DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendment
2. The amendment filed by Applicant on February 5, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include a limitation of the silicone foam having a thermal conductivity of 0.02-0.1 W/m.K. This limitation was not previously presented and was taken from instant specification (p. 26, lines 1-6 of instant specification). In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claim 7 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the organohydrogensiloxane B having at least two silicon-bonded hydrogen atoms per molecule, and further, using the term “preferably”, at least three silicone-bonded hydrogen atoms per molecule, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
4. Claims 1-3, 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over O’Neil et al (US 2018/0223069) in view of Fisher et al (US 2010/0062247) and Nakane et al (JP 2004-123836, based on machine translation).
5. The rejection is adequately set forth on pages 6-11 of an Office action mailed on November 5, 2026 and is incorporated here by reference.
6. With respect to the amended claim 1, since the silicone rubber syntactic foam of O’Neil et al in view of Fisher et al and Nakane et al is substantially the same as that claimed in instant invention, and is produced by substantially the same process, including applying a reduced pressure of 10-200 mbar ([0090] of Fisher et al) or about zero MPa ([0008] of Nakane et al), therefore, the silicone rubber syntactic foam of O’Neil et al in view of Fisher et al and Nakane et al will intrinsically and necessarily comprise thermal conductivity of 0.1 W/m.K or less, or in the range of 0.02-0.1 W/m.K as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
7. It is further noted that, though O’Neil et al exemplified the foam having thermal conductivity of 0.17-0.18 W/m.K (Table 2), i) the foams of O’Neil et al are not cited at which pressure they were formed and ii) under 35 USC 103 a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
8. However, a) the silicone rubber syntactic foam of O’Neil et al in view of Fisher et al and Nakane et al is produced at a reduced pressure of 10-200 mbar ([0090] of Fisher et al); b) instant specification provides examples of the silicone foams produced at a pressure of 150-200 mbar, wherein such foams are having thermal conductivity of 0.068 W/m.K (Formulation 1, p.33, lines 8-10 of instant specification), therefore, the silicone rubber syntactic foam of O’Neil et al in view of Fisher et al and Nakane et al will be reasonably expected to have the thermal conductivity of 0.1 W/m.K or less as well. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
9. Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over O’Neil et al (US 2018/0223069) in view of Fisher et al (US 2010/0062247) and Nakane et al (JP 2004-123836, based on machine translation), in further view of Mochizuki (US 2021/0095126).
10. The rejection adequately set forth on pages 11-14 of an Office action mailed on November 5, 2026 and the discussion set forth in paragraphs 6-8 above, are incorporated here by reference.
11. Claims 1-3, 7, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kempf et al (EP 3,875,519) in view of Fisher et al (US 2010/0062247) and Nakane et al (JP 2004-123836, based on machine translation), as evidenced by
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It is noted that while the rejection is made over EP 3,875,519 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2023/0159718 is relied upon. All citations to paragraph numbers, etc., below refer to US 2023/0159718.
12. Kempf et al discloses a silicone rubber foam and a method for making said silicone rubber foam (as to instant claims 1, 11), the method comprises:
providing a curable and foamable precursor of said silicone rubber foam, followed by foaming and curing said foam (Abstract), wherein
- the precursor of the silicone rubber comprises:
a) at least one organopolysiloxane compound A having two alkenyl groups ([0053]-[0054]) and having the following formula:
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Where R’ are alkenyl groups ([0053]);
b) at least one organohydrogenpolysiloxane compound B having at least two hydrogen atoms per molecule ([0049]);
c) at least one hydroxyl compound C;
d) a curing catalyst D and
e) optionally, a foaming agent ([0047]-[0052], as to instant claim 7),
wherein the silicone rubber foam further comprises hollow microspheres such as glass bubbles (as to instant claim 2, [0081]),
the foam comprises air gaseous cavities ([0074])
and wherein the silicone rubber foam comprises a thermal conductivity of no greater than 0.1 W/m.K ([0104]), or as low as 0.02 W/m.K ([0105]).
Since the foaming agent component e) is cited as being optional, i.e. not required, it would be obvious to a one of ordinary skill in the art to exclude it from the curable silicone composition as well. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
13. As to instant claim 10, the curing step is performed at a temperature of 20-100⁰C ([0130]-[0132]).
14. It is noted that instant specification defines the term “silicone syntactic foam which is also air-formed” as follows (see p. 6, lines 35-37 of instant specification):
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Further, “syntactic foam” by definition provided by
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:
Syntactic foam is a lightweight, high-strength composite material made by embedding hollow microspheres in a matrix, offering exceptional strength-to-weight ratio and tailored performance for subsea, aerospace, and engineering applications.
