DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCTIJP2022/023581 filed 6/13/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2021-110296 filed 7/1/2021, which papers have been placed of record in the file.
Claims 8-27 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-33 of copending Application No. 18/853,438 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
While copending 438 application further claims water, the claims arrive at the present claims in an anticipatory type manner.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 8-11, 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (US 2022/0064446, US equivalent of WO 2020/129744) in view of Todoroki et al. (US 2020/0024452, US equivalent of WO 2018079376), and Asakawa et al. (JP 2019-006952, cited in IDS filed 3/15/2024).
Regarding claim 8: Kato is directed to an addition curable silicone rubber composition
(A) 100 parts by mass of an organopolysiloxane that has at least two alkenyl groups
(B) 0.1-20 parts by mass an organohydrogen polysiloxane that has at least
two hydrogen atoms as component (C) in Kato
(C) a catalytic amount of a platinum based catalyst ([0047] Kato)
(E) heat stabilizers of iron oxide in an amount that does not detract from the advantages of the invention ([0057] Kato), although a specific amount is not mentioned.
Todoroki is directed to a curable silicone rubber composition comprising an organopolysiloxane and a titanium oxide doped with a transition metal oxide heat stabilizer in an amount of 0.01-10 parts by mass per 100 parts organopolysiloxane (abstract Todoroki). One skilled in the art would have been motivated to have included a heat stabilizer in the composition of Kato to improve the heat resistance ([0049] Todoroki). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a titanium oxide doped with a transition metal oxide heat stabilizer in an amount of 0.01-10 parts by mass per 100 parts organopolysiloxane in the composition of Kato.
A component (D) thermally dissociative blocked (poly)isocyanate is not mentioned.
Asakawa is directed to a curable silicone composition comprising 0.01-5 parts by mass per 100 parts of heat dissociatable blocked polyisocyanate per 100 parts organopolysiloxane comprising an average of 1.8 or more alkenyl groups. One skilled in the art would have been motivated to have included a component (D) thermally dissociative blocked (poly)isocyanate in the composition of Kato for imparting flame retardancy or self-adhesiveness and self-extinguishing property to a cured product. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included 0.01-5 parts by mass per 100 parts of heat dissociatable blocked polyisocyanate in the composition of Kato.
Regarding claim 9: The thermally dissociative blocked (poly)isocyanate is a reaction product of a thermally dissociative blocking agent and at least one of diisocyanate selected from aliphatic diisocyanate and alicyclic diisocyanate (see section “Component (B)” of Asakawa).
Regarding claims 10-11: Iron oxide is disclosed by Kato. Further, titanium oxide doped with a transition metal is taught in Todoroki.
Regarding claims 24-27: A cured material of the addition curable silicon resin composition is disclosed ([0071] Kato).
Claims 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kato, Asakawa and Todoroki as applied to claims 8-11 above, and further in view of Mizushima et al. (US 2019/0092944, cited in IDS filed 3/15/2024).
Regarding claims 16-23: Kato discloses silica can be added although doesn’t mention an amount ([0057] Kawa).
Mizushima is directed to an addition curable silicone rubber composition comprising a component (A) of an alkenyl group containing organopolysiloxane and 1-100 parts per 100 parts component (A) of a reinforcement filler including fumed silica fine powder with a specific surface area of 50 m2/g or more ([0046] Mizushima). One skilled in the art would have been motivated to have included selected the silica as the silica of choice in Kato for low compression set and heat resistance without compromising mechanical properties of the silicone rubber ([0001] [0052] Mizushima). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected fumed silica fine powder with a specific surface area of 50 m2/g or more of Mizushima as the silica of choice in Kato in claimed amounts to arrive at claims 16-23 of the present invention.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kato Asakawa and Todoroki as applied to claims 8-11 above, and further in view of Fukui et al. (US 2023/0399470).
Regarding claims 12-15: Kato discloses an additive includes an acetylene compounds ([0057] Kato), although doesn’t mention any specific compounds.
Fukui is directed to an addition curable composition comprising an organopolysiloxane and a platinum catalyst and also includes acetylene alcohol substituted with a siloxy group or silylated acetylene inhibitor modified with a silane or siloxane as shown in Formulas 3-4. ([0036]-[0046] Fukui). The amount used is 0.1-100 ppm based on the platinum catalyst component (C) ([0051] Fukui). One skilled in the art would have been motivated to have included the acetylene alcohol or silylated acetylene inhibitor in the composition of Kato to adjust the curability of the composition ([0036] Fukui). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a included acetylene alcohol substituted with a siloxy group or silylated acetylene inhibitor modified with a silane or siloxane in claimed amounts in the composition of Kato to arrive at claims 12-15 of the present invention.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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