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 .
Election/Restrictions
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Claims 12-16, 19-21, 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.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
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 8/14/23 has been considered by the examiner.
Claim Interpretation
The claims and specification recite “curing a room temperature vulcanized silicone rubber”. A vulcanized rubber has already been cured. Although it can, in some cases, be further cured. Since RTV generally refers to ‘room temperature vulcanizable’ in this art (as shown in the prior art set forth below), the Examiner would like clarification if “curing a room temperature vulcanized silicone rubber” is (or is not) a translation error meant to be “curing a room temperature vulcanizable silicone rubber”. It is treated below as written, e.g. as “vulcanized”.
Claim Objections
Claims 2, 3, and their dependents, are objected to because of the following informalities: “the polystyrene particles is”, in both claims, should be written “the polystyrene particles are”. 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 2, 3, 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 2 and 3 have the limitation “the cured matrix….is within a range of 110-140 parts by weight”, and “polystyrene particles is within a range of 16-60 parts by weight”
It is unclear what the “parts by weight” refers to here. Is it by weight of the modified silicone rubber? Does Applicant mean there is 100 parts modified silicone rubber and 110-140 parts cured matrix (this interpretation does not seem to be supported by the specification)? Is it by weight of the room temperature vulcanized rubber? Likewise is the polystyrene based by weight of the room temperature vulcanized rubber, the cured matrix, or the modified silicone rubber? The specification seems to only have the cured matrix in the final product, thus giving no support for a composition comprising a) 100 parts modified silicone rubber, b) 110-140 parts cured matrix and c) 15-60 parts polystyrene particles
It seems maybe Applicant is adding 10-40 parts of a curing agent to 100 parts RTV rubber, thus equaling 110-140 parts (curing agent+RTV) and 15-60 parts polystyrene particles (the diluent being evaporated out). If so, the claimed “parts by weight” is not properly written. See [0091] of the instant specification. clarification/correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
Claim(s) 1 is/are rejected 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).
Wang discloses curable silicone compositions (title). Said compositions comprise a RTV (room temperature vulcanizable) silicone (abstract). It is mixed with fillers such as polystyrene powder [0048] (meeting the polystyrene particles). The composition is later cured [0056], Table 8. Picking one element from a list (the polystyrene powder) is anticipated. Further, the “a cured matrix formed by” is a product by process limitation. The process is not pertinent unless Applicant shows a distinct product is produced. Wang cures the composition, as set forth above. The filler is implicitly dispersed in the matrix. As such claim 1 is anticipated. Alternatively, it’s prima facie obvious because the claimed product may be slightly different than the product of the prior art.
Claim(s) 2-3, 5-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Arizumi (US 2018/0013057) as evidenced by Polybead Microspheres.
Wang includes elements as set forth above. Wang discloses the RTV composition may comprise fillers such as silica, titanium oxide, boron nitride and polystyrene powder [0048]. The composition is used in electronic elements [0002]. Wang does not disclose the amount of filler nor the specifics thereof.
Arizumi discloses silicone rubber compositions (title) comprising inorganic and organic fillers such as silica [0057], titanium oxide [0057] boron nitride [0062], and polystyrene particles [0054], amongst others, all embracing those taught by Wang. The composition is used in electric elements (title, abstract), akin to Wang. Examples of polystyrene particles include product #12520-500 [0082]. The fillers may be from 0.01-30 microns [0091] and added in amounts from 0.1-100 parts of the silicone resin [0093]. Polysciences Inc, Polybead Microspheres is evidence that 19520-500 is a 3 micron polystyrene bead (see under ordering information), and, the coefficient of variation is 2-10% (see under characteristics).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Wang, the use of 0.01-30 micron polystyrene beads in amounts ranging from 0.1-100 microns, such as the 3 micron 19520-500 beads, as taught by Asrizumi, since these are recognized in the art of fillers for silicone rubbers for electronic elements to be suitable for the intended use thereof. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. Since Wang and Arizumi overlap in many of the filler species, used for electronic elements, one would have a reasonable expectation of success when choosing this polystyrene bead for the polystyrene filler of Wang.
Wang discloses other additives such as an uncrosslinked rubber in a ratio of RTV silicone to rubber for 1:2 to 15:1, thus one can have a cured matrix comprising of 100 parts elastomer, 110 parts by weight silicone (thus 1:1.1 which is embraced by the range of 1:2 to 15:1), 20 parts polystyrene particles, embracing and rendering obvious claims 2 and 3. Since the coefficient of variation of the Polybead ranges from 2-10%, claim 6 is embraced and rendered obvious and such would also meet the spherical requirements of claim 5. Elements above meet claims 7-8.
Since the composition requirements are met, the acoustic coefficient, acoustic impedance and acoustic reflection of claims 9-11 are deemed to be embraced by the reference. if there is any difference between the above composition and the composition of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." 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. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim(s) 1-3, 5-6, 9-11, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe (JP2013202050A-English translation provided) in view of Nagai (US 2017/0252465).
Abe discloses ultrasonic [0002] (meeting ultrasonic of claim 1) acoustic wave detection devices (title) wherein a probe [0008, figures 1 and 2] (meeting the probe of claim 1) comprises an acoustic member [0030] (meeting the acoustic permeable component), said acoustic member having a composition of polystyrene particles mixed in a silicone rubber [0031], alternative compositions include silicone rubber mixed with titanium oxide or zirconium oxide particles [0031]. The particles have a diameter from 0.08-0.2 microns [0031].
Abe includes elements as set forth above but does not disclose the specifics of the silicone rubber nor if the silicone rubber is cured. Nagai discloses acoustic wave probes (title), thus akin to Abe. Nagai discloses the probe composition to be a mixture of a polysiloxane composition and inorganic particles such as titanium oxide or zirconium oxide (abstract), also akin to Abe. Nagai discloses the silicone rubber to be vulcanized [0168] after mixing with particles. Nagai teaches this to be a suitably known rubber composition for acoustic probes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Abe the silicone rubber and vulcanization thereof, as taught by Nagai, since this is recognized in the art of acoustic probe silicone rubber compositions to be suitable for the intended use for acoustic wave probes.
“by curing a room temperature vulcanized silicone rubber” is a product by process limitation. The process of making not being pertinent unless Applicant shows a distinct product is produced. The end result is a cured matrix. Curing a vulcanizable silicone rubber (as taught by Nagai) would produce the same end result of a cured/crosslinked matrix. Elements above meet claims 1, 28.
Regarding claims 2-3, Nagai discloses the use of 100 parts polysiloxane mixture and 10-60 parts particles therein [0045], restated one can say based on 110 parts polysiloxane mixture the composition can comprise 16.5 parts particles (100/15 = 110/X, X=16.5), embracing the silicone and polystyrene requirements of the claims. The particles of Abe are expected to be spherical, or at least embrace spherical, since any other particle shape would have been explicitly disclosed. Alternatively, changes in shape are prima facie obvious. See In re Dailey. As such claim 5 is met. The coefficient of variation is akin to the polydispersity and/or size variation. Having monodisperse particles will give a more uniform and homogeneous product in terms of mixing and mechanical properties. Thus, decreasing the variation to achieve improved mixing and/or mechanical properties is prima facie obvious, embracing claim 6. Since the composition requirements are met, the properties of claims 9-11 are deemed to be embraced by the reference.
Conclusion
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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759