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 1-14, 16, and 18-20 in the reply filed on January 4, 2026 is acknowledged.
Claims 17 and 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 4, 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 23, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
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.
Claims 1, 2, 12, 13, 16, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayasaka et al. (JPH08615, English translation provided for citations, hereinafter referred to as “Hayasaka”).
As to Claim 1: Hayasaka teaches an acoustic lens formed via mixing of a silicone rubber, a first component, and a butadiene rubber, a third component, (i.e., a composition of raw materials) followed by curing the same ([0005]) to form a modified silicone rubber. Hayasaka further teaches wherein the silicone rubber may be an organopolysiloxane having vinyl groups ([0006]), which reads on the claimed first component according to the instant specification as construed from the instant specification para. [0032] (“In some embodiments, the first component may include vinyl silicone rubber”). Hayasaka further teaches that the butadiene rubber may be formed via polymerization of butadiene ([0007]), which reads on the claimed third component as construed from the instant specification para. [0015]-[0016]. Hayasaka further teaches that the composition further comprises zinc oxide which accelerates vulcanization of the silicone and butadiene rubber mixture, which reads on the claimed second and fourth component according to the instant specification para. [0007] (“the second component may include a catalyst capable of catalyzing an addition reaction of the vinyl silicone rubber”) and para. [0015] (“the fourth component includes a catalyst capable of catalyzing an addition reaction of the butadiene compound”).
As to Claim 2: Hayasaka teaches the modified silicone rubber of claim 1 (supra).
Hayasaka further teaches an exemplary rubber formed from mixing 100 parts by weight of a butadiene rubber and 100 parts by weight of a silicone rubber ([0016]) further comprising zinc oxide in an amount of 4 parts by weight ([0017]), the amounts of which read on the claimed ranges for a first component, second component, third component, and fourth component.
As to Claim 12: Hayasaka teaches the modified silicone rubber of claim 1 (supra).
Hayasaka teaches an acoustic lens formed via mixing of a silicone rubber, a first component, and a butadiene rubber, a third component, (i.e., a composition of raw materials) followed by curing the same ([0005]) to form a modified silicone rubber. Hayasaka teaches that the butadiene based rubber is formed from polymerization of 1,4- or 1,2- polymerization of butadiene (i.e., a butadiene compound) ([0007]). Hayasaka further teaches that the composition further comprises zinc oxide which accelerates vulcanization of the silicone and butadiene rubber mixture, which reads on the claimed fourth component according to the instant specification para. [0015] (“the fourth component includes a catalyst capable of catalyzing an addition reaction of the butadiene compound”).
As to Claim 13 and 16: Hayasaka teaches the modified silicone rubber of claim 12 (supra).
Hayasaka teaches that the butadiene based rubber is formed from polymerization of 1,4- or 1,2- polymerization of butadiene ([0007]), which reads on the claimed structure.
As to Claim 19 and 20: Hayasaka teaches the modified silicone rubber of claim 1 (supra).
A recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, then it meets the claim. In the instant case, Hayasaka teaches the claimed modified silicone rubber and would therefore be capable of use as a “sound-transparent material”. Furthermore, Hayasaka contemplates that the material may be used for an acoustic lens for an ultrasonic diagnostic device (i.e., an element applied to an ultrasonic probe).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hayasaka et al. (JPH08615, English translation provided for citations, hereinafter referred to as “Hayasaka”).
As to Claim 3: Hayasaka teaches the modified silicone rubber of claim 1 (see above).
Hayasaka further teaches an exemplary rubber formed from mixing 100 parts by weight of a butadiene rubber and 100 parts by weight of a silicone rubber ([0016]) further comprising zinc oxide in an amount of 4 parts by weight ([0017]), the amounts of which read on the claimed ranges for a first component and third component. Hayasaka does not contemplate a range for an amount of zinc oxide, but teaches that the mixing ratio of the same may be modified ([0008]). Kono teaches a rubber composition based on a rubber having vulcanizable unsaturation ([0002]) (e.g., butadiene, [0006]). Kono further teaches that the composition may be cured in the presence of zinc oxide to accelerate vulcanization ([0002] and [0006]), wherein the zinc oxide may be present in an amount of 2 to 20 parts by weight ([0006]), which overlaps with the claimed range for an amount of a second and fourth component relative to a first and second component (e.g., 10:1:10:1). Hayasaka and Kono are considered analogous art because they are directed towards the same field of endeavor, namely, rubbers formed from curing of unsaturated starting materials. In the case where 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 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range for the zinc oxide component taught by Hayasaka, and the motivation to have done so would have been, as Kono suggests, that the overlapping portion is a useable range for a zinc oxide accelerator per 100 parts rubber (i.e., the silicone rubber and butadiene rubber of Hayasaka) known to achieve activation and acceleration of vulcanization/curing of unsaturated starting materials, such as that taught by Hayasaka.
