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 Arguments
In response to the amendments filed 9/15/2025, the rejections under 112 have been withdrawn.
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
Applicant primarily argues that the cited references do not disclose the claimed relative humidity range of < 28% in claim 1. Applicant notes that Fisher describes 30% humidity and cites additional evidence from Table 1 of the instant specification showing that relative humidity conditions below 25% produced cured silicone articles with fewer gas bubbles. While Examiner agrees that Fisher does not describe < 28%, after further search and consideration, He is cited which discloses relative humidity conditions as low as 20%.
Claim Rejections - 35 USC § 103
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.
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.
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.
Claims 1, 4-5, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher (WO2014075073, made of record on the IDS dated 8/15/2023) modified by He (CN 107974089, see English translation provided with the IDS dated 8/15/2023.)
Regarding claim 1, Fisher meets the claimed, A method for reduction of gas bubble entrapment in bulk cured room temperature condensation curable silicone compositions, (Fisher [0029] describes room-temperature condensation curable silicone) the method comprising: controlling the relative humidity to provide an atmosphere in which to cure the composition having a relative humidity of X %, and at least initially curing the composition in the controlled atmosphere for a predetermined time or until no gas bubbles remain visible in the composition (Fisher [0029] discloses the process for curing includes exposing the silicone to a relative humidity of 30% to cure for 0.5-72 hours.)
Fisher [0029] does not disclose a step of applying the silicone onto a substrate but another portion of Fisher meets the claimed, applying a predefined volume of a bulk cured room temperature condensation curable silicone composition onto or into a target substrate; (Fisher [0016] describes the curable silicone composition should be deposited on an optoelectronic element.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the curing method described in Fisher [0029] with a step of applying the silicone on a substrate in order to form an encapsulant on the optoelectronic element, see Fisher [0005] and [0016].
Fisher describes a relative humidity value of 30% which is just outside the claimed range, wherein X has a value in the range of 0 < X <28%.
Analogous in the field of silicone compositions, He meets the claimed, wherein X has a value in the range of 0 < X <28% (He [0057] describes a first pre-curing step of a silicone composition occurs at a relative humidity of 20-90%.) Since the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists.
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the humidity disclosed in Fisher for the humidity disclosed in He in order to control the amount of moisture in the environment to further control the hydrophobicity of the final product, see He [0057].
Regarding claim 4, He further the claimed, The method in accordance with claim 1, wherein the relative humidity X has a value in the range of 0 <X <25% (He [0057] describes a first pre-curing step of a silicone composition occurs at a relative humidity of 20-90%.) Since the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists.
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the humidity disclosed in Fisher for the humidity disclosed in He in order to control the amount of moisture in the environment to further control the hydrophobicity of the final product, see He [0057].
Regarding claim 5, Fisher meets the claimed, The method in accordance with claim 1, wherein the cure temperature is from 0°C to 30°C, optionally is at room temperature (Fisher [0029] describes room temperature to 150°C, however, Fisher [0029] also explains that the temperature can be optimized in order to optimize the curing rate of the polymer. Therefore, it would be obvious to modify the temperature of Fisher to be within the claimed range.
Regarding claim 9, The method in accordance with claim 1, which is vacuum-free (Fisher [0029] does not describe a vacuum in the specific curing steps as described in claim 1.)
Regarding claim 10, Fisher meets the claimed, The method in accordance with claim 1, wherein after at least initially curing the composition, a remainder of the cure process takes place at standard room temperature and relative humidity (Fisher [0029] describe room temperature and 30% humidity which is considered within the standard relative humidity) or is accelerated by increasing the room temperature and relative humidity (Fisher [0029] also describes the temperature and humidity can be increased during curing.)
Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher modified by He as applied to claim 1 above, and further in view of Suzuki (JP2016066736A, see translation provided.)
