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 .
Response to Amendment
Upon entry of the amendment filed on 05 May 2026, Claim(s) 7, 8 and 10-12 is/are amended and Claim(s) 1-6 is/are cancelled. The currently pending claims are Claims 7-12.
Based on applicants’ remarks and amendments (e.g. the specific components and inks), the objections, the 112(a) rejections and some of the 112(b) rejections are withdrawn. However, they are not found persuasive regarding the obviousness and the remaining 112(b) rejections and the rejections are maintained.
Claim Rejections - 35 USC § 101 & 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 7-12 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.
Claim 7 recites “the components of an A or a B composition are mixed”; however, it is unclear as to the metes and bounds of the claimed limitation (what is A? B?). Claims 8-12 are dependent on claim 7 thus inherit the same deficiencies.
Claim Rejections - 35 USC § 103
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.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stepp (US-20170044370-A1) in view of Bosnyak (US-20170050158-A1) and KOELLNBERGER (US-20170008210-A1).
Claims 7 and 9: Stepp discloses a process of producing a vulcanizable crosslinkable silicone elastomer composition with 0.5-5 % wt. of carbon black and up to 40% of CNTs (abs, ¶21-111, 126, 148-152). Further, Stepp discloses that the solvent is optional, the one/two component(s) system and the pressure filtration via a mesh of 0.25 to 0.35 microns (¶21-111, 152, 188 and examples). The Stepp reference discloses the claimed invention but does not explicitly disclose the MWCNTs and solventless features. It is noted that the Stepp reference discloses CNTs and the optional addition of a solvent and the claim(s) call(s) for MWCNTs and no solvent. In an analogous art, the Bosnyak reference discloses that a process of making a crosslinkable silicone resin with the features of a composition comprising carbon black and MWCNTs and the pressure filtration with a mesh is well known in the art (abs, ¶24-46, 73, 74 and examples). Also, KOELLNBERGER discloses that the absence of a solvent in a composition with a crosslinkable silicone, carbon and CNTs is well known in the art (abs, 19-37, 51-61, 79-81, 102-126 and examples). One of ordinary skill in the art would have recognized that applying the known technique of Bosnyak and KOELLNBERGER to the teachings of Stepp would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhancing the load resistance and/or mechanical/crack properties. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Regarding the claimed conductivity property, if a prior art reference teaches the substantially identical structure/material/product, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claim 8: Stepp, KOELLNBERGER and Bosnyak disclose the claimed hydrosilylation and radical features (Stepp: ¶21-111 and examples & KOELLNBERGER: ¶19-89).
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stepp, KOELLNBERGER and Bosnyak as applied to claim 9 above, and further in view of Agrawal (US-20220260882-A1) or Lettow (US-20190346390-A1).
Claims 10 and 11: The Stepp, KOELLNBERGER and Bosnyak references disclose the claimed invention but do not explicitly disclose the feature of the (laser) printing. In an analogous art, the Agrawal or Lettow reference discloses that laser printing of composition with silicone, carbon black and carbon nanotubes is well known in the art (Agrawal: abs, ¶40, 41, 60, 66, 78-56, 96, 153, 161-167, 171, 181 and Examples & Lettow: ¶16-17, 38, 56, 70, 81, 85-98, 103, 119-127). One of ordinary skill in the art would have recognized that applying the known laser printing of Agarwal or Lettow to the teachings of Stepp, KOELLNBERGER and Bosnyak would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the Agrawal or Lettow application would be repugnant to a skilled artisan.
Claim 12: Stepp, KOELLNBERGER, Bosnyak and Agrawal/Lettow disclose the sensor, actuator and/or EAP features (KOELLNBERGER: ¶11, 126; Agrawal: ¶40, 41, 66 & Lettow: ¶16, 70).
Response to Arguments
Applicant’s arguments, see pg. 5-6, filed 05 May 2026, with respect to the objections, the 112(a) rejections and the 112(b) rejection of claim 8 have been fully considered and are persuasive. The objections and rejections have been withdrawn.
Applicant's arguments filed 05 May 2026 regarding the 112(b) of claims 7-12 and the obviousness rejections have been fully considered but they are not persuasive.
Applicant argues that the two components A and B are well defined in two-components systems as known in the art (pg. 6).
The examiner respectfully disagrees and notes that the claim recites the transition term “containing” which leaves the claim open to additional components, the instant claim does not define any component A and/or B while referencing “the components of an A or a B” – thus introducing a lack of antecedent basis. Based on the foregoing, the examiner maintains that there is an ambiguity regarding the metes and bounds of the claimed invention. Claims 8-12 are dependent on claim 7 thus inherit the same deficiency.
Applicant argues that (a) the Stepp reference does not teach the pressure filtration in the process regarding the silicone component, (b) the Bosnyak reference does not remedy the deficiency of Stepp since Bosnyak teaches an aqueous-based process with a masterbatch and the silicone component is listed amongst many available component, and (c) KOELLNBERGER is directed to a process of based on the absence of particles (pg. 6-7).
The examiner respectfully disagrees and concurs that Stepp does not disclose all the components and processing step in a single example/embodiment; however, Stepp discloses all of the components and process steps thus it would have been well within the purview of a skilled artisan to arrive at the claimed process with the claimed components via routine optimization since Stepp discloses a similar process with similar components. It is noted that, while the Bosnyak or KOELLNBERGER reference does not disclose all the features of the present claimed invention, it is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224,226 (CCPA 1973), In re Keller 624 F.2d 413,208 USPQ 871, 88 1 (CCPA 198 1). Rather the references teach a certain concept, and in combination with the primary reference, discloses the presently claimed invention. Specifically, the Bosnyak reference is relied upon to teach that a process of making a crosslinkable silicone resin with the features of a composition comprising carbon black and MWCNTs and the pressure filtration with a mesh is known in the art. Similarly, KOELLNBERGER is relied upon to teach that the feature of a solvent(-free) process is well known in the art (see ¶19: “a solvent-containing or solvent-free, crosslinkable silicone composition”). One of ordinary skill in the art would have recognized that applying the known technique of Bosnyak and KOELLNBERGER to the teachings of Stepp would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhancing the load resistance and/or mechanical/crack properties. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRI V NGUYEN/ Primary Examiner, Art Unit 1764
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