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 .
Claim Objections
Claim 9 is objected to because of the following informalities: “inhibitors” should not be capitalized in Claim 9.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 14 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 because:
There is a lack of antecedent basis for the “which unsaturated groups” recited in line 4 of Claim 1. It is unclear to which of the previously recited “at least two” unsaturated groups this phrase refers. For the purposes of examination, “which unsaturated groups” will be interpreted as referring to said “at least two” unsaturated groups.
There is a lack of antecedent basis for “the gaseous blowing agent” recited in steps (d) and (e) and “the” blowing agent recited in both instances in step (f) of Claim 1, as well as “the” blowing agent recited in Claims 3 and 4. It is unclear if these phrases refer to the initially recited “the at least one non-flammable, inert, or non-flammable and inert blowing agent which is gaseous at 0°C and atmospheric pressure”. For the purposes of examination, the aforementioned phrase will be interpreted as referring to said “the at least one non-flammable, inert, or non-flammable and inert blowing agent which is gaseous at 0°C and atmospheric pressure”.
As Claims 2 and 5 – 14, ultimately depend on Claim 1, they inherit the deficiencies thereof and are also therefore rejected under this statute.
Additionally, there is a lack of antecedent basis for “the curable silicone foam composition” recited in Claim 6 and “the resulting curable silicone foam composition” and “the silicone foam composition” in Claim 8. The claims do not recite a curable silicone foam composition prior to these phrases. For the purposes of examination, these phrases will be interpreted as referring to said foaming curable mixture.
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 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over JPH 08259720 to Yoneyama et al. (hereinafter Yoneyama). For the purposes of examination, citations for Yoneyama are taken from a machine translation of the document obtained from the European Patent Office website in June 2026.
Regarding Claims 1, 3, and 4. Yoneyama teaches a continuous method for forming a silicone foam [0006]. In this method, a main component and curing agent component, i.e. a multi-part silicone foam composition, are provided [0009]. Said multi-part composition comprises:
an organopolysiloxane having at least two alkenyl groups having a viscosity of 100 to 200,000 cSt at 25°C [0010], i.e. a polydiorganosiloxane having a viscosity corresponding to roughly 100 to 200,000 mPa∙s at 25°C and at least two unsaturated groups which are alkenyl groups and which therefore corresponds to instant claimed component (i);
an organohydrogensiloxane having at least two hydrogen atoms directly bonded to a silicon atom [0014], corresponding to instantly claimed component (ii); and
a platinum group metal catalyst which has the effect of promoting the addition/hydrosilylation reaction between components (A) and (C) [0016], corresponding to instantly claimed component (iii).
The multi-part silicone foam composition comprises a main component that is a mixture of component (C) with component (A) [0009], corresponding to the instantly claimed part A composition comprising components (i) and (iii); and a curing agent composition that is a mixture of component (B) with component (A) [0009], corresponding to the instantly claimed part A composition comprising components (i) and (ii).
Yoneyama teaches the method comprises the steps of introducing the main component/part A and the curing agent component/Part B into respective tanks/mixing containers. Parts A and B are respectively transported quantitatively, i.e. at a predetermined rate, to a mixing chamber having a dispensing valve ([0023] and [0031]). The gas is also injected at a predetermined rate, e.g. 30 kg/cm2, into the mixing chamber having the dispensing valve ([0024] and [0031]). Carbon dioxide is set forth as a suitable gas [0024]. Carbon dioxide is also set forth as a species of at least one non-flammable, inert, or non-flammable and inert blowing agent which is gaseous at 0°C and atmospheric pressure in instant Claims 3 and 4. The curable mixture may then be dispensed into a mold and allowed to cure into a cured foamable silicone product.
Yoneyama teaches the viscosity of the curable liquid organopolysiloxane composition used may be as low as 1,000 cp (mPa∙s) [0020]. Thus, it is the Office’s position that it would be readily envisioned that both parts of the curable liquid organopolysiloxane composition used may have a viscosity as low as 1,000 cp (mPa∙s). While this range is not identical to the instantly claimed range of viscosity for the part A and the part B compositions of 200 to 50,000 mPa∙s, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
The Office additionally recognizes that Yoneyama teaches injecting the at least one non-flammable, inert, or non-flammable and inert blowing agent into the part A and B compositions after they are mixed, rather than prior to mixing as is instantly claimed. However, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See In Re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP 2144.04(IV)(C))
Regarding Claim 2. Yoneyama teaches the method of Claim 1 and does not require a physical blowing agent which undergoes a liquid to gas phase change at atmospheric pressure and a temperature greater than or equal to at least 10°C or a chemical blowing agent be utilized.
