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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/7/2026 has been entered.
Claims Status
Claims 1-4 and 7-11 are pending. Independent claims 1 and 4 are amended. New claims 12-13 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Claims 1-3 and 9 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 4-8 under 35 U.S.C. 103 as being unpatentable over Kashimura et al. (US 2021/0079258; “Kashimura”) in view of Kashimura EP328, have been fully considered and are persuasive. Therefore, the previous rejections based on Kashimura have been withdrawn.
However, Applicant's arguments and claim amendment does address the rejection of present claim(s) 11 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”). The rejection is maintained.
The rejection below is updated to address the present claims.
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) 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kashimura (US 2021/0079258; “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.
Regarding claim 13, Kashimura teaches the second layer is a coating layer (para [0056]), coating film layer 14), meeting the claimed limitations.
Allowable Subject Matter
Claims 4, 7-8 and 10 allowed.
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art references of record, alone or in combination, do not teach or fairly suggest a laminated structure defined by the structural and compositional limitations in the specific manner as instantly claimed (in claim 4), in particular, the instantly claimed laminated structure includes a first layer comprising silicone rubber as a base material, and a second layer laminated over the first layer as so defined. The second layer comprises silicone rubber as a base material, silicone resin fine particles for forming surface irregularities, metal oxide fine particles for increasing resistance to UV light, and nanosilica fine particles; and in particular, the concentration (mass%) of the silicone resin fine particles is 10 mass% or more and 60 mass% or less, the metal oxide fine particles are titanium dioxide fine particles, and 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, and wherein Ti concentration in the second layer is 1.0 mass % or more and 4.4 mass % or less as so defined. The combination of these features is not present in the prior art nor does the prior art provide a reasonable motivation or means for producing the invention claimed.
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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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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