Regarding claim 2, Fisher meets the claimed, The method in accordance with claim 1, comprising: reducing the relative humidity in the headspace to X % (Fisher as modified by He discloses humidity within the claimed range. He does not explicitly describe “reducing” the relative humidity but does disclose that the humidity should be controlled. It would have been obvious to a person of ordinary skill in the art before the filing date that in order to maintain the relative humidity within the disclosed range of He, that the relative humidity would need to be either increased, decreased, or maintained. It would have been further obvious to select decreasing the humidity from the possible methods of altering the humidity in the case where the humidity needs to be lowered in order to reach the desired amount, see MPEP §2143.
Fisher and He do not disclose that the silicone is enclosed during curing and do not meet the claimed, (i) enclosing the composition with a cover, which cover has an inner surface such that a headspace is formed between the composition and the inner surface of the cover; and (ii) introducing a dry gaseous blanket into the headspace.
Analogous in the field of condensation curing silicone, Suzuki also describes forming a laminated component including a step of curing condensation curing silicone and meets the claimed, (ii) enclosing the composition with a cover, which cover has an inner surface such that a headspace is formed between the composition and the inner surface of the cover; and (iii) introducing a dry gaseous blanket into the headspace (Suzuki Example 2 describes placing a laminated structure coated with silicone into a chamber and controlling the atmosphere and humidity (gas blanket) at a particular temperature and relative humidity during curing.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the curing process of Fisher with the curing in a chamber under a controlled atmosphere as described in Suzuki in order to control the curing conditions, see Suzuki Example 2.
Regarding claim 8, Fisher does not explicitly describe the atmosphere and does not explicitly meet the claimed, The method in accordance with claim 2, wherein the dry gaseous blanket is dry air or dry nitrogen.
Suzuki meets the claimed, The method in accordance with claim 1, wherein the atmosphere comprises dry air or dry nitrogen (Suzuki Example 1 describes curing a silicone resin in an air oven.)
The courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of curing the silicone described in Fisher with the method of curing the silicone in air as described in Suzuki because it is a known method of successfully curing the silicone, see Suzuki Example 1.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fisher, He, and Suzuki as applied to claim 2 above, and further in view of Takase (US20070132135, made of record on the IDS dated 8/15/2023.)
Regarding claim 3, NONE OF Fisher, He, or Suzuki describe a film or any shaping steps of a film and do not meet the limitations of claim 3.
Takase also describes using silicone to seal an electronic component. Takase describes using a film, adding the silicone to the film, and sealing the electronic component and meets the claimed, The method in accordance with claim 2, wherein step (i) is achieved as follows: (i)(a) draping a film (2) over a mold (4) comprising two or more predefined shapes (6) to establish an evacuatable volume (8) between the film (2) and each predefined shape (6) in the mold (4); (Takase [0042] and Figures 3-5 show a film 7 draped over a bottom piece 3 of a die having a number of cavities 5) (i)(b) applying suction to the evacuatable volume (8) between a first predefined shape (6a) of the mold (4) and the film (2) to establish an at least partial vacuum within the evacuatable volume (8) of the first predefined shape (6a), such that the film (2) forms a filmic inner lining conforming to the first predefined shape (6a) of the mold (4); (Takase [0056] describes operating a vacuum pump to attract the film 7 towards the cavities 5 and to cover the entire surface of the cavities 5) (i)(c) additionally, applying suction to the evacuatable volume (8) between a second predefined shape (6b) of the mold (4) and the film (2), which second predefined shape (6b), is adjacent to the first predefined shape (6a), to also establish an at least partial vacuum within the evacuatable volume of the second predefined shape (6b) and consequently also forms a filmic inner lining conforming to the second predefined shape (6b) of the mold (4); (i)(d) sequentially repeating step (i)(a) to (i)(c) until each predefined shape (6) in the mold has an at least partial vacuum within the evacuatable volume (8) thereof and the film (2) forms a filmic inner lining conforming to each respective predefined shape (6) of the mold (4); (Takase [0056] describes operating a vacuum pump to attract the film 7 towards the cavities 5 and to cover the entire surface of the cavities 5 and conform to the shape of the die bottom piece 3) and (i)(e) introducing bulk cured room temperature condensation curable silicone composition onto the filmic inner lining conforming to one or more predefined shapes (6) of the mold (4), which composition is designed to flow sufficiently to conform to the predefined shape (6) in the mold (4) into which it has been introduced (Takase [0040] and [0062] describes applying a transparent resin 17, such as silicone, into the film 7 having the cavities.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of encapsulating an electronic component as described in Fisher and Suzuki with the method of creating a film with cavities and applying the silicone encapsulant on the film as described in Takase in order to enhance releasability between the die and the molding resin by providing a film and prevent voids when curing the resin, see Takase [0010] and [0065].
