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 .
Claims Status
Claims 1-11 are pending. Independent claim 4 is amended. New claims 10-11 are added.
Claims 1-3 and 9 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Response to Amendment /Argument
Applicant's arguments and claim amendment with respect to the rejection of present claims 4 and 7-8 under 35 U.S.C. 102(a)(1) as being anticipated by Kashimura et al. (US 2021/0079258; “Kashimura”) have been fully considered and are persuasive. Therefore, the previous rejections based on Kashimura have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made based on Kashimura in view of a newly found prior art reference in light of applicant's claim amendment.
Because Kashimura et al. (US 2021/0079258; “Kashimura”) is continued to be relied upon, the examiner addresses applicant’s relevant arguments regarding Kashimura as below.
Applicant contends (1), Kashimura does not teach the instantly claimed recitation that “that the concentration (mass%) of the silicone resin fine particles is about 10 mass% to 60 mass%”. Per applicant, by contrast, Kashimura teaches a concentration of silica that is an order of magnitude less, i.e. between 0.1 and 0.5 % mass…citing para [0082] of Kashimura” (remarks, page 5, last para, to page 6, first para).
In response to applicant’s contention (1), the examiner disagrees with applicant’s characteristic of Kashimura. The pointed para [0082] of Kashimura teaches the concentration of silica particles, not silicone resin fine particles. In this regard, it is noted Kashimura teaches that the concentration (mass%) of the silicone resin fine particles is about 10 mass% to 60 mass% (para [0076]). Also, Kashimura teaches as in one of its embodiments that the silicone resin fine particles is about 55 mass% (see Example 1, Table 1, of which the Example 1 includes silicone resin fine particles is 120 part by mass, silicon rubber is 100 part by mass, silica is about 0.1 part by mass, and thus, the calculated concentration (mass%) of the silicone resin fine particles is about 55 mass%), which range overlaps with the instantly claimed range of claim 4, i.e., that the concentration (mass%) of the silicone resin fine particles is about 10 mass% to 60 mass%. 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.
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.
Claim 11 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 recites the limitation "the titanium dioxide fine particles" in line 8. There is insufficient antecedent basis for this limitation in the claim. It appears applicant may have intended to refer to the previously recited metal oxide fine particle, and such interpretation is applied by the examiner for the purpose of examination.
Appropriate correction and clarification are 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.
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) 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kashimura et al. (US 2021/0079258; “Kashimura”) in view of EP4212328 to Kashimura et al. (“Kashimura EP328”).
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) such that an outer surface of the second layer (14) forms an outer surface of the laminate structure (see Fig. 1, the layer 14 is the outer layer of the laminate), the second layer (layer 14) comprising
- silicone rubber as a base material (para [0056], [0068]-0069]),
- silicone resin fine particles (para [0072], [0075], 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] [0075]),
- 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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It should be noted that the recitation of claim 4 that the silicone resin fine particles “for forming surface irregularities” is considered as merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the silicone resin fine particles of the second layer of the laminate of Kashimura is capable of performing the intended use.
Kashimura teaches that the concentration (mass%) of the silicone resin fine particles is about 10 mass% to 60 mass% (para [0076]). Also, Kashimura teaches as in one of its embodiments that the silicone resin fine particles is about 55 mass% (see Example 1, Table 1, of which the Example 1 includes silicone resin fine particles is 120 part by mass, silicon rubber is 100 part by mass, silica is about 0.1 part by mass, and thus, the calculated concentration (mass%) of the silicone resin fine particles is about 55 mass%), which range overlaps with the instantly claimed range of claim 4, i.e., that the concentration (mass%) of the silicone resin fine particles is about 10 mass% to 60 mass%. 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.
Kashimura does not specifically teach its second layer with the inclusion of
metal oxide fine particles in the manner as instantly claimed.