Claims 4-11, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hayasaka et al. (JPH08615, English translation provided for citations, hereinafter referred to as “Hayasaka”) in view of Nagata et al. (JP2018143703, English translation provided for citations, hereinafter referred toas “Nagata”).
As to Claim 4: Hayasaka teaches the modified silicone rubber of claim 1 (see above).
Hayasaka is silent towards wherein the silicone rubber (i.e., first component) comprises a cross-linking agent as construed from the instant specification para. [0007]-[0011].
Nagata teaches a related resin material for acoustic wave probes, acoustic lenses, and ultrasound diagnostic devices ([0001]) comprising a blend of a resin (a) having a fluorine atom and a resin (b) containing a unit having a polysiloxane bond ([0009]) wherein the resin (b) may be a curable silicone rubber based on a polyorganosiloxane having vinyl groups (i.e., a vinyl silicone rubber) and a polyorganosiloxane having Si-H bonds (i.e., a cross-linking agent according to the instant specification para. [0008] and [0011]) which is cured in the presence of a platinum metal catalyst ([0033]) (i.e., a second component according to the instant specification para. [0041]). Hayasaka and Nagata are considered analogous art because they are directed towards the same field of endeavor, namely, modified silicone resin compositions for acoustic/ultrasound articles. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a curable silicone rubber system based on a polyorganosiloxane having vinyl groups (i.e., a vinyl silicone rubber) and a polyorganosiloxane having Si-H bonds (i.e., a cross-linking agent according to the instant specification para. [0008] and [0011]) which is cured in the presence of a platinum metal catalyst ([0033]) (i.e., a second component according to the instant specification para. [0041]) for the silicone rubber component required by Hayasaka based on the finding that Nagata teaches that such a system is recognized within the art as suitable for use as a silicone rubber component within a modified blend having properties amenable for forming acoustic/ultrasound articles (e.g., acoustic impedance, attenuation, see [0003] of Nagata). It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
As to Claim 5 and 7: Hayasaka teaches the modified silicone rubber of claim 4 (supra).
Hayasaka teaches wherein the silicone rubber may be an organopolysiloxane having vinyl groups ([0006]), but does not explicitly teach a structure thereof.
Nagata teaches a related resin material for acoustic wave probes, acoustic lenses, and ultrasound diagnostic devices ([0001]) comprising a blend of a resin (a) having a fluorine atom and a resin (b) containing a unit having a polysiloxane bond ([0009]) wherein the resin (b) may be a curable silicone rubber based on a polyorganosiloxane having vinyl groups (i.e., a vinyl silicone rubber) and a polyorganosiloxane having Si-H bonds (i.e., a cross-linking agent including an Si-H bond) which is cured in the presence of a platinum metal catalyst ([0033]). Nagata teaches exemplary rubbers formed with polysiloxanes having vinyl groups at least at both ends of the molecular chain, including the commercial product DMS-V46, for which Gelest1 provides evidence has the structure:
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which reads on the claimed formula I wherein R1a, R1b, R1c, and R1d are H. Gelest also provides evidence that DMS-V46 exhibits a molecular weight of 117,000 g/mol, which is within the claimed range for n (wherein the repeat unit of DMS-V46 shown above ≈ 74 g/mol). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a curable silicone rubber system based on a polyorganosiloxane having the claimed structure and a polyorganosiloxane having Si-H bonds (i.e., a cross-linking agent according to the instant specification para. [0008] and [0011]) which is cured in the presence of a platinum metal catalyst ([0033]) (i.e., a second component according to the instant specification para. [0041]) for the silicone rubber component required by Hayasaka based on the finding that Nagata teaches that such a system is recognized within the art as suitable for use as a silicone rubber component within a modified blend having properties amenable for forming acoustic/ultrasound articles (e.g., acoustic impedance, attenuation, see [0003] of Nagata). It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
As to Claim 6: Hayasaka teaches the modified silicone rubber of claim 4 (supra).
Hayasaka does not teach that the rubber comprises a silicone oil.
