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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17, in the reply filed on 23 September 2026 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 September 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 25 March 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
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 3-5 and 17 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.
As to Claim 3: The claim recites the limitation “a thermal conductivity of at least about 0.2-3 W/m*K”. At least usually signifies a minimum value however in this claim two values are listed in what appears to be a range. It is unclear if it is supposed to be within the recited range or more than one of the end points or more than some unstated value between the endpoints.
As to Claim 4: The claim recites the limitation “a specific weight of less than about 0.8-2.0 g/cm3”. However, it is unclear what the specific weight is supposed to be less than when a range is presented. Is it supposed to be less than 0.8? less than 2.0? less than some unstated number between the two values? It is unclear what is being claimed as the specific weight.
As to Claim 5: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation ethylenepropylene rubber, and the claim also recites specifically EPDM which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As to Claim 17: It is unclear what “carbonaceous thereof” in Line 2 means or what the compounds would be.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sigma Aldrich 481939, as evidenced by Ingber et al. (US 2016/0144079, hereinafter referred to as “Ingber”).
As to Claims 1-17: Sigma Aldrich sells polydimethylsiloxane which reads on an elastomer in a concentration of 100%. Additionally, Ingber refers back to specific polydimethylsiloxane 481939 in 2016 which sets a timeline that anticipates the current claims. As a composition can not be separated from its properties the polydimethylsiloxane of Sigma Aldrich is considered to read on all the instant claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
