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
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/28/2025.
Applicant’s election without traverse of group I, claims 1-13, in the reply filed on 10/28/2025 is acknowledged.
Claim Interpretation
For claim 1, from disclosure, it is interpreted by the Examiner that the primer fully acts as a barrier between the substrate and the applied hydrosilylation curable silicone rubber composition, and that on all surfaces there is no direct contact between the primer and the applied hydrosilylation curable silicone rubber composition.
For clarity, it is suggested to amend the element “applying a hydrosilylation curable silicone rubber composition to the substrate covered with the primer” on lines 6-7 to reflect this, such as “applying a hydrosilylation curable silicone rubber composition to covering the substrate”, or “applying a hydrosilylation curable silicone rubber composition to treated substrate”, to match the language of claim 3.
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 1-13 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.
On line 4 of claim 1, the phrase “optionally, air-drying or baking the primer composition” leads to indefiniteness because it is unclear which alternatives are required for the process. It appears the claim is allowing all possibilities – air-drying, baking, or any other option. See MPEP 2173.05(h)(II).
For the sake of compact prosecution, claim 1 will be examined without the term ‘optionally’, and will require the step of either air-drying or baking the primer composition.
Claims 2-13 are rejected, as they are dependent to claim 1.
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 10 recites the broad recitation “(D) the carrier in an amount of from 20 to 150 parts by weight”, and the claim also recites “optionally of from 70 to 150 parts by weight” which is the narrower statement of the range/limitation. The claim is 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.
Within this same phrase in claim 10, the term ‘optionally’ is used, making it unclear which range should be the limiting claim element.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-8 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki (US20180105720A1), in view of Mei (US20070141250A1). Claim elements are presented in italics.
1. A method for improving the adhesion of silicone elastomer to a pre-cured silicone elastomeric substrate, the method comprising: applying a primer composition to a silicone elastomer substrate; air-drying or baking the primer composition to form a uniform primer film covering the substrate; applying a hydrosilylation curable silicone rubber composition to the substrate covered with the primer to obtain a composite; and curing the composite in order to obtain a silicone elastomer adhesively bonded to a silicone elastomer substrate; wherein the primer composition comprises:(A) a silicone polyether; (B) a reinforcing filler; (C) one or more polydiorganosiloxane polymer(s) having a viscosity of from 1,000 to 500,000 mPa-s at 25°C and containing at least one alkenyl group or alkynyl group per molecule; and (D) a carrier; and wherein the primer composition is free of a catalyst.
With respect to claim 1, the prior art of Yamazaki teaches a method for improving the adhesion of silicone elastomer [0012] to a pre-cured silicone elastomeric substrate [0034], the method comprising: applying a primer composition to a silicone elastomer substrate [0010]; and air-drying or baking the primer composition to form a uniform primer film covering the substrate [0036].
Yamazaki teaches applying a hydrosylyization curable silicone rubber composition to the primer treated substrate to obtain a composite [0010, claim 7]; and curing the composite in order to obtain a silicone elastomer adhesively bonded to a silicone primer [0037].
Yamazaki teaches the primer composition comprises: one or more polydiorganosiloxane polymer(s) [0015-0018], and a carrier solvent [0028]. Yamazaki teaches the primer composition can be free of a catalyst, by teaching the primer “may contain a catalyst for a hydrosilylation reaction in order to improve the curability and adhesion to this primer layer” [0031].
Yamazaki is silent on the primer comprising a silicone polyether; a reinforcing filler; and specific polydiorganosiloxane polymer types containing at least one alkenyl group or alkynyl group per molecule and its viscosity range.
However, in a similar field of art, the prior art of Mei teaches a silicone rubber composition covering a substrate, wherein the composition comprises: a silicone polydiorganosiloxane-polyether copolymer [0010, 0031-0032]; and reinforcing fillers [0010, 0023-0031].
Mei teaches the polydiorganosiloxane polymers containing at least two alkenyl groups per molecule [0009-0010], with a viscosity preferably from 100 to 300,000 mPa-s at 25°C [0015].
A prima facie case of obviousness exists that Mei teaches the claimed viscosity for the alkenyl-containing polydiorganosiloxane polymer, as the Mei viscosity range of 100 to 300,000 mPa-s at 25°C partially overlaps the claimed range of 1,000 to 500,000 mPa-s at 25°C. See MPEP 2144.05(I).
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to use the components of a silicone polydiorganosiloxane-polyether copolymer and reinforcing fillers, taught by Mei, to improve the primer of Yamazaki in the same way; by defining the copolymer type and its viscosity, and providing fillers to improve mechanical strength of the primer. predictably result in a more detailed primer that meets the claimed elements of viscosity, polyether polymer, and a hydrosilylation reaction composition. Mei teaches additives are generally suggested, and viscosity of the overall composition is taught as being controlled ([0048-0049], [0051], [0053]).
