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 .
Claim Interpretation
Claims 1, 8 and 12: High temperature is interpreted as greater than or equal to 500 oC (see instant specification [0026; 0041]).
Claim Objections
Claims 13-16 objected to because of the following informalities: “An object” should be “The object”. Appropriate correction is required.
Claims 18-20 objected to because of the following informalities: “A battery” should be “The battery”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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(s) 1 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tono et al. (JP 2000-239492). English machine translation for citation.
Regarding claims 1 and 5-7: Tono et al. (JP ‘492) discloses a fire-resistant resin composition [abstract; 0001; 0055], wherein Example 2 [Ex. 2; 0056-0060; Table 1, Ex. 2] contains 40 parts by weight epoxy resin E807 (bisphenol F type [0057]), 60 parts by weight EKFL052 (diamine curing agent [0057]), 30 parts by weight glass fiber (CS 6PE-401; 6mm length, 13 µm diameter [0057]), parts by weight glass powder (Conac; 5 µm [0057]), 80 parts by weight ammonium polyphosphate (AP422 [0057]), and 150 parts by weight aluminum hydroxide (H-3; [0057]) [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses curing the composition into a test piece [0057-0058].
The claimed effects and physical properties, i.e. the thermoset polymer composition is ceramified after being exposed to a high temperature or a flame and maintains its insulation properties [instant claim 1]; the composition maintains its mechanical properties after being exposed to a high temperature or a flame [instant claim 7], would inherently be achieved, as “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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tono et al. (JP 2000-239492). English machine translation for citation.
Regarding claim 8: Tono et al. (JP ‘492) discloses a method of preparing a fire-resistant resin composition [abstract; 0001], wherein Example 2 [Ex. 2; 0056-0060; Table 1, Ex. 2] prepares a composition containing 40 parts by weight epoxy resin E807 (bisphenol F type [0057]), 60 parts by weight EKFL052 (diamine curing agent [0057]), 30 parts by weight glass fiber (CS 6PE-401; 6mm length, 13 µm diameter [0057]), parts by weight glass powder (Conac; 5 µm [0057]), 80 parts by weight ammonium polyphosphate (AP422 [0057]), and 150 parts by weight aluminum hydroxide (H-3; [0057]) [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses knead rolling the composition with subsequent curing into a test piece, wherein the test piece was irradiated with radiation heat for combustion [0057-0059].
The claimed effects and physical properties, i.e. forming a ceramifiable layer [instant claim 8], would inherently be achieved, as “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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tono et al. (JP 2000-239492). English machine translation for citation.
Regarding claim 12: Tono et al. (JP ‘492) discloses a fire-resistant resin composition [abstract; 0001], wherein Example 2 [Ex. 2; 0056-0060; Table 1, Ex. 2] prepares a composition containing 40 parts by weight epoxy resin E807 (bisphenol F type [0057]), 60 parts by weight EKFL052 (diamine curing agent [0057]), 30 parts by weight glass fiber (CS 6PE-401; 6mm length, 13 µm diameter [0057]), parts by weight glass powder (Conac; 5 µm [0057]), 80 parts by weight ammonium polyphosphate (AP422 [0057]), and 150 parts by weight aluminum hydroxide (H-3; [0057]) [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses knead rolling the composition with subsequent curing into a test piece (object), wherein the test piece was irradiated with radiation heat for combustion [0057-0059].
Claim(s) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tono et al. (JP 2000-239492). English machine translation for citation.
Regarding claim 17: Tono et al. (JP ‘492) discloses a fire-resistant resin composition [abstract; 0001], wherein Example 2 [Ex. 2; 0056-0060; Table 1, Ex. 2] prepares a composition containing 40 parts by weight epoxy resin E807 (bisphenol F type [0057]), 60 parts by weight EKFL052 (diamine curing agent [0057]), 30 parts by weight glass fiber (CS 6PE-401; 6mm length, 13 µm diameter [0057]), parts by weight glass powder (Conac; 5 µm [0057]), 80 parts by weight ammonium polyphosphate (AP422 [0057]), and 150 parts by weight aluminum hydroxide (H-3; [0057]) [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses knead rolling the composition with subsequent curing into a test piece (object), wherein the test piece was irradiated with radiation heat for combustion [0057-0059]. Tono et al. (JP ‘492) discloses molded bodies of complicated shapes [0020].
Tono et al. (JP ‘492) does not specifically disclose a battery enclosure. However, a recitation of the 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 structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tao et al. (US 2021/0206971).
