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 .
Status of Application
Claims 1-3, 5-8, 10-18 and 21 are pending. Claims 11-18 and 21 are withdrawn. Claims 1-3, 5-8 and 10 are presented for examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/14/2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 5-8 and 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
Claim 1 newly recites obtaining an “uncured” silicone composition and applying the “uncured” silicone composition. As evidenced by Applicant’s arguments filed 8/14/2025 the term “uncured” is interpreted as being completely uncured and excludes any partial curing.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1. Claims 1-3, 5-8 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 newly recites obtaining an “uncured” silicone composition and applying the “uncured” silicone composition. However, this new recitation is not supported by the original disclosure. The Examiner notes that the term “uncured” is not used in the original disclosure. The Applicant has not pointed to a portion of the specification which makes clear that the composition is “uncured”. Furthermore, the original disclosure fails to support that there is absolutely no curing/partial curing prior to the heating step. Additionally, the Examiner notes that the claimed silicone composition is water curable and unless the composition is kept in a dry environment (which is not recited in the original disclosure) that some amount of curing will necessarily be initiated by water vapor in the atmosphere. Therefore, the original disclosure fails to support the newly added limitations of obtaining an “uncured” silicone composition and applying the “uncured” silicone composition. Thus, claim 1 fails to comply with the written description requirement. Claims 2, 3, 5-8 and 10 depend from claim 1 and fail to comply with the written description requirement for the same reasons.
Conclusion
Claims 1-3, 5-8, 10-18 and 21 are pending.
Claims 11-18 and 21 are withdrawn.
Claims 1-3, 5-8 and 10 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
October 10, 2025 Primary Examiner, Art Unit 1717
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