DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
As previously set forth: Applicant’s election without traverse of Group I claims 1-3, 5-11, 28 in the reply filed on 12/4/25 is acknowledged.
Claims 12-15, 19-20, 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/4/25.
Priority
As previously set forth: The foreign priority is not in English, thus the claims have an effective date of the filing of the PCT: 12/29/22
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/29/26 has been considered by the examiner.
Specification
The amendment to the specification dated 4/29/26 has been entered.
Response to Argument/Amendment
Applicant argues [0091] and [0140] support the new 100 parts limitation to the independent claims.
The Examiner disagrees. As set forth in the 112 new matter rection below, support is not found for the combination of 100 parts RTV silicone in combination with 110-140 parts cured matrix and 15-40 parts polystyrene particles. Though [0091] and [0140] discloses 100 parts resin, this is not found (nor does it make sense with) in combination with 110-140 parts cured matrix and 15-40 parts particles. Arguments therein are thusly not found persuasive.
Applicant argues Arizumi is drawn to an electrical field for an electrode, does not disclose the parts by weight of polystyrene of the claims. Applicant argues the acoustic attenuation of claim 9 is not met because Arizumi discloses the use of 0.1-100 parts filler and Instant Comparative Ex 4 shows that when using 70 parts filler one does not meet the acoustic attenuation property of claim 9. Applicant likewise argues the acoustic reflection coefficient of claim 1 is not met given the showings of Comparative Example 5 that shows that 10 p filler does not meet the acoustic reflection property.
The Examiner agrees, and withdraws Wang v. Arizumi there being no suggestion or motivation to choose/modify the filler amount to achieve the claimed acoustic attenuation range of claim 9 or the acoustic reflection coefficient of claim 1. Arizumi discloses a range of filler from 0.1-100 and Applicant has shown certain amounts of particles will not achieve the claimed properties.
Applicant has various other arguments drawn to Wang and Arizumi but in light of the above the arguments are moot at this time.
Claim Interpretation
The previous claim interpretation is removed, due to amendment.
Claim Objections
Objection over Claims 2, 3, and their dependents, is overcome by amendment
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 12 (albeit withdrawn), 28, and their dependents, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “100 parts….110-140 parts…and …15-40 parts” is not supported by the originally filed written description. Though [0091] and [0140] have support for 100 parts cured resin, the combination of such with 110-140 parts cured matrix and 15-50 parts polystyrene particles is not supported by the written description.
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.
Rejection over Claims 2, 3, and their dependents, 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 is removed since claims 2 and 3 have been amended into the independent claims.
Claims 1, 12 (albeit withdrawn), 28, and their dependents, 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.
Claims 1, 12 (albeit withdrawn) and 28 have the limitation “based on 100 parts by weight of the RTV silicone rubber, the cured matrix formed by curing the RTC silicone is within the range of 110-140 …. polystyrene particles are within a range of 15-40”, it is unclear how one can make 100 parts of RTV silicone from 110-140 p cured matrix and 15-40p particles, e.g. the final amount (100 parts) is lower than what it comprises (110-140 plus 14-40p).
Claim 1 is indefinite because it is drawn to “A modified silicone rubber” “of an ultrasonic probe”. It is unclear if this is actually meant to be “An ultrasonic probe comprising”, or, if it is “A modified silicone rubber for an ultrasonic probe”. The claim is thusly indefinite. Because there are other claims drawn to “An ultrasonic probe comprising” (claim 28), the Examiner is treating “of” as “for”, e.g. treating the claim as a silicone rubber composition used for an ultrasonic probe.
Appropriate correction is required for a) and b)
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejection over Claim(s) 1 under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang (US 2017/0029623) is overcome by amendment.
Rejection over Claim(s) 2-3, 5-11 under 35 U.S.C. 103 as being unpatentable over Wang in view of Arizumi (US 2018/0013057) as evidenced by Polybead Microspheres is withdrawn for reasons set forth above.
Rejection over Claim(s) 1-3, 5-6, 9-11, 28 under 35 U.S.C. 103 as being unpatentable over Abe (JP2013202050A-English translation provided) in view of Nagai (US 2017/0252465) is overcome by amendment. Abe discloses particle sizes from 0.08-0.2 microns and thusly does not meet the requirements of claims 1, 28.
Allowable Subject Matter
Claims 1, 12 (albeit withdrawn), 28, and their dependents, are rejected under 112 above, but are free from art. Abe was removed because the particle size therein is 0.08-0.2 microns and there is no suggestion or disclosure to include in Abe polystyrene particles having the claimed 1-20 micron size. Wang v. Arizumi is removed for reasons set forth above
Conclusion
As previously set forth: The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In addition to JP2013202050 (an X reference on the ISR) US 20190015071 is cited as another X references, however, ‘071 merely mixes polystyrene with siloxane rubber and there is no amount thereof, no specifics of the polystyrene or siloxane rubber nor a disclosure of the polystyrene being particles therein, thus the Examiner does not find it to meet claims 1, 28.
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 ALICIA BLAND whose telephone number is (571)272-2451. The examiner can normally be reached Mon - Fri 9:00 am -3:00 pm EST.
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, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA BLAND/ Primary Examiner, Art Unit 1759
Prosecution Insights