Regarding claims 1 and 7: Tao et al. (US ‘971) discloses silicone composites [abstract], wherein Example 1 [Ex. 1; 0040] prepares a silicone rubber containing 50 wt% magnesium hydroxide, compression molds the composition with subsequent curing to afford the silicone composite [Ex. 1; 0040]. Tao et al. (US ‘971) discloses exposing the cured silicone composite to 500 oC to form an inorganic composite [Ex. 1; 0040]. Tao et al. (US ‘971) discloses the composite maintains its insulating properties [0029] and maintains its strength after being exposed to high temperatures [0029]
Claim(s) 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tao et al. (US 2021/0206971).
Regarding claim 8: Tao et al. (US ‘971) discloses a process of preparing silicone composites [abstract], wherein Example 1 [Ex. 1; 0040] prepares a silicone rubber containing 50 wt% magnesium hydroxide, compression molds the composition with subsequent curing to afford the silicone composite. Tao et al. (US ‘971) discloses exposing the cured silicone composite to 500 oC to form an inorganic composite [Ex. 1; 0040].
Claim(s) 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tao et al. (US 2021/0206971).
Regarding claim 12: Tao et al. (US ‘971) discloses silicone composites [abstract], wherein Example 1 [Ex. 1; 0040] prepares a silicone rubber containing 50 wt% magnesium hydroxide, compression molds the composition with subsequent curing to afford the silicone composite (object). Tao et al. (US ‘971) discloses exposing the cured silicone composite to 500 oC to form an inorganic composite [Ex. 1; 0040].
Claim(s) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tao et al. (US 2021/0206971).
Regarding claim 17: Tao et al. (US ‘971) discloses silicone composites [abstract] for a battery package [0012], wherein Example 1 [Ex. 1; 0040] prepares a silicone rubber containing 50 wt% magnesium hydroxide, compression molds the composition with subsequent curing to afford the cured silicone composite molded to a desired shape [Ex. 1; 0034; 0040].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tono et al. (JP 2000-239492) (English machine translation for citation) as applied to claim 1 above.
Regarding claim 2: Tono et al. (JP ‘492) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing a flexible epoxy. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a flexible epoxy based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Regarding claim 3: Tono et al. (JP ‘492) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the composition can contain silica [0028]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 4: Tono et al. (JP ‘492) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Tono et al. (JP ‘492) discloses Ex. 2 contains aluminum hydroxide [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028]. Tono et al. (JP ‘492) discloses the composition can contain calcium hydroxide and magnesium hydroxide [0029].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica, calcium hydroxide and magnesium hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica, calcium hydroxide and magnesium hydroxide based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) disclose the composition can contain silica [0028], calcium hydroxide [0029] and magnesium hydroxide [0029]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tono et al. (JP 2000-239492) (English machine translation for citation) as applied to claim 8 above.
Regarding claim 9: Tono et al. (JP ‘492) discloses the basic claimed process [as set forth above with respect to claim 8]; wherein Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the composition can contain silica [0028]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 10: Tono et al. (JP ‘492) discloses the basic claimed process [as set forth above with respect to claim 8]; wherein Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing a flexible epoxy. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a flexible epoxy based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Regarding claim 11: Tono et al. (JP ‘492) discloses the basic claimed process [as set forth above with respect to claim 8]; wherein Tono et al. (JP ‘492) discloses Ex. 2 contains aluminum hydroxide [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028]. Tono et al. (JP ‘492) discloses the composition can contain calcium hydroxide and magnesium hydroxide [0029].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica, calcium hydroxide and magnesium hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica, calcium hydroxide and magnesium hydroxide based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the composition can contain silica [0028], calcium hydroxide [0029] and magnesium hydroxide [0029]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tono et al. (JP 2000-239492) (English machine translation for citation) as applied to claim 12 above.
Regarding claim 13: Tono et al. (JP ‘492) discloses the basic claimed object [as set forth above with respect to claim 12]; wherein Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing a flexible epoxy. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a flexible epoxy based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Regarding claim 14: Tono et al. (JP ‘492) discloses the basic claimed object [as set forth above with respect to claim 13]; wherein Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility by dispersing rubber particles [0017-0020]. Tono et al. (JP ‘492) discloses the flexibility of the epoxy can be adjusted to afford molded bodies of complicated shapes [0020].
Tono et al. (JP ‘492) does not specifically disclose a flexible epoxy having a Shore A hardness of less than 60 and an elongation above 8%. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 15: Tono et al. (JP ‘492) discloses the basic claimed object [as set forth above with respect to claim 12]; wherein Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the composition can contain silica [0028]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 16: Tono et al. (JP ‘492) discloses the basic claimed object [as set forth above with respect to claim 12]; wherein Tono et al. (JP ‘492) discloses Ex. 2 contains aluminum hydroxide [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028]. Tono et al. (JP ‘492) discloses the composition can contain calcium hydroxide and magnesium hydroxide [0029].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica, calcium hydroxide and magnesium hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica, calcium hydroxide and magnesium hydroxide based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the composition can contain silica [0028], calcium hydroxide [0029] and magnesium hydroxide [0029]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tono et al. (JP 2000-239492) (English machine translation for citation) as applied to claim 17 above.
