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 .
Applicant’s election with traverse of Group 1, Claims 1-9 is acknowledged.
Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
Response to Arguments
Applicant's arguments filed 06/11/2026 have been fully considered but they are not persuasive.
Applicant argues JP H04-89866 fails to describe or suggest the subject matter of amended Claim 1. However, JP H04-89866 renders obvious the shared technical feature as set forth in the rejection below. Therefore, the restriction requirement is still deemed proper and is made final.
Claim Analysis
Summary of Claim 1:
An ultra-thin elastomer sheet being an ultra-thin sheet, which has a maximum film thickness of 3µm and is comprised of a crosslinked silicone polymer in which a silicone polymer configured from a plurality of unit portions having reactive organic groups and a plurality of unit portions not having reactive organic groups is crosslinked by a crosslinking agent having a reaction group that reacts with the reactive organic groups,
wherein the silicone polymer is a polydimethylsiloxane polymer represented by the following chemical formula (1)
[chemical formula (1)]
PNG
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121
444
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wherein, in the chemical formula (I), m is 5828-10727 and n is 28-274,
wherein the crosslinked silicone polymer is defined by the following mathematical formula (I) [mathematical formula (I)]
U= (Um + Un) /Ua ......(I)
where, in mathematical formula (I), U is a number of monomer unit portions between crosslinking points of the crosslinked silicone polymer, Um is a number of monomer unit portions of the silicone polymer that do not have reactive organic groups, Un is a
number of monomer unit portions of the silicone polymer that have reactive organic groups, and Ua is a number of reaction groups of the crosslinking agent used in crosslinking and
wherein the number of monomer unit portions between crosslinking points of the crosslinked silicone polymer is 348-2090.
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 1-3, and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Takaai et al. (JPH0489866A; cited in the IDS submitted on 09/22/2023; English translation incorporated herein; hereafter as “Takaai”).
Regarding Claims 1-2, 7, Takaai teaches a method of making an elastomer sheet, comprising a silicone rubber composition, that is capable of forming a thin film [Page 10, ¶ 1; Page 11, ¶ 1], corresponding to the thin elastomer sheet of Claims 1, comprising:
Crosslinking an organopolysiloxane comprising aliphatic unsaturated groups and unsubstituted monovalent hydrocarbons [Claim 1; Pages 4-5], wherein the crosslinked organopolysiloxane corresponds to the crosslinked silicone polymer of Claim 1;
wherein the aliphatic unsaturated groups are methyl(vinyl)siloxane units [see Takaai et al., JPH0489866A (original document), Page 3, top of right column, structure (e)], which corresponds to the plurality of unit portions having reactive organic groups of Claim 1, and corresponding to the reactive organic groups on side chains of a linear silicone polymer of Claim 2;
and wherein the unsubstituted monovalent hydrocarbons are dimethylsiloxane units [see Takaai et al., JPH0489866A (original document), Page 3, top of right column, structure (d)], which correspond to plurality of unit portions not having reactive organic groups of Claim 1;
Organohydrodiene polysiloxane with -SiH functional groups that act as crosslinking functional groups that react with the aliphatic unsaturated group in the organopolysiloxane [Pages 4-5], corresponding with the crosslinking agent having a reactive group that reacts with the reactive organic groups of Claim 1, and corresponding to wherein reaction groups of the crosslinking agent are hydrosilyl groups of Claim 7;
Wherein the organopolysiloxane is a polydimethylsiloxane with vinyl-sealed ends [see Takaai et al., JPH0489866A (original document), Page 3, top of right column, structure (d)], which corresponds to wherein the silicone polymer is a polydimethylsiloxane polymer with vinyl end groups chemical formula (1) of Claim 1.
However, Takaai does not explicitly teach a maximum film thickness off 3 µm of Claim 1, wherein m is 5828-10727, and n is 28-274 of Claim 1, wherein the crosslinked silicone polymer is defined by mathematical formula (I) of Claim 1, and all the claimed ingredients together in one embodiment in Claim 1.
