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 .
Response to Amendment
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on August 8, 2026. In particular, claim 1 which has been amended with the limitations of the previously presented claim 2. The new grounds of rejection set forth below simply move the arguments from the previous claim 2 into the present claim 1; thus, the following action is properly made final. It is also noted that claims 7-14 are new and require new grounds of rejection. Thus, the following action is properly made final.
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.
Claim(s) 1-2, 5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuji et al (US 2001/0004650) in view of Ostendorf et al (US 2016/0207833).
Regarding claims 1 and 5, Tsuji teaches a silicon rubber composition (Abstract) comprising:
a silicon rubber comprising an organopolysiloxane ([0010]), a silica which is coated on the surface with a plasticizer ([0021])
a flame-retardant material such as a platinum catalyst ([0022])
a flame-resistant material such as quartz ([0025])
a flame-retardant auxiliary material including cerium oxide and titanium dioxide ([0025])
However, Tsuji fails to teach the addition of wollastonite.
Ostendorf teaches an organosilicon composition ([0012]) which incorporates wollastonite as a filler ([0028]). Ostendorf teaches that quartz is considered a coarse grain filler (Ostendorf, [0021]) and wollastonite can be considered a fine grain filler (Ostendorf, [0117]). Ostendorf teaches that the ratio of finely to coarse grain filler ranges from 4:1 to 1:4 ([0023]) which overlaps the claimed range.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the wollastonite as an additional filler in the composition of Tsuji. One would have been motivated to do so because it provides reinforcement to the composition (Tsuji, [0026]).
While the prior art reference fails to explicitly call the composition fire resistant, given that all the additives present have fire retardant properties, the prior art composition would inherently have the recited fire-resistant properties.
Regarding claim 9, Tsuji teaches a silicon rubber composition (Abstract) comprising: a silicon rubber consisting of organopolysiloxane ([0010]), a silica which is coated on the surface with a plasticizer ([0021]). All the other components taught in Tsuji are considered to be part of the composition (which has the transitional phase “comprising” which remains open to other components not listed).
Claim(s) 3-4 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuji et al (US 2001/0004650) in view of Ostendorf et al (US 2016/0207833) and Todoroki et al (EP 3 533 838).
The discussion regarding Tsuji and Ostendorf in paragraph 4 above is incorporated here by reference.
Regarding claim 3, Tsuji teaches a flame-retardant auxiliary material including cerium oxide and titanium dioxide ([0025]).
However, it fails to teach the weight ratio of the cerium oxide and titanium oxide.
Todoroki teaches a silicon rubber (Abstract) which incorporates cerium oxide and titanium oxide. Todoroki teaches that the ratio between cerium oxide and titanium oxide ranges from 1:100 to 100:1 ([0037]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the cerium oxide and titanium oxide of Tsuji have the ratio as taught by Todoroki. One would have been motivated to do so in order to receive the expected benefit of having excellent heat resistance (Todoroki, [0011]).
Regarding claim 4, Tsuji teaches that the following component amounts:
100 parts by weight of the organopolysiloxane (Tsuji, [0010])
50 to 100 parts by weight of the silica and plasticizer (Tsuji, [0021]) per 100 parts of the organopolysiloxane
1-1200 parts by weight of the platinum catalyst per 1,000,000 parts of the organopolysiloxane (Tsuji, [0023])
90 to 99 parts by weight of quartz and wollastonite (Ostendorf, [0025]) per 100 parts by weight of the organopolysiloxane
0.1 to 10 parts by mass each of titanium oxide and cerium oxide (Abstract) per 100 parts of the organopolysiloxane
Regarding claims 7-8, Tsuji teaches that the composition is made into a molded silicon rubber composition. While the prior art reference fails to explicitly call the composition fire resistant, given that all the additives present have fire retardant properties and heat resistive properties, the prior art composition would inherently have the recited fire-resistant properties.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsuji et al (US 2001/0004650) in view of Ostendorf et al (US 2016/0207833), Todoroki et al (EP 3 533 838) and Murray et al (US 4,360,610).
The discussion regarding Tsuji, Ostendorf and Todoroki in paragraph 5 above is incorporated here by reference.
Regarding claim 6, modified Tsuji fails to teach the recited properties.
Murray teaches a silicon rubber composition (Abstract) and that silicon rubber compositions have a shore A hardness of 58-60, a tensile strength of 5.03-7.37 MPa and elongation from 260-425 % (Table 1).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the silicone rubber have the properties as taught by Murray. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the composition of modified Tsuji have the properties as taught by Murray. One would have been motivated to do so in order to receive the expected benefit of having a silicon rubber which has properties appropriate for high temperature applications such as gaskets and O-rings (Murray, col. 7, lines 35-40).
Allowable Subject Matter
Claims 10-14 are 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.
Response to Arguments
The 35 USC 112(b) rejection set forth in paragraph 3 of the office action mailed on May 13, 2026 is withdrawn in light of applicant’s argument received on August 7, 2026.
Applicant's arguments filed August 7, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: There would have been no motivation to combine Tsuji and Ostendorf because they are in different fields of endeavor.
Examiner’s response: Both the Tsuji and Ostendorf references teach organosilicon compounds and as such, are considered to be in the same field of endeavor and the combination is appropriate. A reasonable motivation to combine the teachings of the two references is delineated in the rejection above.
Applicant’s argument: Ostendorf fails to teach that wollastonite can be the finely divided filler. Therefore, the ratio of Ostendorf cannot be equated with the weight ratio between quartz and wollastonite.
Examiner’s response: Ostendorf teaches quartz as the only coarse-grained filler and as such, the other fillers are considered the finely divided filler. The examples show the use of wollastonite as the finely divider filler.
Applicant’s argument: Example 3 in Ostendorf teaches a mixture of quartz and wollastonite in a ratio outside the claimed range.
Examiner’s response: While the ratio of the quartz and the wollastonite may not be exemplified in the working Examples of the prior art, it does not obviate the more general teachings within the specification of prior art which teaches the recited ratio.
Conclusion
THIS ACTION IS MADE FINAL. 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 DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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