In the same field of laminated structure of cable applications, Kashimura EP328 teaches a cable comprising an insulator comprising a multilayer laminate structure (para [0008] [0012]). Kashimura EP328 that the multilayer laminate structure having an outer layer/second layer (layer 11, Fig. 2), and that the outer layer/second layer (11) includes silicon rubber base material (para [0012]), first fine particles to give irregularities to a surface, of which the suitable material for the first fine particle includes silicone resin fine particles (para [0012] [0020]), and second fine particles for increasing resistance to UV light/shield UV light, of which the suitable material for the second fine particle includes titanium dioxide (TiO2) fine particles for increasing resistance to UV light/shield UV light (para [0012] [0029]), which is the same metal oxide fine particles for increasing resistance to UV light as that of the instant application, see instant claim 5. Kashimura EP328 teaches the addition of titanium dioxide (TiO2) fine particles to the silicon rubber base material reduces the degradation caused by UV light in the base material (para [0029]).
It would have been obvious to one of ordinary skill in the art to modify the multilayer laminate structure of Kashimura in view the teachings of Kashimura EP328, to include in the silicon rubber base material of the second layer/outer layer of the laminate of Kashimura, with the titanium dioxide (TiO2) fine particles as taught by Kashimura EP328, to provide a laminate structure with improved resistance to UV light as taught by Kashimura EP328, because Kashimura EP328 teaches the addition of titanium dioxide (TiO2) fine particles to the silicon rubber base material reduces the degradation caused by UV light in the base material (para [0029]), which would have predictably arrived at a satisfactory laminate structure that is the same as instantly claimed.
Regarding claims 5-6, as discussed above in rejection to claim 4, modified Kashimura teaches a laminate structure having in the second layer of the laminate structure suitable metal oxide fine particles such as titanium dioxide (as taught by Kashimura EP328).
It is noted that Kashimura EP328 teaches the suitable amount of titanium dioxide is about 1.0 to 4.4 mass% (para [0036]), which range overlaps with the instantly claimed range of 1.0 mass% or more and 4.4 mass% or less of claim 6. 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.
It would have been obvious to one of ordinary skill in the art to modify the multilayer laminate structure of Kashimura in view the teachings of Kashimura EP328, to include in the silicon rubber base material of the second layer/outer layer of the laminate of Kashimura, with the titanium dioxide (TiO2) fine particles in the suitable amount as taught by Kashimura EP328 (as discussed above, is about 1.0 to 4.4 mass%), to provide a laminate structure with improved resistance to UV light as taught by Kashimura EP328.
It is noted that Kashimura teaches the suitable amount of nanosilica fine particles in the second layer is not limited, but is preferably about 0.1% by mass to 0.5 % by mass (para [0082]), 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 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.
Kashimura does not specifically teach the mass% concentration of the nanosilica fine particles in the second layer over the mass% concentration of Ti (the ratio), as instantly claimed.
Kashimura EP328 teaches the amount of titanium dioxide (TiO2) fine particles in the base material is a result effective variable as it affects the resistance to UV light/shield UV light (para [0012] [0029).
It would have been obvious to a person of ordinary skill in the art to adjust titanium dioxide (TiO2) fine particles in the silicon rubber base material of the second layer/outer layer of the laminate of Kashimura through routine experimentation in order to achieve the desired properties of the laminate once produced, and to adjust nanosilica fine particles in the silicon rubber base material of the second layer/outer layer of the laminate of Kashimura through routine experimentation in order to achieve the desired properties of the laminate once produced, which would have arrived at a workable amount of titanium dioxide (TiO2) fine particles, and a workable amount of nanosilica fine particles, of which the calculated ratio of the mass% concentration of the nanosilica fine particles in the second layer over the mass% concentration of Ti would fall within the broad range as instantly claimed in claim 5, i.e., 1.14 times or more than mass% concentration of Ti. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
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(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kashimura in view of Kashimura EP328 as applied to claim 4 above, further in view of Mitchnick et al. (US 5,565,591; “Mitchnick”).
The limitations of claim 4 are taught by Kashimura in view of Kashimura EP328 as discussed above.
Regarding claim 10, modified Kashimura does not specifically teach that the titanium dioxide fine particles include a hydrophobic surface treatment.
Mitchnick teaches hydrophobic surface-treated titanium dioxide particles suitable for use in polymeric compositions including rubber material (col. 1, lines 14-19, and lines 24-25). Mitchnick teaches its hydrophobic surface-treated titanium dioxide particles provide improved hydrophobicity and improved dispersibility, and reduce reactivity and agglomeration (col. 2, lines 15-20).
