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 II, claims 4-8, in the reply filed on 11/16/2025 is acknowledged.
Claims 1-3 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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) 4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kashimura et al. (US 2021/0079258; “Kashimura”).
Regarding independent claim 4, Kashimura teaches a laminate structure comprising (para [0048]-[0056], the laminated tube, Fig. 1):
- a first layer (layer 13) comprising silicone rubber as a base material (Fig. 1, para [0054], the suitable material for layer 13 includes silicone rubber); and
- a second layer (layer 14) laminated to the first layer (layer 13, see Fig. 1, layer 14 is laminated to layer 13), the second layer (layer 14) comprising
- silicone rubber as a base material (para [0056], [0068]-0069]),
- silicone resin fine particles (para [0072], Kashimura teaches its layer 14 is formed from a rubber composition includes a silicone rubber as base material with fine particles finely dispersed, of which Kashimura teaches the fine particles include silicone rubber fine particles, see para [0072]),
- metal oxide fine particles (para [0087], [0088], includes suitable metal oxide fine particles such as TiO2), and
- nanosilica fine particles (para [0072] [0081], further includes suitable silica fine/ultrafine particles including those silica having particles size of nano scale, of not smaller than 10 nm and no larger than 30 nm, i.e., nanosilica fine particles, meeting the claimed limitations).
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Regarding claim 7, Kashimura teaches a cable comprising an insulator comprising the laminate structure (para [0048] [0050], Fig. 1, cable 10 comprising a sheath of insulting material/insulator), meeting the claimed limitations.
Regarding claim 8, Kashimura teaches a tube comprising an insulator comprising the laminate structure (para [0048] [0050], Fig. 1, tube 10 comprising a sheath of insulting material/insulator), meeting the claimed limitations.
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.
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.
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) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kashimura as applied to claim 4 above.
The limitations of claim 4 are taught by Kashimura as discussed above.
Regarding claim 5, Kashimura teaches the second layer of its laminate structure includes suitable metal oxide fine particles such as titanium dioxide (TiO2, para [0087], [0088]), meeting the claimed material limitations.
It is noted that Kashimura teaches the suitable amount of nanosilica fine particles in the second layer is about 0.1% by mass to 0.5 % by mass (para [0082]), and Kashimura teaches the suitable amount of titanium dioxide in the second layer is about 0.1% by mass to 10% by mass (para [0089]). As such, the calculated mass% concentration of the nanosilica fine particles in the second layer over the mass% concentration of Ti is about 0.01 to 5 times (i.e., 0.1%/0.1% = 1, 0.5% to 0.1%=5), which range overlaps with the instantly claimed range of claim 5, i.e., mass% concentration of the nanosilica fine particles in the second layer is 1.14 times or more than mass% concentration of Ti and 11.5 mass% or less. In the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 6, Kashimura teaches the suitable amount of titanium dioxide in the second layer is about 0.1% by mass to 10% by mass (para [0089]), which range overlaps with the instantly claimed range of 1.0 mass% or more and 4.4 mass% or less. In the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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/YAN LAN/Primary Examiner, Art Unit 1782