DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1 to 13 are pending. Claims 1 to 13 are under examination on the merits.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [027], line 1, “stress-straincurves” should read “stress-strain curves”.
In paragraph [0118], line 1, “The DSDsare measured” should read “The DSDs are measured”.
In paragraph [0131], line 1, “The DSDsare measured” should read “The DSDs are measured”.
In paragraph [0158], line 1, “stress-straincurves” should read “stress-strain curves”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Dai et al. (Tunable Thermoresponsive Flexible Films for Adaptive Temperature Management and Visual Temperature Monitoring, ACS Applied Materials & Interfaces, 2022, 14 (25): 29284–29291; hereinafter “Dai”), in view of Yoon et al. (Natural cork/potato periderm derivatives enabled interface engineering of elastomer composites for tunable energy-absorbing capabilities, Industrial Crops and Products, 2021, Volume 170, 113763; hereinafter “Yoon”) as further evidenced by Garcia et al. (Ex Situ Reconstitution of the Plant Biopolyester Suberin as a Film, Biomacromolecules, 2014; 15 (5): 1806–1813; hereinafter “Garcia”).
Regarding claim 1: Dai teaches a polymer film comprising polydimethylsiloxane (PDMS), phase-change materials (PCMs), and a curing agent (page 29290, section 4.2). The polymer film is thermoresponsive, i.e., responds to thermal stimuli (Abstract; page 29286, right column, last paragraph; and Figure 4). Dai teaches that the PDMS film comprises PCMs, which switch between solid (crystalline) phase and liquid (molten) phase in response to thermal stimulus (heating or cooling). Therefore, the PCM@PDMS film is capable of switching optical transmittance in response to thermal stimulus (page 29285, Figure 1 and page 29289, Section 3, Conclusion). The PCMs used in Dai are aliphatic compounds, hexadecane (C16), octadecane (C18), and eicosane (C20) which show different phase transition temperatures (melting and crystallization temperatures, page 29288, Table 1). Dai does not disclose the polymer film comprising depolymerized suberin derivatives (DSDs), nor the polymer film having antibacterial properties.
However, Yoon teaches silica-reinforced styrene-butadiene rubber (SBR) composites comprising depolymerized suberin derivatives (DSDs) (Abstract). The DSDs comprise aliphatic compounds (e.g., long-chain ω-hydroxy fatty acids, α- and ω-dicarboxylic acids) (page 1, right column, line 14 to page 2, left column, line 5, and Fig. 1) and they have phase transition temperatures. For example, C-DSDs exhibit melting temperature of 65 oC and crystallization temperature about 39 oC (page 3, Fig. 2 (d) and page 5, left column, 2nd paragraph). Therefore, DSDs are phase-change materials which switch between solid (crystalline) phase and liquid (molten) phase in response to thermal stimulus (heating or cooling). As further evidenced Garcia teaches that the reconstituted film from depolymerized suberin show antimicrobial properties (page 1810, right column, second paragraph to page 1811, left column, first paragraph).
Both Dai and Yoon disclose polymer composites comprising PCMs based on aliphatic compounds. Therefore, a person of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the DSDs of Yoon could have been substituted for the PCMs (hexadecane/octadecane/eicosane) of Dai because both DSDs and hexadecane/octadecane/eicosane serve the purpose phase change switching between solid (crystalline) phase and liquid (molten) phase in response to thermal stimulus (heating or cooling). Furthermore, a person of ordinary skill in the art would have been able to carry out the substitution and achieve the predictable result of forming a PDMS film responsive to thermal stimulus.