Regarding Claim 5. Yoneyama teaches the method of Claim 1 wherein the resulting foam may be cured at room temperature [0028].
Regarding Claim 6. Yoneyama teaches the method of Claim 1 wherein the foaming curable mixture is discharged into a mold [0028] and thus must be flowable before it completely cures to fill a large cavity.
Regarding Claim 7. Yoneyama teaches the method of Claim 1. In Example 1, the foaming curable mixture is discharged into a mold heated to 120°C, where it cures for 30 minutes [0028]. It would then be reasonably expected that the foaming curable mixture has gel time of greater than or equal to 2 minutes (120 seconds) under the claimed processing conditions and much lower temperature of 25°C.
Regarding Claim 8. Yoneyama teaches the method of Claim 1 wherein the mixer comprises a injection hole/dispenser head though which the foaming curable mixture is dispensed into a mold [0031].
Regarding Claim 9. Yoneyama teaches the method of Claim 1 wherein the multi-part silicone foam composition further comprises a filler [0017] – [0019].
Regarding Claim 10. Yoneyama teaches the method of Claim 1 wherein the hydrosilylation catalyst particularly preferably provides 1 to 50 ppm platinum metal [0017].
Regarding Claim 11. Yoneyama teaches a foamed silicone product prepared by the method of Claim 1 [0006].
Regarding Claim 12. Yoneyama teaches the foamed silicone product of Claim 11 wherein the foams prepared in the inventive examples have specific gravities of 0.3 and 0.5 ([0032] and [0038]).
Yoneyama is silent regarding the open or closed cell content of the foam. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Yoneyama teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a foam having open and closed cells or a closed-cell foam, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 13 and 14. Yoneyama teaches the foamed silicone product of Claim 11, wherein the foamed silicone product is suitable for thermal insulation [0025], e.g. heat insulating material around automobile engines [0002].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over JPH 08259720 to Yoneyama et al. (hereinafter Yoneyama). For the purposes of examination, citations for Yoneyama are taken from a machine translation of the document obtained from the European Patent Office website in June 2026.
Regarding Claim 15. Yoneyama teaches a multi-part silicone foam composition, in which a main component and curing agent component are provided [0009]. Said multi-part silicone foam composition comprises:
an organopolysiloxane having at least two alkenyl groups having a viscosity of 100 to 200,000 cSt at 25°C [0010], i.e. a polydiorganosiloxane having a viscosity corresponding to roughly 100 to 200,000 mPa∙s at 25°C and at least two unsaturated groups which are alkenyl groups and which therefore corresponding to instantly claimed component (i);
an organohydrogensiloxane having at least two hydrogen atoms directly bonded to a silicon atom [0014], corresponding to instantly claimed component (ii);
a platinum group metal catalyst which has the effect of promoting the addition/hydrosilylation reaction between components (A) and (C) [0016], corresponding to instantly claimed component (iii); and
wherein the multi-part silicone foam composition comprises a main component that is a mixture of component (C) with component (A) [0009], corresponding to the instantly claimed part A composition comprising components (i) and (iii); and a curing agent composition that is a mixture of component (B) with component (A) [0009], corresponding to the instantly claimed part A composition comprising components (i) and (ii).
The composition is blown into a foam using carbon dioxide [0024]. Carbon dioxide is also set forth as a species of at least one non-flammable, inert, or non-flammable and inert blowing agent which is gaseous at 0°C and atmospheric pressure in instant Claims 3 and 4.
Yoneyama teaches the viscosity of the curable liquid organopolysiloxane composition used may be as low as 1,000 cp (mPa∙s) [0020]. Thus, it is the Office’s position that it would be readily envisioned that both parts of the curable liquid organopolysiloxane composition used may have a viscosity as low as 1,000 cp (mPa∙s). While this range is not identical to the instantly claimed range of viscosity for the parts A and B of 200 to 50,000 mPa∙s, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to methods of forming foamed silicone products from multiple-part silicone foam compositions.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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