Nagata teaches a related resin material for acoustic wave probes, acoustic lenses, and ultrasound diagnostic devices ([0001]) comprising a blend of a resin (a) having a fluorine atom and a resin (b) containing a unit having a polysiloxane bond ([0009]) wherein the resin (b) may be a curable silicone rubber based on a polyorganosiloxane having vinyl groups (i.e., a vinyl silicone rubber) and a polyorganosiloxane having Si-H bonds and further teaches methylhydrosiloxane (MeHSiO) as an exemplary compound ([0070]). Nagata further teaches that the composition may comprise a silicone compound including methylhydrogen silicone oil ([0110]), which improves the hardness and/or mechanical strength of acoustic wave probe resins when mixed with inorganic compound particles within the composition ([0109]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a methylhydrogen silicone oil within the composition of Hayasaka and the motivation would have been that Nagata teaches that methylhydrogen silicone oil is recognized within the art as suitable for blending with silicone rubbers with inorganic fillers for acoustic wave probe applications and is known to improve the hardness and/or mechanical strength thereof ([0109]).
As to Claim 8: Hayasaka teaches the modified silicone rubber of claim 4 (supra).
Hayasaka is silent towards wherein the silicone rubber (i.e., first component) comprises a cross-linking agent that is polymethylhydrogensiloxane.
Nagata teaches a related resin material for acoustic wave probes, acoustic lenses, and ultrasound diagnostic devices ([0001]) comprising a blend of a resin (a) having a fluorine atom and a resin (b) containing a unit having a polysiloxane bond ([0009]) wherein the resin (b) may be a curable silicone rubber based on a polyorganosiloxane having vinyl groups (i.e., a vinyl silicone rubber) and a polyorganosiloxane having Si-H bonds and further teaches methylhydrosiloxane (MeHSiO) as an exemplary compound ([0070]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a curable silicone rubber system based on a polyorganosiloxane having the claimed structure and a polyorganosiloxane having the structure polymethylhydrogensiloxane which is cured in the presence of a platinum metal catalyst ([0033]) for the silicone rubber component required by Hayasaka based on the finding that Nagata teaches that such a system is recognized within the art as suitable for use as a silicone rubber component within a modified blend having properties amenable for forming acoustic/ultrasound articles (e.g., acoustic impedance, attenuation, see [0003] of Nagata). It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
As to Claims 9 and 10: Hayasaka teaches the modified silicone rubber of claim 4 (supra).
Hayasaka further teaches that the silicone rubber (i.e., first component) may comprise benzoyl peroxide, an organic peroxide, which reads on the claimed inhibitor according to the instant specification para. [0039]).
As to Claim 11: Hayasaka teaches the modified silicone rubber of claim 9 (supra).
Hayasaka further teaches that the composition may comprise inorganic fillers including zinc oxide (pg. 5, final paragraph).
As to Claim 14: Hayasaka teaches the modified silicone rubber of claim 13 (see above).
Hayasaka is silent towards wherein the fourth component includes a compound from the claimed group.
Nagata teaches a related resin material for acoustic wave probes, acoustic lenses, and ultrasound diagnostic devices ([0001]) comprising a blend of a resin (a) having a fluorine atom and a resin (b) containing a unit having a polysiloxane bond ([0009]) wherein the resin (b) may be a curable silicone rubber based on a polyorganosiloxane having vinyl groups (i.e., a vinyl silicone rubber) and a polyorganosiloxane having Si-H bonds (i.e., a cross-linking agent according to the instant specification para. [0008] and [0011]) which is cured in the presence of a platinum metal catalyst ([0033]) (i.e., a second component according to the instant specification para. [0041]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a platinum catalyst to cure the silicone rubber component of Hayasaka, such as that suggested by Nagata, and the motivation would have been that Nagata teaches that such a silicone/curing system is recognized within the art as suitable for use as a silicone rubber component within a modified blend having properties amenable for forming acoustic/ultrasound articles (e.g., acoustic impedance, attenuation, see [0003] of Nagata). It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
As to Claim 18: Hayasaka teaches the modified silicone rubber of claim 1 (see above).
Hayasaka is silent towards wherein the composition exhibits the properties within the claimed ranges.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process as can be construed by the definition of the claimed components in the instant specification. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. impedance, sound attenuation, or Shore hardness, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
1 Gelest DMS-V46 – Product Page (Identifying Information), referred to above as “Gelest”
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