Since Dai in view of Yoon teaches substantially identical the composition for forming a PDMS/DSDs composite film as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. antibacterial properties, would be expected to be the same as claimed. If there is any difference between the product of Dai in view of Yoon and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Regarding claims 2-3: The disclosure of Dai in view of Yoon is adequately set forth in paragraph above and is incorporated herein by reference. Dai teaches that the precursor of PDMS was made by mixing the base and the curing agent of PDMS at a 10:1 weight ratio, and the PCM@PDMS films loaded with different PCM contents ranging from 20 to 80 wt % were prepared, specifically, with PCM contents of 20, 40, 60, and 80 wt % (page 29290, section 4.2). For a PCM@PDMS film loaded with PCM contents of 20 wt%, considering the precursor of PDMS and curing agent a 10:1 weight ratio, the following weigh percentage of each component are obtained based on the total weight of the composition:
PCM 20 wt%
PDMS 72.7 wt%
Curing agent 7.3 wt%
Thus, the weight ratio of PCM to PDMS is 20%/72.7% * 100% = 27.5%. This weight ratio reads on the limitation of claim 2 “a weight ratio of the DSDs to the PDMS is in a range of 10 to 30 wt%”.
As outlined above, Dai teaches that the base and the curing agent of PDMS are mixed at a 10:1 weight ratio, which reads on the limitation of claim 3, wherein a weight ratio of the curing agent to the PDMS is in a range of 5 to 15 wt%.
Regarding claim 5: The disclosure of Dai in view of Yoon is adequately set forth in paragraph above and is incorporated herein by reference. Dai teaches a method of preparing PCM@PDMS films, comprising (Dai, page 29290, section 4.2): the solid PCM (C18 and C20) was melted at high temperature, the precursor of PDMS was made by mixing the base and the curing agent of PDMS at a 10:1 weight ratio, then, the liquid PCM (C16, C18, and C20) and precursor of PDMS were mixed in a 60 °C oven, the resulting mixture was stirred and defoamed for 20 min in a 60 °C oven, and after that, the mixture was kept in an oven at 60 °C overnight to receive transparent PCM@PDMS films. Dai teaches that the base and the curing agent of PDMS are mixed first to form the precursor of PDMS and then the liquid PCMs are mixed with the precursor of PDMS. The sequence of mixing the three components (base PDMS, curing agent, PCM) is different from the claimed invention, wherein DSDs are first mixed PDMS to form a mixture and then a curing agent is added to the mixture.
Yoon teaches a method of preparing styrene-butadiene rubber (SBR) composites, wherein SBR, silica and DSDs (C-DSDs and P-DSDs, as coupling agent) are first mixed to form a mixture (elastomer compound) and then curing agents (crosslinking agents) are added the mixture (Yoon, page 2, section 2.3).
Thus, a person of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the DSDs of Yoon could have been substituted for the PCMs (hexadecane/octadecane/eicosane) of Dai because both DSDs and hexadecane/octadecane/eicosane serve the purpose phase change switching between solid (crystalline) phase and liquid (molten) phase in response to thermal stimulus (heating or cooling). Furthermore, a person of ordinary skill in the art would have been able to carry out the substitution and achieves the predictable result of forming a PDMS composite film comprising DSDs.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Dai to first mix PDMS with DSDs to form a mixture and then add the curing agent to the mixture. Doing so will achieve the same mixing effect as in the claimed invention.
Regarding claim 6: The disclosure of Dai in view of Yoon is adequately set forth in paragraph above and is incorporated herein by reference. As discussed in claims 2-3, Dai teaches that the forming of the mixture includes mixing the PDMS with the DSDs so that a weight ratio of the DSDs to the PDMS is in a range of 10 to 30 wt%.
Regarding claim 7: The disclosure of Dai in view of Yoon is adequately set forth in paragraph above and is incorporated herein by reference. Dai teaches that the liquid PCM (C16, C18, and C20) and precursor of PDMS were mixed in a 60 °C oven. Dai does not expressly teach that the forming of the mixture is performed in a temperature range of 65 to 100 °C. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dai to raise the mixing temperature from 60 °C to a temperature higher than the melting temperature of DSDs (65 °C) (Yoon, page 3 Fig. 2 (d) and page 5, left column, 2nd paragraph) in order to melt DSDs. Also, a person having ordinary skill in the art would recognize that melting temperature is a routine parameter to control process quality and efficiency. Given the prior art’s effectiveness, it would be obvious to select a melting temperature within a reasonable range, such as 65 to 100 oC, to achieve the desired results without undue experimentation. Therefore, the claimed temperature range is obvious over the prior art.