2. The method in accordance with claim 1, wherein the substrate is prepared from a peroxide cured silicone elastomer composition and/or a hydrosilylation curable cured silicone elastomer composition.
With respect to claim 2, as set forth in the rejection of claim 1, Yamakazi teaches the substrate is prepared from a hydrosilylation curable cured silicone elastomer composition.
3. The method in accordance with claim 1, wherein the hydrosilylation curable silicone rubber composition is applied onto the primer treated substrate by way of by injection molding, a cast in place process, encapsulation molding, press molding, dispenser molding, extrusion molding, transfer molding, press vulcanization, centrifugal casting, calendaring, bead application, 3-D printing, or blow molding.
With respect to claim 3, Kamazaki teaches the hydrosilylation curable silicone rubber composition and the primer are applied onto the same component [Claims 9, 12]. Kamazaki teaches the primer is applied by ‘conventionally known methods such as spraying, brush coating, and immersion [0036]’.
Although Kamazaki is silent on the application method for the hydrosilylation curable silicone rubber composition, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to use the conventionally known methods in the field. An ‘immersion’ application could prima facie obviously comprise an encapsulation molding process.
5. The method in accordance with claim 1, wherein component (A) comprises an ABA-type silicone polyether or an AB-type silicone polyether.
With respect to claim 5, it is understood by the Examiner that Mei teaching dimethylvinylsiloxy-terminated polydimethylsiloxane [0017], could teach component (A) comprises an ABA-type silicone polyether. This exact copolymer is disclosed as a ‘polydiorganosiloxane polymer (C)’ example in the instant specification [0041].
6. The method in accordance with claim 1, wherein component (A) is an ABA- type silicone polyether of the general formula: H-(O(CH2)2)d-O-(CH2)3-Si(CH3)2-O[Si(CH3)2-O]e-Si(CH3)2-(CH2)3-0-((CH2)2O)d-H where each of d and e are integers.
With respect to claim 6, it is understood by the Examiner that Mei teaching dimethylvinylsiloxy-terminated polydimethylsiloxane [0017], could teach component (A) is an ABA-type silicone polyether of the general formula: H-(O(CH2)2)d-O-(CH2)3-Si(CH3)2-O[Si(CH3)2-O]e-Si(CH3)2-(CH2)3-0-((CH2)2O)d-H where each of d and e are integers.
7. The method in accordance with claim 1, wherein component (B) comprises a filler selected from the group consisting of finely divided fumed silica, finely divided precipitated silica, a silicone resin, and combinations thereof.
With respect to claim 7, Mei teaches component (B) comprises a filler of finely divided precipitated silica [0023].
8. The method in accordance with claim 1, wherein component (C) is a dimethylvinyl-terminated polydimethylsiloxane.
With respect to claim 8, Mei teaches component (C) can be a dimethylvinyl-terminated polydimethylsiloxane [Claim 3].
10. The method in accordance with claim 1, wherein the primer composition comprises: (A) the silicone polyether in an amount of from 0.05 to 10 wt. % of the solids content of the composition; (B) the reinforcing filler in an amount of from 5.0 to 40 wt. % of the solids content of the composition; (C) the polydiorganosiloxane polymer(s) in an amount of from 40 to 90 wt. % of the solids content of the composition; wherein the solids content of the composition is the composition content excluding component (D); and (D) the carrier in an amount of from 20 to 150 parts by weight, optionally of from 70 to 150 parts by weight, per 100 parts by weight of the solids content of the composition.
11. The method in accordance with claim 1, wherein the primer composition comprises: (A) the silicone polyether in an amount of from 0.05 to 4 wt. % of the total composition; (B) the reinforcing filler in an amount of from 2.0 to 20 wt. % of the total composition; (C) the polydiorganosiloxane polymer(s) in an amount of from 15 to 45 wt. % of the total composition; and (D) the carrier in an amount of from 50 to 80 wt. % of the total composition.
With respect to claims 10 and 11, Yamakazi, in view of Mei, is silent on mass percentages for a specific primer composition.
Mei teaches the wt% relationship between (B) and (C) which prima facie obviously teaches the relationships in claims 10 and 11, as Mei teaches ‘5 to 50 parts of filler to every 100 parts of polydiorganosiloxane’ [0025] would partially overlap the claimed range relationships of (0.5 to 40)/(40 to 90) and (2 to 20)/(15 to 45) for claims 10 & 11. This (B) and (C) wt% ratio could prima facie obviously be used for the components in the modified primer of Yamakazi, in view of Mei, as because of its wide allowable range it would be expected to provide the desired MW and reinforcement properties.