Regarding the maximum film thickness off 3 µm , although the “thickness of 3 µm” is a discrete element of the claimed article, this is not a design application but a utility application with all claims directed to articles or products of manufacture. Therefore, the “thickness of 3 µm” is merely a size of the large underlying article. There is no evidence that maximum thickness of 3 µm has any mechanical function in relation to the underlying article. Thus, it is the Examiner’s position that the thickness of the elastomer sheet being less than 3 µm relates only to matters of ornamentations or aesthetic design and the particular size affixed to the claimed article does not patentably distinguish this article from that of the prior art. It would have been obvious for one of ordinary skill in this art to provide the elastomer sheet in the references cited in the 103 rejections above with a corresponding size. Therefore, an elastomer sheet in the size of less than 3 µm would be an obvious design choice.
Regarding the m-, and n-values, and wherein the crosslinked silicone polymer is defined by mathematical formula (I):
Takaai further teaches if the molar ratio of -SiH groups to aliphatic unsaturated groups is too low, it can cause foaming and lead to undesirable results such as a decrease in heat resistance [Page 7, ¶ 1]. Here, the number of aliphatic unsaturated groups corresponds to the Un-values of Claim 1. Takaai also teaches if the relative amount of aliphatic unsaturated groups is too high, the crosslinking density may increase too much which can lead to the disadvantage of reduced elongation of the cured product [Page 4, ¶ 1]. On the other hand, Takaai also teaches if the relative amount of aliphatic unsaturated groups is too low, the crosslinking density may decrease too much which can lead to reduced rubber strength of the cured product [Page 4, ¶ 1]. Therefore, Takaai teaches the relative amount of aliphatic unsaturated groups, and thus, the relative m-, n-, Um-, Un-values can be optimized to reach the desired mechanical properties of the final cured product.
Takaai also teaches the catalyst promotes the addition reaction of the organopolysiloxane and organohydrodiene polysiloxane [Page 7, ¶ 1], which directly correlates with the number of reaction groups of the crosslinking agent that are used in crosslinking, which corresponds with the Ua-value of Claim 1. Therefore, Takaai teaches the Ua- values can be optimized to reach the desired level of polymerization of the final cured product.
Thus, Takaai teaches the relative portions of the silicone polymer and crosslinking agent monomer units can be optimized to reach the desired thermal resistance properties of the final cured product. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the values of m, n, mathematical formula (I) for the intended application and thermal properties via a routine optimization, thereby obtaining the present invention.
Regarding teaching all the claimed ingredients in one embodiment, Takaai teaches the thin elastomer sheet, silicone polymer with reactive organic groups and non-reactive organic groups, and crosslinking agent with a reactive group that reacts with the reactive organic groups with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” all the claimed ingredients as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claim 3, Takaai further teaches wherein the aliphatic unsaturated groups are vinyl groups [Page 5, ¶ 1; Page 8, ¶ 1], corresponding to wherein the organic reactive groups are vinyl groups of Claim 3.
Regarding Claims 5-6, Takaai teaches the organohydrodiene polysiloxane crosslinking agent has a linear molecular structure [Page 7, ¶ 2], corresponding to wherein the crosslinking agent is a linear silicone compound of Claim 6.
However, Takaai does not explicitly teach wherein the crosslinking agent has a lower molecular weight than that of the silicone polymer of Claims 5-6, and wherein the crosslinking agent has reaction groups on side chains of Claim 6.
Nevertheless, Takaai teaches the organohydrodiene polysiloxane crosslinking agent preferably has a relatively low molecular weight of 30,000 or less for ease of production [Page 8, ¶ 1], and the organopolysiloxane can have a high molecular weight [Page 5, ¶ 1]. This implies the crosslinking agent can have a lower molecular weight than that of the silicone polymer, which for the purposes of examination will read on wherein the crosslinking agent has a lower molecular weight than that of the silicone polymer of Claims 5-6.
Furthermore, Takaai further teaches that the organohydrodiene polysiloxane may have any structure, including a branched structure, as long as there are two or more SiH groups in the molecule [Pages 7-8], which implies the organohydrodiene polysiloxane may have -SiH reaction groups on the side chains, thereby reading on wherein the crosslinking agent has reaction groups on side chains of Claims 6 and 15.
Regarding Claim 8, Takaai further teaches the organohydrodiene polysiloxane preferably has two or more -SiH groups [Pages 7-8], (wherein the number of -SiH groups corresponds with the p-variable of chemical formula (2), and in this case is equivalent to p = 2), which overlaps with p is 6-9 of Claim 8. Takaai also teaches if too few -SiH groups are used, the degree of crosslinking will be insufficient [Page 8, ¶ 1].