Regarding claim 8: The disclosure of Dai in view of Yoon is adequately set forth in paragraph above and is incorporated herein by reference. Dai teaches the solid PCMs (C18 and C20) are melted at high temperature (Dai, page 29290, section 4.2) but does not specify the duration for melting the solid PCMs.
However, a person having ordinary skill in the art would recognize that melting time is a routine parameter to control process quality and efficiency. Given the prior art’s effectiveness, it would be obvious to select a melting time within a reasonable range, such as 20–30 minutes, to achieve the desired results without undue experimentation. Therefore, the claimed time range is obvious over the prior art.
Regarding claim 9, The disclosure of Dai in view of Yoon is adequately set forth in paragraph above and is incorporated herein by reference. Dai teaches that the base and the curing agent of PDMS are mixed at a 10:1 weight ratio (page 29290, section 4.2), which reads on the limitation of claim 9 “a weight ratio of the curing agent to the PDMS is in a range of 5 to 15 wt%”.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Dai et al. (Tunable Thermoresponsive Flexible Films for Adaptive Temperature Management and Visual Temperature Monitoring, ACS Applied Materials & Interfaces, 2022, 14 (25): 29284–29291; hereinafter “Dai”), in view of Yoon et al. (Natural cork/potato periderm derivatives enabled interface engineering of elastomer composites for tunable energy-absorbing capabilities, Industrial Crops and Products, 2021, Volume 170, 113763; hereinafter “Yoon”) as applied to claim 1 above, and further in view of Brostowitz et al. (Facile Fabrication of a Shape Memory Polymer by Swelling Cross-Linked Natural Rubber with Stearic Acid, ACS Macro Letters, 2014, 3 (4): 374–377; hereinafter “Brostowitz”) for the teaching of shape memory property.
Regarding claim 4: The disclosure of Dai in view of Yoon is adequately set forth in paragraph 5 and is incorporated herein by reference. Dai in view of Yoon does not expressly teach that the stimulus responsive property is a shape memory property which responds to a thermal stimulus.
However, Brostowitz teaches a shape memory polymer by swelling cross-linked natural rubber with stearic acid (Abstract). Commercial rubber bands were swollen in molten stearic acid at 75 °C (35 wt % stearic acid loading). When cooled the crystallization of the stearic acid formed a percolated network of crystalline platelets. The microscopic crystals and the crosslinked rubber produce a temporary network and a permanent network, respectively. These two networks allow thermal shape memory cycling with deformation and recovery above the melting point of stearic acid and fixation below that point. The main drivers of the shape memory are the melting/ crystallization of the stearic acid network and the entropic recovery force of the cross-linked natural rubber (Brostowitz, page 376, right column, 2nd paragraph).
The disclosure of Dai in view of Yoon and that of Brostowitz are similar in that:
The polymer matrices are both crosslinked elastomers (cured PDMS vs. natural rubber); and
The functional additives are both PCMs (DSDs vs. stearic acid) which switch between solid (crystalline) phase and liquid (molten) phase in response to thermal stimulus (heating or cooling).
Based on the similarities above, a person of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that applying the known technique (melting/crystallization of the stearic acid network and the entropic recovery force of the cross-linked natural rubber as taught by Brostowitze) to the base product (PDMS/DSDs film as taught by Dai in view of Yoon) would have yielded the predictable result of showing a shape memory property which responds to a thermal stimulus.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Dai et al. (Tunable Thermoresponsive Flexible Films for Adaptive Temperature Management and Visual Temperature Monitoring, ACS Applied Materials & Interfaces, 2022, 14 (25): 29284–29291; hereinafter “Dai”), in view of Yoon et al. (Natural cork/potato periderm derivatives enabled interface engineering of elastomer composites for tunable energy-absorbing capabilities, Industrial Crops and Products, 2021, Volume 170, 113763; hereinafter “Yoon”) as applied to claim 5 above, and further in view of Fukui et al.(U. S. Patent Application Publication No. US2020/0087514 A1, published 03/19/2020; hereinafter “Fukui”).
