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 with traverse of species I: a silicone-based foam layer comprising a component A and a component B in the reply filed on 11/05/2025 is acknowledged. The traversal is on the ground(s) that the examination of all of the species does not create an undue burden on the Office. This is not found persuasive because there is a serious search and/or examination burden for the patentably distinct species for the following reasons.
(a) the species require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(b) the prior art applicable to one species would not likely be applicable to another species.
The requirement is still deemed proper and is therefore made FINAL.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 contains the trademark/trade name TPX. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982).
The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a high performance, transparent polymer manufactured by Mitsui Chemicals and not the polymethylpentene itself, accordingly, the identification/description is indefinite.
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.
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.
Claims 1-5, and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0294044 to Kristy et al. (hereinafter “Kristy”) in view of US 5,534,593 to Friedman (hereinafter “Friedman”), US 4,433,069 to Harper (hereinafter “Harper”), and US 2022/0169814 to Wu et al. (hereinafter “Wu”).
The claim is directed to a silicone foam layer comprising a component A and a component B. Since the claim is not specific about a mixing ratio of A to B, the examiner interprets the mixing ratio of A to B is 1:1. Therefore, the silicone foam layer of the claimed invention contains 5-30 wt% of a first filler of alumina trihydrate (ATH), 1-15 wt% of a second filler of perlite, 1-20 wt% of third filler of calcium carbonate and 0.5-10 wt% of a fourth filler of zinc borate. The component A reacts with the component B to form the silicone foam layer. The components A and B contain said fillers and these carry through to the final foam product. Therefore, the absence of the fillers in the component B does not add patentable weight with respect to the foam product claim. As long as the specific fillers required by the claim are present in the silicone foam; and the silicone foam produced from the reaction of the components A and B meets the claimed requirements, the distinctions in the intermediate components A and B do not render the claim unobvious.
Kristy discloses a multilayer composite comprising: a silicone foam layer comprising a component A and a component B, disposed between two release layers (paragraph 99). The component A contains 5-40 wt% of ATH and 5-40 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate, each based on the total weight of the component A (paragraph 69). Kristy teaches that the ATH, the zinc borate, and the hydrous sodium silicate are “reactive” fillers because they can generate water upon exposure to fire. The generating water can absorb heat to prevent thermal runaway (paragraph 48). Additionally, the reactive fillers render the silicone foam flame retardant due to formation of a thermal barrier layer upon exposure to a heat source. The reactive fillers do not involve in the chemical reactions between the components A and B. The ATH, the zinc borate, and the hydrous sodium silicate incorporated in the component A carry through to the final foam product.
Kristy does not disclose the component B comprising the fillers as presently claimed. However, the reactive fillers in the component A carry through to the final foam product. Therefore, lack of the reactive fillers in the intermediate component B is found irrelevant to determining patentability of the foam product claim. Since the claimed fillers are present in the silicone foam layer and the silicone foam produced from the reaction of the components A and B meeting the claimed requirements, the distinction in the intermediate component B will not affect the non-obviousness of the final foam product claim.
Given that a mixing ratio of A:B is 20:1 (paragraph 112), the silicone foam layer approximately includes 5-40 wt% of ATH, 5-30 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate. These overlap the claimed ranges.
Kristy teaches that the component A includes a thermally insulating fillers comprising calcium carbonate (paragraph 72).
Kristy does not explicitly disclose (i) a first TPX liner; (ii) the component A and the component B, each comprising 1-15 wt% of perlite, and 1 to 20 wt% of calcium carbonate; and (iii) the silicone foam layer comprising a V-0 flammability rating as measured according to ASTM D3801.
Friedman, however, discloses a release film obtained from a composition comprising polymethylpentene (TPX) and polypropylene and having an improved tensile strength, elongation and release properties (abstract).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a polymethylpentene/ polypropylene release film disclosed in Friedman for the release layer disclosed in Kristy motivated by the desire to provide a multilayer composite having an improved tensile strength, elongation and release properties.
Harper, however, discloses a silicone foam exhibiting superior flame-retardant properties, and comprising 2.5 wt% of glass fibers and 5.0 wt% of perlite and at least 5 ppm of platinum catalyst (abstract; and table 2, sample I).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include perlite and glass fibers disclosed in Harper in the silicone foam layer disclosed in Kristy motivated by the desire to enhance flame retardant properties for the multilayer composite.
Wu, however, discloses a silicone foam comprising a component A and a component B wherein the component A comprises at least one polyorganosiloxane having at least one vinyl group, at least one chemical blowing agent; and at least one catalyst; wherein the component B comprises at least one polyorganosiloxane having at least one vinyl group, at least one polyorganosiloxane having at least one SiH group, and at least one expandable graphite (paragraphs 11-18). The silicone foam further includes 2-40 wt% of additional filler including calcium carbonate, based on the total weight of the component A (paragraph 93). This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in a content of the calcium carbonate will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a content of the calcium carbonate is critical or provides unexpected results.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the calcium carbonate of Kristy in the component A in an amount as disclosed in Wu, motivated by the desire to enhance flame retardant properties for the multilayer composite.