That is, “syntactic foam” comprises hollow microspheres embedded in a matrix.
15. Thus, instant specification recites said “syntactic air-foamed foam” as i) comprising hollow microspheres in the silicone binder, and ii) having air cavities.
Since the silicon rubber foam of Kempf et al comprises a) hollow microspheres in the silicone binder ([0081]) and b) air gaseous cavities ([0074]), therefore, the silicone rubber foam of Kempf et al will intrinsically and necessarily be at least partially syntactic and air-foamed as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
16. Though Kempf et al discloses curing taking place at temperature of 20-100⁰C, Kempf et al does not explicitly recite the pressure during curing.
17. However,
1) Fisher et al disclose a process for curing silicone compositions, wherein Fisher et al teaches that the silicone resin can be cured at atmospheric pressure or subatmospheric pressure; wherein the silicone resin in the form of a coating that is enclosed between liners/substrates, the silicone resin is typically cured under a reduced pressure, such as 1,000-20,000 Pa ([0090]), i.e. 10-200 mbar (as to instant claim 1, 3).
Thus, Fisher et al explicitly teaches that curing of silicone resins enclosed between substrates is conducted under a subatmospheric pressure such as 200 mbar.
2) Nakane et al discloses a process for forming a silicone foam comprising a) subjecting/injecting a silicone precursor composition into a sealed foaming container and b) foaming and hardening the silicone composition under a reduced pressure, such as about zero MPa ([0008]; page 2, second paragraph of the translation; Table 2, paragraph [0052]), wherein the produced silicone foam is having high expansion and low density (Table 2).
18. Given i) the silicone foam of Kempf et al is formed by injecting curable silicone composition between two layers and is cured there via crosslinking, i.e. cured in an enclosed space (Abstract), ii) Fisher et al explicitly teaches that curing of silicone resins enclosed between substrates is conducted under a subatmospheric pressure such as 200 mbar, and iii) Nakane et al teaches that forming silicone foam by hardening and expansion under a reduced pressure leads to producing the silicone foam having a low density, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kempf et al, Fisher et al and Nakane et al, and to conduct, or obvious to try to conduct the curing of the curable silicone composition of Kempf et al under a reduced subatmospheric pressure such as 200 mbar, as taught by Fisher et al and Nakane et al, as well, since such process step is taught in the art for curing silicone resins and producing low density foams, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
19. Given the process of Kempf et al in view of Fisher et al and Nakane et al
is substantially the same as that claimed in instant invention, including preparing the same silicone curable composition including hollow microspheres as claimed in instant invention, and conducting curing under a subatmospheric pressure without using external blowing agents, therefore, the silicone foam of Kempf et al in view of Fisher et al and Nakane et al will intrinsically and necessarily be syntactic and air-foamed, and having low thermal conductivity of less than 0.1 W/m.K as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
20. Claims 1-3, 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kempf et al (EP 3,875,519) in view of Fisher et al (US 2010/0062247) and Nakane et al (JP 2004-123836, based on machine translation), as evidenced by
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in further view of O’Neil et al (US 2018/0223069).
It is noted that while the rejection is made over EP 3,875,519 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2023/0159718 is relied upon. All citations to paragraph numbers, etc., below refer to US 2023/0159718.
21. The discussion with respect to Kempf et al (EP 3,875,519) in view of Fisher et al (US 2010/0062247) and Nakane et al (JP 2004-123836, based on machine translation), set forth in paragraphs 11-19 above, is incorporated here by reference.
22. Though Kempf et al does not explicitly disclose the relative amount of the hollow microspheres in the curable silicone composition, viscosity of the composition, and properties of hollow glass microspheres,
O’Neil et al disclose a process for forming a silicone rubber syntactic foam and the silicone foam produced by the process (as to instant claim 11) comprising:
1) preparing an organopolysiloxane composition X comprising:
a) at least one organopolysiloxane A of the following formula:
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Wherein R’ is a C1-C20 alkenyl radical, such as vinyl, allyl, hexenyl ({0025]-
[[0030]);
b) at least one silicon compound B comprising at least two hydrogen atoms
bonded to silicon per molecular; preferably a mixture of two silicon compounds B
one comprising two telechelic hydrogen atoms bonded to silicon per molecule with
no pendent hydrogen atoms bonded to silicon per molecule and the other
comprising at least three hydrogen atoms bonded to silicon per molecule ([0031],
as to instant claims 7 and 8);
c) a hydrosilylation catalyst C ([0032]);
d) hollow glass beads D, preferably hollow borosilicate glass microspheres ([0033],
as to instant claims 1-2); and
2) curing the composition ([0024], [0133], [0112]), such as at room temperature to form silicone rubber syntactic foam comprising a silicone rubber binder and hollow glass beads ([0176], as to instant claim 10).
