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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/11/2025 has been entered.
Response to Arguments
Applicant’s arguments filed 10/27/2025, with respect to the rejection(s) of Claims 1, 3-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong et al. (US 2021/0230965 A1) and further in view of Arkles et al. (US 2016/0319080 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below based on the amended claim 1.
With regards to the amended claim 1 as “ a set of curing agents to concurrently cure at least a portion of the matrix polymer with the heterobifunctional siloxane polymer.”
The examiner would like to refer to the applicant’s disclosure ¶ [0016] a platinum catalyst can function as a curing agent to combine the siloxane components of the heterobifunctional siloxane polymer. An example of the platinum catalyst is platinum-divinyltetramethyldisiloxane. The curing agent can also be referred to as a hardener or a hardening agent.
In Arkles’ ¶ [0018] In the presence of a catalyst, such as the preferred platinum, the vinyl and hydride end groups will undergo a high efficiency intermolecular hydrosilylation reaction and the macromonomer will reach an extremely high degree of polymerization and ¶ [0040] platinum-divinyltetramethyldisiloxane catalyst
Therefore, the combination of Zhong and Arkles teaches the amended claim.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
The term “concurrently” and “portion” in claim1 are a relative term which renders the claim indefinite. The term “concurrently” and “portion” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
All the claims dependent of claim 1 are also rejected.
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.
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, 3-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong et al. (US 2021/0230965 A1) ("Zhong" herein- cited previously) and further in view of Arkles et al. (US 2016/0319080 A1) ("Arkles" herein- cited previously).
Claim 1
Zhong discloses, as best understood based on the indefiniteness above, a mixture comprising:
a matrix polymer; and a heterobifunctional siloxane polymer incorporated into the matrix polymer to form a modified elastomeric material positionable in a wellbore tool to form a seal, the wellbore tool positionable in a wellbore. [0023-0025, 0032-0035, 0044-0046, 0064- 0082] and a set of curing agent. [0064-0073, 0080-0082]
Zhong however does not explicitly discloses the heterobifunctional siloxane polymer comprising a set of siloxane monomers, wherein each siloxane monomer of the set of siloxane monomers comprises a first terminating group on a first end and a second terminating group different from the first terminating group on a second end a set of curing agents to concurrently cure at least a portion of the matrix polymer with the heterobifunctional siloxane polymer.
Arkles teaches the above limitation (See paragraphs 0016, 0018, 0031 & 0040 → Arkles teaches this limitation in that the siloxane backbone may be, for example, a dialkylsiloxane such as dimethylsiloxane, ethylmethylsiloxane, diethylsiloxane, dimethylsilylethylsiloxane, or trifluoropropylmethylsiloxane or an aromatic-substituted siloxane such as diphenylsiloxane or phenylmethylsiloxane. In preferred embodiments, the macromonomers. contain a vinyl group and a hydride group at the opposite ends of the siloxane, which must be in a substantially 1:1 stoichiometric ratio (as demonstrated, for example, by NMR). The vinyl and hydride groups will react with each other in a hydrosilylation reaction. Other heterobifunctional monomers within the scope of the invention include vinyl and mercaptan functionality, hydride and silanol functionality, or hydrogen and alkoxy functionality. These heterobifunctional macromonomers may be coupled by a thiolene reaction, dehydrogenative coupling, de-alkylative coupling, or azido-acetylenic click-chemistry. With a precise 1:1 stoichiometric ratio of complimentary functionalities inherent on each polymer chain, the high purity heterobifunctional macromonomer fits the ideal model for an A-B step-growth linear polymerization. In the presence of a catalyst, such as the preferred platinum, the vinyl and hydride end groups will undergo a high efficiency intermolecular hydrosilylation reaction and the macromonomer will reach an extremely high degree of polymerization. platinum-divinyltetramethyldisiloxane catalyst ) for the purpose of having a polysiloxane nanocomposite elastomer that exhibits an elongation exceeding 2000% and a tensile strength exceeding 2.5 MPa. [0005]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the mixture of Zhong, with the above limitation, as a taught by Arkles, in order to have polysiloxane nanocomposite elastomer that exhibits an elongation exceeding 2000% and a tensile strength exceeding 2.5 MPa.