Mei teaches the wt% relationship between (A) and (C) which prima facie obviously teaches the relationships between the broad ranges in claims 10 and 11, as Mei teaches “an organohydrogenpolysiloxane containing at least three silicon-bonded hydrogen atoms in each molecule, in an amount that the molar ratio of the total number of the silicon-bonded hydrogen atoms in this ingredient to the total quantity of all alkenyl radicals in ingredient (A) is from 0.5:1 to 20:1” [0010, 0021, 0032-0034].
Mei also teaches “0.05 to 4.5 parts by weight of a polydiorganosiloxane-polyether copolymer containing from 5 to 50 percent by mole of the polyether, based on 100 parts by weight of the combined weight of {liquid polydiorganosiloxane containing at least two alkenyl radicals, organohydrogenpolysiloxane containing at least three silicon-bonded hydrogen atoms in each molecule, and a reinforcing filler}” [0009-0010].
Regarding (D) the carrier, Yamazaki teaches a primer composition wherein “any amount of an organic solvent” [0009] can be used. This carrier wt% could prima facie obviously be useful for the carrier(s) in the modified primer of Yamakazi, in view of Mei, as it would provide a viscosity and MW for desirable application to the substrate. The amount of carrier is understood to be an art-recognized result effective variable, as any solvent added is evaporated in the heating/curing process, wherein the primer solvent range could be very wide and not seen as particularly critical until it negatively effects solubility, MW, and layer application outside of its operating range.
From these teachings and their relationships, it is understood by the Examiner that the primer composition of the modified process of Yamakazi, in view of Mei, could teach the claimed primer ranges in claims 10 and 11.
See MPEP 2144.05 II A: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In reKulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
This rationale for applying this case law for primer component concentrations as non-limiting claim elements for patentability is strongly supported for claims 10 & 11, as all ranges in claims 10 & 11 are extremely broad; primers using these ranges would not be expected to provide a critical result which would be unexpected from prior art to provide novelty and patentability.
12. The method in accordance with claim 1, wherein the primer composition is prepared by uniformly dissolving or mixing components (A), (B), and (C) in component (D).
With respect to claim 12, Yamazaki teaches the primer composition is prepared by uniformly mixing all components [0059]; therefore, for the modified process of Yamazaki, in view of Mei, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to similarly prepare the primer composition by uniformly mixing all components (A), (B), and (C) in the solvent component (D).
13. The method in accordance with claim 12, wherein the primer composition is diluted with further carrier after being dissolved or mixed together.
With respect to claim 13, Yamazaki, in view of Mei, is silent on the primer composition being diluted with further carrier after being dissolved or mixed together.
However, the Examiner takes official notice that this step would be commonly known and obvious for a formulator in order to lower viscosity into a desired range or as needed to improve application of the primer onto the substrate.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki (US20180105720A1), in view of Mei (US20070141250A1), as set forth in the rejection of claim 1, and further in view of Woerner (US20080188614A1). Claim elements are presented in italics.
9. The method in accordance with claim 1, wherein component (D) is a short chain siloxane containing from 3 to 20 silicon atoms.
With respect to claim 9, Yamazaki, in view of Mei, does not disclose the claimed carrier, though Mei teaches additives are generally suggested, and viscosity of the overall composition is taught as being controlled ([0048]-[0049], [0051], [0053]).
However, the prior art of Woerner renders obvious the claimed carrier.
Woerner is also directed to a silicone rubber composition cured by polymerizing alkenyl functional polysiloxanes having reinforcing filler and teaches that short chain polysiloxanes (e.g., octamethyltrisiloxane) may be added to the composition to provide various benefits associated with dispersing the filler into the composition ([0017]) and then subsequently removed from the composition (see abstract, [0012]-[0017], [0021]-[0026], [0054]). Although the amount of the short chain polysiloxane is not disclosed, it would have been obvious to have adjusted this amount, including to values within the ranges of claims 1 and 8 for the carrier, as part of optimizing the degree of filler-related benefits conferred to the composition as in [0017]. Thus, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to have included a short chain polysiloxane in the composition of Yamazaki, in view of Mei and Woerner, in order to aid in incorporation of the filler into the composition.
Allowable Subject Matter
Claim 4 is 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 (and after withdrawal of 35 U.S.C. 112(b) rejections).
Regarding claim 4, no prior art was found to modify Yamazaki, in view of Mei, to teach the hydrosilylation curable silicone rubber composition is applied onto the primer treated substrate via a cast in place process for the application of subsea insulation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY C GROSSO whose telephone number is (571)270-1363. The examiner can normally be reached on M-F 8AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GREGORY C. GROSSO
Examiner
Art Unit 1748
/GREGORY C. GROSSO/Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748