Claims 6-7 rejected under 35 U.S.C. 103 as being unpatentable over Fisher as modified by He as applied to claim 1 above, and further in view of Gubbels (US 2018/0009951, made of record on the IDS dated 11/20/2024)
Regarding claim 6, Fisher does not disclose a titanium or zirconium catalyst and does not meet the claimed, The method in accordance with claim 1, wherein the bulk cured room temperature condensation curable silicone composition is a 2-part condensation cure composition comprising a titanium-based catalyst and/or a zirconium-based catalyst.
Analogous in the field of curable silicone compositions, Gubbels meets the claimed, The method in accordance with claim 1, wherein the bulk cured room temperature condensation curable silicone composition is a 2-part condensation cure composition comprising a titanium-based catalyst and/or a zirconium-based catalyst (Gubbels [0079] discloses a two part mixture for a silicone composition including tetra n-butyl titanate, see also [0030]-[0031].)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the composition of Fisher with the composition of Gubbels including the titanate catalyst in order to increase the curing rate, see Gubbels [0030].
Regarding claim 7, Fisher does not meet the claimed, The method in accordance with claim 1, wherein the bulk cured room temperature condensation curable silicone composition comprises: (i) at least one condensation curable silyl terminated polymer having an average of at least 1.5, optionally an average of at least 2 hydroxyl functional groups per molecule; (ii) a cross-linker selected from the group of silanes having at least 2 hydrolysable groups, optionally at least 3 hydrolysable groups per molecule; and/or silyl functional molecules having at least 2 silyl groups, each silyl group containing at least one hydrolysable group; and (iii) a condensation catalyst selected from the group of titanates and zirconates; wherein: the molar ratio of hydroxyl groups to hydrolysable groups is between 0.1:1 to 4:1; and the molar ratio of M-OR functions to the hydroxyl groups is from 0.01:1 and 0.6:1, where M is titanium or zirconium and R is an alkyl group.
Gubbels also describes a room temperature curable silicone compound and meets the claimed, The method in accordance with claim 1, wherein the bulk cured room temperature condensation curable silicone composition comprises: (i) at least one condensation curable silyl terminated polymer having an average of at least 1.5, optionally an average of at least 2 hydroxyl functional groups per molecule; (Gubbels [0079] describes a composition with hydroxydimethyl silyl terminated polydimethylsiloxane) (ii) a cross-linker selected from the group of silanes having at least 2 hydrolysable groups, optionally at least 3 hydrolysable groups per molecule; and/or silyl functional molecules having at least 2 silyl groups, each silyl group containing at least one hydrolysable group; (Gubbels [0079] describes bis(trimethoxysilyl)hexane which is a silyl functional molecule with two silyl groups and each having multiple hydrolyzable groups) and (iii) a condensation catalyst selected from the group of titanates and zirconates; (Gubbels [0079] describes tetra n-butyl titanate) wherein: the molar ratio of hydroxyl groups to hydrolysable groups is between 0.1:1 to 4:1; (Gubbels describes hydroxydimethyl silyl terminated polydimethylsiloxane and bis(trimethoxysilyl)hexane) and the molar ratio of M-OR functions to the hydroxyl groups is from 0.01:1 and 0.6:1, where M is titanium or zirconium and R is an alkyl group (Gubbels [0030] describes ratios that meet the claim.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the composition in Fisher with the composition in Gubbels including the polymer, cross-linker, and catalyst because the three components work together to cure at room temperature and be more resistant to contaminants, see Gubbels [0013].
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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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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