Claim 3
Since Zhong teaches the same composition comprising the same polymer and elastomeric material, it would form a matrix polymer and be a heterobifunctional siloxane polymer that would form a modified elastomeric material, wherein the modified elastomeric material has an elongation of from 500% to 2,000% within a temperature range from 20 °C to 200 °C.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (II), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 4
Zhong discloses the mixture of claim 1, wherein the heterobifunctional siloxane polymer comprises from 5 wt. % to 30 wt. % of the modified elastomeric material. [0068-0070]
Claim 5
Zhong discloses the mixture of claim 1, a second curing agent to harden the matrix polymer. [0064-0073, 0080-0082]
Zhong however does not explicitly disclose a first curing agent to harden the heterobifunctional siloxane polymer by combining two siloxane components of the heterobifunctional siloxane polymer (Same as claim 1)
Claim 6
Zhong discloses the mixture of claim 1. Zhong however does not explicitly disclose, wherein the heterobifunctional siloxane polymer comprises one or more intra-chain entanglements and one or more inter-chain entanglements formed by step-growth polymerization. (Same as Claim 1)
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong, Arkles, as applied to claim 1 above, and further in view of Kim et al. (US 2013/0096038 A1) ("Kim" herein- cited previously)
Claim 2
Zhong discloses the mixture of claim Zhong however does not explicitly discloses, wherein the matrix polymer is an elastomer selected from a group consisting of hydrogenated nitrile butadiene rubbers.
Kim teaches the above limitation (See paragraphs 0069 & 0083 → Kim teaches this limitation in that the elastomer composition may be selected from any elastomer listed in ASTM D1418, and may comprise one or more non-elastomeric polymers selected from natural and synthetic polymers, including those listed in ASTM D1600-92, "Standard Terminology for Abbreviated Terms Relating to Plastics". The elastomer and non-elastomer may be layered, wherein individual layers may be the same or different in composition and thickness, interpenetrating networks, and the like. The elastomer composition may include fillers, plasticizers, accelerants, fibers, nanoflakes and/or nanoplatelets. Non-elastomeric polymers may include, but are not limited to, thermoplastic polymers, such as polyolefins, polyamides, polyesters, thermoplastic polyurethanes and polyurea urethanes, copolymers, and blends thereof, and the like; one or more thermoset polymers, such as phenolic resins, epoxy resins, and the like. Suitable curable elastomers include, without limitation, nitrile-butadiene rubber (NBR), hydrogenated NBR, hydrogenated nitrile rubber (HNBR), chemically functionalized NBR (Carboxylated NBR), ethylene-propylene-diene-copolymer (EPDM), ethylene-propylene rubber (EPR), fluorinated elastomers (FKM, FFKM, FEPM), styrene-butadiane rubber (SBR), hydrogenated styrene-butadiene rubber (hSBR), isoprene-butadiene rubber (IBR), hydrogenated isoprene-butadiene rubber (hIBR), styrene-isoprene rubber (SIR), hydrogenated styrene-isoprene rubber (hSIR), styrene-butadiene-isoprene (SIBR), hydrogenated styrene-butadiene-isoprene rubber (hSIBR), block, triblock and multi- block polymers of styrene-isoprene, styrene-butadiene, styrene-butadiene-isoprene thermoplastic elastomers, hydrogenated block, triblock and multi-block polymers of styrene-isoprene, styrene-butadiene, styrene-butadiene-isoprene thermoplastic elastomers, silicone rubbers, chlorosulfonated polyethylene (CSM), or mixtures and combinations thereof.) for the purpose of having an apparatus within the invention include those wherein the oilfield element may be any element exposed to water, brine, low and high pH fluids, and/or hydrocarbon fluids. [0070]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Zhong, with the above limitation, as taught by Kim, in order to have an apparatus within the invention include those wherein the oilfield element may be any element exposed to water, brine, low and high pH fluids, and/or hydrocarbon fluids.
Claim 7
Zhong discloses the mixture of claim 1. Zhong however does not explicitly discloses, wherein the matrix polymer is an engineering plastic selected from the group consisting of polytetrafluoroethylene, polyether ether ketone, polyphenylene sulfide, polyesters, aromatic thermosetting co-polyesters, and polyetherketoneketone. (Same as claim 2)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 01/22/2026