Regarding claim 10: The disclosure of Dai in view of Yoon is adequately set forth in paragraph 5 above and is incorporated herein by reference. Dai teaches that the resulting mixture was stirred and defoamed for 20 min in a 60 °C oven (Dai, page 29290, section 4.2). Defoaming is a process to remove bubbles in PDMS. Dai in view of Yoon does not teach the processing and curing of the mixture in the form of the film includes:
spreading the formed mixture in a predetermined thickness;
removing bubbles inside the mixture spread in the predetermined thickness;
primarily curing the mixture from which the bubbles have been removed; and
secondarily curing the mixture subjected to the primary curing operation;
and whether the defoaming process is performed before or after spreading PDMS mixture.
However, Fukui teaches a method of forming a silicone gel layer on a substrate, the method including (Fukui, page 12, [0105]): a step (A-1) of coating a curable silicone composition capable of forming a silicone gel layer by primarily curing reaction on at least one type of substrate, and a step (A-2) of forming a curable reactive silicone gel layer by primarily curing of the curable silicone composition in a gel form on the substrate. The method further includes a secondary curing and the silicone gel layer is changed into a hard cured layer having higher shape retention (Fukui, page 12, [0111], [0113]). Fukui further teaches that “[t]he curing reactive silicone gel is obtained as a gel form cured product of a curable silicone composition (primarily curing reaction). Here, unreacted curing reactive functional groups or unreacted organic peroxides are present in the silicone crosslinked product constituting the silicone gel, and further curing reaction (secondarily curing reaction) proceeds by the above-mentioned curing operation to form a hard cured product having a higher crosslink density. When the curable silicone composition is used as a starting material, a curing reactive silicone gel layer, which is a constituent element of the present invention, is obtained by a primarily curing reaction, and further, the silicone gel is changed to a harder cured layer by a secondarily curing reaction” (page 3, [0030]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Dai to incorporate the teachings of Fukui to include a primary curing and a secondary curing to cure the PDMS mixture in the form of a film. Doing so will provide a film having higher shape retention, as taught by Fukui (page 12, [0113]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since changes in sequence of adding ingredients such as the defoaming process after spreading PDMS mixture is within the level ordinary skill in the art.
Regarding claim 11, The disclosure of Dai in view of Yoon, and Fukui is adequately set forth in paragraph above and is incorporated herein by reference. Dai teaches that PCM@PDMS films with different thickness are prepared (e.g., ~1.5, 2.5, 3.5, and 5 mm) (Dai, page 29288, right column, lines 29 to 32). Dai in view of Yoon does not expressly teach that the predetermined thickness is in a range of 500 to 600 μm.
However, Fukui further teaches that the thickness of the silicone gel layer is not particularly limited, but the average thickness may be in the range of 10 to 500 μm, in the range of 25 to 300 μm, or in the range of 30 to 200 μm (Fukui, page 2, [0022]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Dai in view of Yoon and further in view Fukui to provide the predetermined thickness in the range of 500 to 600 μm.
Regarding claim 12: The disclosure of Dai in view of Yoon, and Fukui is adequately set forth in paragraph above and is incorporated herein by reference.
Fukui further teaches that the primarily curing in a temperature range of room temperature to 100° C (Fukui, page 6, [0051]). Specifically, Fukui teaches that the silicone composition before curing (liquid) was heated at 80° C for 2 hours to proceed the hydrosilylation reaction (i.e., primary curing) to obtain a gel form product (Fukui, page 14, [0134]).
Regarding claim 13: The disclosure of Dai in view of Yoon, and Fukui is adequately set forth in paragraph above and is incorporated herein by reference. Fukui further teaches that the secondarily curing reaction is selectively progressed by irradiation with high energy rays or heating at 100° C or higher, preferably at 120° C. or higher, more preferably at 150° C. or higher (Fukui, page 6, [0049]). Specifically, Fukui teaches that the curable gel layer was secondarily cured in nitrogen at 170 °C for 1 hour (page 14, [0137]); or the curable gel layer was secondarily cured at 150 °C for 30 minutes (page 14, [0138]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the teachings of Dai in view of Yoon and further in view of Fukui to provide that the secondary curing operation includes curing the mixture at a temperature of 120 to 160 °C for 50 to 70 minutes.
Conclusion
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/HAOPENG WANG/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/ Supervisory Patent Examiner, Art Unit 1763
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