23. The silicone rubber syntactic foam is used to fill open spaces in a battery module casing ([0047] of O’Neil et al) by injecting the liquid silicone composition precursor of the silicone foam into free spaces to fill those, followed by curing ([0058] of O’Neil et al). Thus, the liquid silicone composition is injected into the battery casing to fill open spaces and is cured there via crosslinking, i.e. cured in an enclosed space.
24. As to instant claim 5, the level of hollow glass beads is up to 80% volume, preferably 5-70% volume; the exemplified composition shows the hollow glass beads present in amount of 13.05 pbw (Table 1 of O’Neil et al).
25. As to instant claim 6, the hollow borosilicate glass microspheres are having true density of 0.1-0.65 g/cc ([0051] of O’Neil et al).
26. As to instant claim 9, the composition X is having viscosity at 25⁰C of 500-300,000 mPa.s or 500-5000 mPa.s ([0078] of O’Neil et al).
27. Since both O’Neil et al and Kempf et al are related to silicone rubber foams produced from substantially the same silicone precursor compositions comprising hollow microspheres, and thereby belong to the same field of endeavor, wherein O’Neil et al teaches the amount of used hollow microspheres, viscosity of the composition and density of the hollow glass microspheres used in such composition, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kempf et al and O’Neil et al, and to use, or obvious to try to use the silicone composition of O’Neil et al as the silicone curable precursor composition in the process of Kempf et al, and further use, or obvious to try to include the hollow glass microspheres as taught by O’Neil et al in the precursor composition of Kempf et al since such hollow glass microspheres are taught in the art as being used to form silicone rubber foam, and it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
28. Claims 1-4, 7, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kempf et al (EP 3,875,519) in view of Fisher et al (US 2010/0062247) and Nakane et al (JP 2004-123836, based on machine translation), as evidenced by
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in further view of Mochizuki (US 2021/0095126).
It is noted that while the rejection is made over EP 3,875,519 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2023/0159718 is relied upon. All citations to paragraph numbers, etc., below refer to US 2023/0159718.
29. The discussion with respect to Kempf et al (EP 3,875,519) in view of Fisher et al (US 2010/0062247) and Nakane et al (JP 2004-123836, based on machine translation), set forth in paragraphs 11-19 above, is incorporated here by reference.
30. Though Kempf et al in view of Fisher et al and Nakane et al do not specify the reduced pressure being applied before the composition is fully cured and at a time of at least 10% of gel time,
Mochizuki discloses a method of manufacturing silicone cured product, wherein the method comprises:
a) curing the organopolysiloxane by hydrosilylation reaction under a closed atmosphere at a temperature of 40-200⁰C for 0.5 min to 5 hours, or 1 min to 2 hours to obtain a primary cured product ([0035]);
b) heating the product under a reduced pressure at a temperature of 60-160⁰C for 2-24 hours (Abstract, [0043]-[0044]),
wherein the produced cured silicone resin has very low generation of a volatile component (Abstract).