However, Takaai does not explicitly teach the crosslinking agent of chemical formula (2) has p = 6-9 units of methylsiloxane and q = 16-19 units of dimethylsiloxane of Claim 8.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Takaai for the p-variable (p≥2) overlaps the instantly claimed range (p=6-9) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Furthermore, Takaai teaches the number of -SiH groups of the crosslinking agent can control the degree of crosslinking, which implies the amount of -SiH groups per crosslinking agent molecule, which corresponds with the q-variable of chemical formula (2), can be optimized to reach the desired crosslinking properties of the final cured product. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the q-variable for the intended application and mechanical properties via a routine optimization, thereby obtaining the present invention.
Regarding Claim 9, Takaai teaches the silicone rubber composition produces a cured product with high elongation [Page 11, ¶ 1] and the elongation is a function of the cured product’s crosslinking density [Page 5, ¶ 1].
However, Takaai does not explicitly teach an elongation rate of the ultra-thin elastomer sheet is at least 150% of Claim 9.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Takaai for the high elongation overlaps the instantly claimed range (≥150%) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Furthermore, the elongation properties of the cured product are functions of the ingredients of the silicone rubber composition and the crosslinking density of the composition. Since Takaai teaches the same cured product formed by the same silicone rubber composition as required by the instant claim, as set forth in the rejection above, the resin composition of Takaai would be expected to result in the same elongation rate as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, Takaai teaches the silicone rubber composition produces a cured product with high elongation. Furthermore, it would have nonetheless been obvious to the skilled artisan to produce the claimed silicone rubber composition elongation properties, as the reference teaches each of the claimed ingredients (silicone polymer and crosslinking agent) for the same utility (making a cured silicone rubber composition) and for the same purpose (producing a thin elastomer sheet).
Claims 1-3, and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Mitani et al. (US 2013/0069106 A1; hereafter as “Mitani”).
Regarding Claims 1, 3, 7, Mitani teaches a silicone resin sheet [Abstract; Claim 1], which corresponds with the elastomer sheet of Claim 1, comprising:
Crosslinked organopolysiloxane, such as vinyl-terminated dimethylsiloxane-methyl(vinyl)siloxane copolymer (hereafter as “the copolymer”) [¶ 0032, 0038], which corresponds to the crosslinked silicone polymer of Claim 1,
Wherein the copolymer corresponds to the polydimethylsiloxane polymer represented by chemical formula (1) of Claim 1;
Wherein the methyl groups of the dimethylsiloxane units correspond to the not reactive organic groups of Claim 1;
Wherein the vinyl groups of the methyl(vinyl)siloxane units correspond to the reactive organic groups of Claim 1, and to the vinyl groups of Claim 3;
A crosslinking agent with hydrosilyl (-SiH) groups [¶ 0044-0045; Claim 1], corresponding to the crosslinking agent of Claim 1, wherein the -SiH groups correspond to the crosslinking reaction group that reacts with the reactive organic groups of Claim 1, and to the hydrosilyl groups of Claim 7.
However, Mitani does not explicitly teach a maximum film thickness off 3 µm of Claim 1, wherein m is 5828-10727, and n is 28-274 of Claim 1, wherein the crosslinked silicone polymer is defined by mathematical formula (I) of Claim 1, and all the claimed ingredients together in one embodiment in Claim 1.
Regarding the maximum film thickness off 3 µm , although the “thickness of 3 µm” is a discrete element of the claimed article, this is not a design application but a utility application with all claims directed to articles or products of manufacture. Therefore, the “thickness of 3 µm” is merely a size of the large underlying article. There is no evidence that maximum thickness of 3 µm has any mechanical function in relation to the underlying article. Thus, it is the Examiner’s position that the thickness of the elastomer sheet being less than 3 µm relates only to matters of ornamentations or aesthetic design and the particular size affixed to the claimed article does not patentably distinguish this article from that of the prior art. It would have been obvious for one of ordinary skill in this art to provide the elastomer sheet in the references cited in the 103 rejections above with a corresponding size. Therefore, an elastomer sheet in the size of less than 3 µm would be an obvious design choice.