It would have been obvious to one of ordinary skill in the art to further modify the modified multilayer laminate structure of Kashimura in view the teachings of Mitchnick, to include hydrophobic surface-treated titanium dioxide particles in the silicon rubber base material of the second layer/outer layer, to improve dispersibility and compatibility of the titanium dioxide particles within the silicon rubber base material, and reduce agglomeration and reactivity, and improve hydrophobicity as taught by Mitchnick (col. 2, lines 15-20), which would have predictably arrived at a satisfactory laminate structure that is the same as instantly claimed.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kashimura in view of Kashimura EP328, further in view of Mitchnick et al. (US 5,565,591; “Mitchnick”).
Regarding independent claim 11, 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) such that an outer surface of the second layer (14) forms an outer surface of the laminate structure (see Fig. 1, the layer 14 is the outer layer of the laminate), the second layer (layer 14) comprising
- silicone rubber as a base material (para [0056], [0068]-0069]),
- silicone resin fine particles (para [0072], [0075], 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] [0075]),
- 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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It should be noted that the recitation of claim 11 that the silicone resin fine particles “for forming surface irregularities” is considered as merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the silicone resin fine particles of the second layer of the laminate of Kashimura is capable of performing the intended use.
Kashimura does not specifically teach its second layer with the inclusion of
metal oxide fine particles in the manner as instantly claimed.
In the same field of laminated structure of cable applications, Kashimura EP328 teaches a cable comprising an insulator comprising a multilayer laminate structure (para [0008] [0012]). Kashimura EP328 that the multilayer laminate structure having an outer layer/second layer (layer 11, Fig. 2), and that the outer layer/second layer (11) includes silicon rubber base material (para [0012]), first fine particles to give irregularities to a surface, of which the suitable material for the first fine particle includes silicone resin fine particles (para [0012] [0020]), and second fine particles for increasing resistance to UV light/shield UV light, of which the suitable material for the second fine particle includes titanium dioxide (TiO2) fine particles for increasing resistance to UV light/shield UV light (para [0012] [0029]), which is the same metal oxide fine particles for increasing resistance to UV light as that of the instant application. See U.S.C. 112(b) rejection of claim 11 made of record in this Office Action. Kashimura EP328 teaches the addition of titanium dioxide (TiO2) fine particles to the silicon rubber base material reduces the degradation caused by UV light in the base material (para [0029]).
It would have been obvious to one of ordinary skill in the art to modify the multilayer laminate structure of Kashimura in view the teachings of Kashimura EP328, to include in the silicon rubber base material of the second layer/outer layer of the laminate of Kashimura, with the titanium dioxide (TiO2) fine particles as taught by Kashimura EP328, to provide a laminate structure with improved resistance to UV light as taught by Kashimura EP328, because Kashimura EP328 teaches the addition of titanium dioxide (TiO2) fine particles to the silicon rubber base material reduces the degradation caused by UV light in the base material (para [0029]).
Modified Kashimura does not specifically teach that the titanium dioxide fine particles include a hydrophobic surface treatment.
Mitchnick teaches hydrophobic surface-treated titanium dioxide particles suitable for use in polymeric compositions including rubber material (col. 1, lines 14-19, and lines 24-25). Mitchnick teaches its hydrophobic surface-treated titanium dioxide particles provide improved hydrophobicity and improved dispersibility, and reduce reactivity and agglomeration (col. 2, lines 15-20).
It would have been obvious to one of ordinary skill in the art to further modify the modified multilayer laminate structure of Kashimura in view the teachings of Mitchnick, to include hydrophobic surface-treated titanium dioxide particles in the silicon rubber base material of the second layer/outer layer, to improve dispersibility and compatibility of the titanium dioxide particles within the silicon rubber base material, and reduce agglomeration and reactivity, and improve hydrophobicity as taught by Mitchnick (col. 2, lines 15-20), which would have predictably arrived at a satisfactory laminate structure that is the same as instantly claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782
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