31. Thus, Mochizuki explicitly teaches a method for making silicone resin cured product taking place in two steps: curing under a temperature of 40-200⁰C to form a primary, i.e. partially, cured product, followed by heating under a reduced pressure, so to produce the silicone resin having very low generation of volatile components. Given the second step is conducted under heating and in the presence of the same catalyst, therefore, the heating in the second step would be reasonably expected to lead to further, at least to minor extent, curing as well. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
32. Based on the teachings of Mochizuki that the first curing step is conducted for 0.5 min to 5 hours, and the longer curing will intrinsically and necessarily lead to higher crosslinking level, and thus higher gel content, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize the length of the period for the first step curing, so to obtain the primary cured product having a desired gel content, such at least 10% of gel time, before submitting that to further heating under a reduced pressure in the second step, so to obtain the final product having a desired level of curing and a desired level of volatile components, thereby arriving at the present invention. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
33. Since silicone resins can be cured in a two-step process including curing under heating to form a primary cured product, followed by further heating (and to at least minor extent further curing) under a reduced pressure, as taught by Mochizuki, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Mochizuki and Kempf et al in view of Fisher et al and Nakane et al, and to modify, or obvious to try to modify the process of Kempf et al in view of Fisher et al and Nakane et al by conducting curing of the silicone composition of Kempf et al in view of Fisher et al and Nakane et al under heating first, to produce the primary cured silicone product having a gel content of at least 10%, or 45-65%, followed by reducing the pressure and continuing heating to form the final silicone syntactic foam of Kempf et al in view of Fisher et al and Nakane et al as well. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
34. Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kempf et al (EP 3,875,519) in view of Fisher et al (US 2010/0062247), Nakane et al (JP 2004-123836, based on machine translation) and O’Neil et al (US 2018/0223069), as evidenced by
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in further view of Mochizuki (US 2021/0095126).
It is noted that while the rejection is made over EP 3,875,519 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2023/0159718 is relied upon. All citations to paragraph numbers, etc., below refer to US 2023/0159718.
35. The discussion with respect to Kempf et al (EP 3,875,519) in view of Fisher et al (US 2010/0062247), Nakane et al (JP 2004-123836, based on machine translation) and O’Neil et al (US 2018/0223069), set forth in paragraphs 20-27 above, is incorporated here by reference.
36. Though Kempf et al in view of Fisher et al, Nakane et al and O’Neil et al do not specify the reduced pressure being applied before the composition is fully cured and at a time of at least 10% of gel time,
Mochizuki discloses a method of manufacturing silicone cured product, wherein the method comprises:
a) curing the organopolysiloxane by hydrosilylation reaction under a closed atmosphere at a temperature of 40-200⁰C for 0.5 min to 5 hours, or 1 min to 2 hours to obtain a primary cured product ([0035]);
b) heating the product under a reduced pressure at a temperature of 60-160⁰C for 2-24 hours (Abstract, [0043]-[0044]),
wherein the produced cured silicone resin has very low generation of a volatile component (Abstract).
37. Thus, Mochizuki explicitly teaches a method for making silicone resin cured product taking place in two steps: curing under a temperature of 40-200⁰C to form a primary, i.e. partially, cured product, followed by heating under a reduced pressure, so to produce the silicone resin having very low generation of volatile components. Given the second step is conducted under heating and in the presence of the same catalyst, therefore, the heating in the second step would be reasonably expected to lead to further, at least to minor extent, curing as well. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
38. Based on the teachings of Mochizuki that the first curing step is conducted for 0.5 min to 5 hours, and the longer curing will intrinsically and necessarily lead to higher crosslinking level, and thus higher gel content, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize the length of the period for the first step curing, so to obtain the primary cured product having a desired gel content, such at least 10% of gel time, before submitting that to further heating under a reduced pressure in the second step, so to obtain the final product having a desired level of curing and a desired level of volatile components, thereby arriving at the present invention. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
39. Since silicone resins can be cured in a two-step process including curing under heating to form a primary cured product, followed by further heating (and to at least minor extent further curing) under a reduced pressure, as taught by Mochizuki, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Mochizuki and Kempf et al in view of Fisher et al, Nakane et al and O’Neil et al, and to modify, or obvious to try to modify the process of Kempf et al in view of Fisher et al, Nakane et al and O’Neil et al by conducting curing of the silicone composition of Kempf et al in view of Fisher et al, Nakane et al and O’Neil et al under at least some heating first, to produce the primary cured silicone product having a gel content of at least 10%, or 45-65%, followed by reducing the pressure and continuing heating to form the final silicone syntactic foam of Kempf et al in view of Fisher et al, Nakane et al and O’Neil et al as well. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Response to Arguments
40. Applicant's arguments filed on February 5, 2026 have been fully considered but they are moot in light of the new grounds of rejections and discussion set forth above.
41. It is further noted that:
1) the above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Fisher et al (US 2010/0062247), Nakane et al (JP 2004-123836, based on machine translation) are the secondary references which were applied for the specific teachings.
Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
Conclusion
42. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2008/0138525 discloses curing of silicone resins under reduced pressure of 1,000-20,000 Pa, or 1,000-5,000 Pa ([0084]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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