Regarding the m-, and n-values, and wherein the crosslinked silicone polymer is defined by mathematical formula (I), Mitani also teaches a catalyst that drives the hydrosilylation reaction of the alkenylsilyl group with the hydrosilyl group [¶ 0063], wherein the degree of the hydrosilylation reaction directly correlates with the number of reaction groups of the crosslinking agent that are used in crosslinking, which corresponds with the Ua-value of Claim 1. Mitani further teaches the amount of crosslinker with respect to the amount of copolymer is important for determining the toughness and flexibility of the cured silicone resin sheet [¶ 0041, 0051, 0054]. Here, the amount of crosslinker directly also correlates with the number of reaction groups of the crosslinking agent that are used in crosslinking, which corresponds with the Ua-value of Claim 1, and the amount of copolymer directly correlates with m, n, and (Um + Un) of Claim 1. Therefore, Mitani teaches the m-, n-, Um-, Un-, and Ua-values can be optimized to reach the desired level of polymerization, toughness and flexibility of the final cured product. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the values of m, n, and mathematical formula (I) for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding teaching all the claimed ingredients in one embodiment, Mitani teaches the elastomer sheet, silicone polymer with reactive organic groups and non-reactive organic groups, and crosslinking agent with a reactive group that reacts with the reactive organic groups with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” all the claimed ingredients as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claim 2, Mitani further teaches:
The copolymer can have a straight chain molecular structure [¶ 0038], which corresponds to the linear silicone polymer of Claim 2;
The vinyl groups of the methyl(vinyl)siloxane units of the copolymer can be on a side chain [¶ 0033-0034], which corresponds to the reactive organic groups on side chains of Claim 2.
Regarding Claims 5-6, Mitani further teaches:
The number average molecular weight of the copolymer is preferably 10000 to 10000 [¶ 0040], and the number average molecular weight of the crosslinking agent is preferably 500 to 5000 [¶ 0050], which corresponds to wherein the crosslinking agent has a lower molecular weight than that of the silicone polymer of Claims 5-6;
The crosslinking agent can have a straight chain molecular structure [¶ 0048], which corresponds to wherein the crosslinking agent is a linear silicone compound of Claim 6; and
Wherein the hydrosilyl groups can be in a side chain [¶ 0045], which corresponds with the crosslinking agent has reaction groups on side chains of Claim 6.
Regarding Claim 8, Mitani further teaches:
A crosslinking agent such as trimethylsilyl-terminated dimethylsiloxane-methylhydrosiloxane copolymer [¶ 0048, 0167-0170; Example 1], which corresponds with the crosslinking agent of chemical formula (2) of Claim 8;
Wherein the crosslinking agent preferably has at least two hydrosilyl groups in one molecule [Claim 1], which is equivalent to p ≥ 2, which overlaps with p = 6-9 of Claim 8;
for the purpose of examination, trimethylsilyl-terminated dimethylsiloxane-methylhydrosiloxane copolymer will be interpreted to have has at least one dimethylsiloxane group, which is equivalent to q ≥ 1, which overlaps with q = 16-19 of Claim 8.
However, Mitani does not explicitly teach p is 6-9 and q is 16-19 of Claim 8.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Mitani for the p-, and q-variables (p ≥ 2 and q ≥ 1, respectively) overlap the instantly claimed ranges (p = 6-9 and q = 16-19, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claim 9, Mitani does not explicitly teach an elongation rate of the ultra-thin elastomer sheet is at least 150% of Claim 9.
Nevertheless, the elongation properties of the cured product are functions of the ingredients of the silicone resin composition and the crosslinking properties of the composition. Since Mitani teaches the same cured product formed by the same silicone resin composition as required by the instant claim, as set forth in the rejection above, the silicone resin composition of Mitani would be expected to result in the same elongation rate as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Furthermore, it would have nonetheless been obvious to the skilled artisan to produce the claimed silicone rubber composition elongation properties, as the reference teaches each of the claimed ingredients (silicone polymer and crosslinking agent) for the same utility (making a cured silicone resin composition) and for the same purpose (producing a silicone resin sheet).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Moine et al. (US 2019/0099517 A1) teaches a silicone composition which is crosslinkable by hydrosilylation [Claim 1], comprising:
siloxyl units of formula (B1): (Y)a(Z)bSiO4-(a+b)/2 , wherein Y represents an ethenyl group, Z represents a methyl group, a = 1, and b = 1 [Claim 1];
siloxyl units of formula (B2): (Z)cSiO4-c)/2 ,wherein Z represents an methyl group, and c = 2 [Claim 1]; and
poly( dimethylsiloxane-co-vinylmethylsiloxane [¶ 0083, 0096].
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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