It appears that the combined disclosures of Kristy, Friedman, Harper and Wu result in a multilayer composite meeting all structural limitations and chemistry required by the claims.
The resulting multilayer composite comprises: a TPX release liner, and a silicone foam layer comprising a component A and a component B. The component A contains 5-40 wt% of ATH, 5-40 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate, each based on the total weight of component A. Given that a mixing ratio of A:B is 20:1, the silicone foam layer approximately includes 5-40 wt% of ATH, 5-30 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate.
The resulting component A also includes 2-40 wt% of the calcium carbonate, 2.5 wt% of the glass fibers, and 5 wt% of the perlite.
Therefore, the examiner takes the position that the V0 flammability rating as measured according to ASTM D3801 would be inherent to the multilayer composite as like material has like property.
As to claims 2 and 3, Kristy discloses that the component A comprises a pigment (paragraph 72). However, Kristy does not explicitly disclose an amount of the pigment incorporated in the component A.
Wu, however, discloses a silicone foam comprising a component A and a component B wherein the component A comprises at least one polyorganosiloxane having at least one vinyl group, at least one chemical blowing agent; and at least one catalyst; wherein the component B comprises at least one polyorganosiloxane having at least one vinyl group, at least one polyorganosiloxane having at least one -SiH group, and at least one expandable graphite (paragraphs 11-18). The silicone foam further includes 2-40 wt% of additional filler including a pigment, based on the total weight of the component A (paragraph 93). This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in a content of the pigment will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a content of the pigment is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the pigment of Kristy in the component A in an amount in the range disclosed in Wu, motivated by the desire to provide a desired color for the silicone foam layer. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 4, Kristy discloses that the component A comprises 50 wt% of a vinyl-PDMS (tables 1 and 2).
As to claims 5, 8 and 9, Kristy discloses that the component A comprises 90-20 wt% of a polysiloxane and 10-80 wt% of the reactive filler wherein the polysiloxane comprises a blend of a vinyl polysiloxane and a hydride polysiloxane (paragraphs 62 and 66). The hydride polysiloxane reads on the claimed resin solution. The contents of the vinyl polysiloxane and the hydride polysiloxane thus overlap the claimed ranges.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Differences in the contents of the vinyl polysiloxane and the hydride polysiloxane will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such the contents of these polysiloxane resins are critical or provide unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the contents of the vinyl polysiloxane and the hydride polysiloxane in the ranges instantly claimed, motivated by the desire to allow ready incorporation of the reactive fillers in the foamable composition while producing the desired siloxane foam. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 7, Kristy discloses that the component A comprises 0.31 wt% of a benzyl alcohol as a foaming agent (paragraph 99 and table 2). This is within the claimed range.
As to claim 10, Kristy discloses that the component A comprises 0.008 wt% of a Pt catalyst (table 2). Kristy does not explicitly disclose the component A comprising a Pt catalyst at a content of at least 0.02 wt%.
Wu, however, discloses a silicone foam comprising a component A and a component B wherein the component A comprises at least one polyorganosiloxane having at least one vinyl group, at least one chemical blowing agent; and at least one catalyst; wherein the component B comprises at least one polyorganosiloxane having at least one vinyl group, at least one polyorganosiloxane having at least one SiH group, and at least one expandable graphite (paragraphs 11-18). The silicone foam further includes 2-40 wt% of additional filler including calcium carbonate and/or pigment based on the total weight of the component A (paragraph 93). The silicone foam also includes 0.1 to 0.5 wt% of a Pt catalyst based on the total weight of the component A (paragraph 60).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the Pt catalyst disclosed in Kristy in the component A in an amount in the range disclosed in Wu, motivated by the desire to promote the reaction of SiH groups with vinyl groups to provide hydrogen gas necessary for the foaming process.
As to claim 11, Kristy discloses that the component A comprises 0.008 wt% of a Pt catalyst (tables 1 and 2). This is within the claimed range.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kristy in view of Friedman, Harper, Wu as applied to claim 1 above, further in view of US 6,084,002 to Nicholson et al. (hereinafter “Nicholson”).
Kristy discloses that the component A comprises 0.31 wt% of a benzyl alcohol as a foaming agent (paragraph 99 and table 2). However, Kristy does not explicitly disclose the silicone foam comprising an alcohol foaming agent in an amount of at least 1 wt% based on the total weight of the component A.
Nicholson, however, discloses a flame-retardant silicone foam obtained from composition comprising vinyl polyorganosiloxane, hydride polyorganosiloxane, a benzyl alxohol foaming agent, a Pt catalyst and wollastonite (abstract, and example 2). In particular, the flame-retardant silicone foam comprises 0.4-3.8 wt% of the benzyl alcohol.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the benzyl alcohol foaming agent disclosed in Kristy in the component A in an amount in the range disclosed in Nicholson, motivated by the desire to achieve a desired foaming rate, thereby giving excellent cell structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788