working examples which meet that claimed.
For component (D), see column 6, lines 29 to 34, as well as column 11, lines 4 to 17.
For component (E), see column 6, lines 23 to 28, as well as column 10, lines 3 to 24.
Both of these components are present in amounts as claimed. As such, the only difference between claimed (A) to (E) and Otomo et al. is that Otomo et al. do not teach a specific repeating number, corresponding to claimed “n” or “p”.
Note that column 9, line 62, and column 10, line 44, teaches viscosity ranges that
embrace siloxanes having “n” and “p” values within the claimed range. For instance the lower viscosity for the corresponding (E) component is 10 mPa.s which corresponds to, roughly, a “p” value of 15 (for a polydimethylsiloxane having terminal trimethylsiloxy groups. As such it is clear that “p” values of 2 to 600 fall within the prior art range.
The lower viscosity of the corresponding (D) component is 10 mPa.s and a polymethylphenylsiloxane having an “n” value of 19 corresponds to a viscosity of around 500 mPa.s. As such it is clear that “m+n” values within the claimed range fall within the prior art range.
The above establishes the clear obviousness of claimed components (A) to (E). The Examiner draws additional attention to the working examples which are also clear evidence of the obviousness of these components in combination.
As such this obvious composition differs from that claimed in that it does not specifically teach the claimed component (F).
Kato et al. teach a silicone rubber composition that is analogous art with both the instant claims and Otomo et al. Starting in paragraph 33 this teaches the addition of a benzotriazole derivative that meets claimed (F). See formula (I) and compare to claimed formula (3). Such a compound is added to the silicone rubber to reduce compression set. See also paragraph 38 which teaches appropriate amounts of this additive to give the optimal results.
As such one having ordinary skill in the art would have found it obvious to include the benzotriazole additive in Kato et al. to the composition in Otomo et al. in an effort to take advantage of the known benefits and properties thereof. This is true particularly in view of the fact that Otomo et al. specifically teach the addition of agents that improve compression set (column 12, line 14). In this manner claim 1 is rendered obvious.
For claim 2, see component (B) in column 6, line 16, of Otomo et al. which meets this requirement.
For claim 3, see column 16, lines 47 to 54, which teaches this JIS testing method for compression set and note that column 14, line 7, teaches a compression set of not more that 35%. Also note that the working examples show a compression set within this claimed range.
For claim 4, the Examiner acknowledges that this property is not specifically disclosed by Otomo et al. but Otomo et al. is concerned with the elongation of the poly-mer prepared therein. See for instance column 16, lines 47 to 55, and column 6, line 35-41.
On one hand Otomo et al. is clearly concerned with elongation properties for the silicone rubber composition therein such that this provides the skilled artisan with motivation to optimize the elongation properties in an effort to produce an optimal and useful final product.
On the other hand, elongation at break is a property that is inherently present in the claimed composition such that one having ordinary skill would have reasonable expected the obvious composition of Otomo et al. to possess the same properties. This is true in view of the fact that the prior art composition of Otomo et al. possesses other inherent physical properties (for instance compression set) of the claimed composition.
Claim 1 to 5 are rejected under 35 U.S.C. 103 as being unpatentable over Otomo et al. 8,999,485 in view of Kato et al. 2018/0134871 further in view of WO 2018/198830 (cited by applicants) as interpreted by the English language equivalent 2021/0108079, Hara et al.
The teachings in Otomo et al. and Kato et al. were discussed supra. As noted therein Otomo et al. fail to specific teach a phenyl siloxane meeting claimed (D) though the general teachings embrace such a siloxane. As can be seen in column 10, line 49, this siloxane bleeds out of the silicone rubber to reduce tack and improve handling.
Hara et al. teach a silicone rubber composition that contains a phenyl siloxane that does meet claimed (D) in both claims 1 and 5. See paragraphs 55 and 56. Paragraph 53 teaches that this siloxane bleeds easily to the surface.
One having ordinary skill in the art would have been motivated by the teachings in Hara et al. to include such a phenyl siloxane as the phenyl siloxane in Otomo et al. with a reasonable expectation of obtaining predictable results. Applicants appear to be using a known siloxane in a known siloxane composition in an effort to obtain the known benefits and properties thereof. In this manner the difference regarding component (D) is rendered obvious.
The Examiner relies on the reason of record cited supra for the obviousness of claimed components (E) and (F) and the requirement of claim 2.
For claims, again note that supra regarding the fact that Otomo et al. meet the requirement of claim 3 for compression and the obviousness of the limitation in claim 4.
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.
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/MARGARET G MOORE/Primary Examiner, Art Unit 1765