Regarding claim 18: Tono et al. (JP ‘492) discloses the basic claimed enclosure [as set forth above with respect to claim 17]; wherein Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing a flexible epoxy. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a flexible epoxy based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the epoxy resin can be provided with flexibility [0017-0020].
Regarding claim 19: Tono et al. (JP ‘492) discloses the basic claimed enclosure [as set forth above with respect to claim 17]; wherein Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the composition can contain silica [0028]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 20: Tono et al. (JP ‘492) discloses the basic claimed enclosure [as set forth above with respect to claim 17]; wherein Tono et al. (JP ‘492) discloses Ex. 2 contains aluminum hydroxide [Ex. 2; 0056-0060; Table 1, Ex. 2]. Tono et al. (JP ‘492) discloses the composition can contain inorganic fillers, such as silica [0028]. Tono et al. (JP ‘492) discloses the composition can contain calcium hydroxide and magnesium hydroxide [0029].
Tono et al. (JP ‘492) does not specifically disclose Ex. 2 containing silica, calcium hydroxide and magnesium hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included silica, calcium hydroxide and magnesium hydroxide based on the invention of Tono et al. (JP ‘492), and would have been motivated to do so since Tono et al. (JP ‘492) discloses the composition can contain silica [0028], calcium hydroxide [0029] and magnesium hydroxide [0029]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (US 2021/0206971) as applied to claim 1 above.
Regarding claim 3: Tao et al. (US ‘971) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 4: Tao et al. (US ‘971) discloses the basic claimed enclosure [as set forth above with respect to claim 1]; wherein Tao et al. (US ‘971) discloses Ex. 1 contains magnesium hydroxide [Ex. 1; 0040]. Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Tao et al. (US ‘971) discloses the silicone can contain calcium hydroxide and aluminum hydroxide [0033].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica, calcium hydroxide and aluminum hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica, calcium hydroxide and aluminum hydroxide based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031], calcium hydroxide [0033] and aluminum hydroxide [0033]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (US 2021/0206971) as applied to claim 8 above.
Regarding claim 9: Tao et al. (US ‘971) discloses the basic claimed process [as set forth above with respect to claim 8]; wherein Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 11: Tao et al. (US ‘971) discloses the basic claimed process [as set forth above with respect to claim 8]; wherein Tao et al. (US ‘971) discloses Ex. 1 contains magnesium hydroxide [Ex. 1; 0040]. Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Tao et al. (US ‘971) discloses the silicone can contain calcium hydroxide and aluminum hydroxide [0033].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica, calcium hydroxide and aluminum hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica, calcium hydroxide and aluminum hydroxide based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031], calcium hydroxide [0033] and aluminum hydroxide [0033]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (US 2021/0206971) as applied to claim 12 above.
Regarding claim 15: Tao et al. (US ‘971) discloses the basic claimed object [as set forth above with respect to claim 12]; wherein Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 16: Tao et al. (US ‘971) discloses the basic claimed enclosure [as set forth above with respect to claim 12]; wherein Tao et al. (US ‘971) discloses Ex. 1 contains magnesium hydroxide [Ex. 1; 0040]. Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Tao et al. (US ‘971) discloses the silicone can contain calcium hydroxide and aluminum hydroxide [0033].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica, calcium hydroxide and aluminum hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica, calcium hydroxide and aluminum hydroxide based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031], calcium hydroxide [0033] and aluminum hydroxide [0033]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. (US 2021/0206971) as applied to claim 17 above.
Regarding claim 19: Tao et al. (US ‘971) discloses the basic claimed enclosure [as set forth above with respect to claim 17]; wherein Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 20: Tao et al. (US ‘971) discloses the basic claimed enclosure [as set forth above with respect to claim 17]; wherein Tao et al. (US ‘971) discloses Ex. 1 contains magnesium hydroxide [Ex. 1; 0040]. Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031]. Tao et al. (US ‘971) discloses the silicone can contain calcium hydroxide and aluminum hydroxide [0033].
Tao et al. (US ‘971) does not specifically disclose Ex. 1 containing fumed silica, calcium hydroxide and aluminum hydroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included fumed silica, calcium hydroxide and aluminum hydroxide based on the invention of Tao et al. (US ‘971), and would have been motivated to do so since Tao et al. (US ‘971) discloses the silicone can contain fumed silica [0031], calcium hydroxide [0033] and aluminum hydroxide [0033]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
See attached form PTO-892.
Correspondence
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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