DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendments
2. Amendments to claims 1 and 18 have been entered in the above-identified application. Claims 2 and 19 are canceled. Claims 1 and 3-18 are pending of which claims 14-17 are withdrawn and claims 1, 3-13 and 18 are now under consideration.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
3. Claims 1, 3-13, and 18 are rejected under 35 U.S.C. 102(a)(1) and/35 U.S.C. 102(a)(2) as being anticipated by Imaizumi et al. (US 2018/0105692 A1).
Imaizumi et al. disclose a curable granular silicone composition (equivalent to the granular curable silicone composition of the claimed invention) , which may be in a pellet form. The curable granular silicone composition comprises: (A) hot meltable silicone fine particles having a hydrosilylation reactive group and/or radical reactive group, with a softening point of 30° C. or higher (equivalent to component A of the claimed invention); (B) a filler that does not have a softening point or does not soften below the softening point of component (A) (equivalent to component C of the claimed invention); and (C) a curing agent (equivalent to component B of the claimed invention). The hydrosilylation reactive group in component (A) is preferably an alkenyl group with 2 to 20 carbon atoms and/or silicon-bonded hydrogen atom, and the radical reactive group in component (A) is preferably an alkyl group with 1 to 20 carbon atoms, alkenyl group with 2 to 20 carbon atoms, group containing acrylic, group containing methacrylic, or silicon-bonded hydrogen atom. Component (A) is preferably (A.sub.1) a resinous organopolysiloxane, (A.sub.2) a crosslinked organopolysiloxane formed by partially crosslinking at least one type of organopolysiloxane, (A.sub.3) a block copolymer formed from a resinous organosiloxane block and a linear organosiloxane block, or silicone fine particles formed from a mixture of two types or more thereof (meeting the limitation that the organopolysiloxane resin contains at least 20 mol% or more of a siloxane unit as expressed by RSiO₃/₂ where R represents a monovalent hydrocarbon group with respect to all siloxane units). The average particle size of component (A) is preferably 1 to 5000 μm. Furthermore, component (B) is preferably a reinforcing filler, white pigment, heat conductive filler, electrically conductive filler, phosphor, or a mixture of two types or more thereof, and the average particle size is preferably 1 nm to 500 μm. The amount of component (B) is preferably 10 to 3000 parts by mass with regard to 100 parts by mass of component (A). The curable granular silicone composition is preferably in a pellet form. Furthermore, the method for manufacturing the curable granular silicone composition is characterized by powder mixing components comprising: (A) hot meltable silicone fine particles having a hydrosilylation reactive group and/or radical reactive group, with a softening point of 30° C. or higher; (B) a filler that does not have a softening point or does not soften below the softening point of the aforementioned component (A); and (C) a curing agent,
at a temperature below the softening point of component (A). The method for molding the cured product of the present invention is characterized by comprising the following steps (I) to (III): (I) a step of heating and melting the curable granular silicone composition at a temperature higher than the softening point of component (A);
(II) a step of injecting the curable silicone composition obtained in step (I) into a metal mold; and (III) a step of curing the curable silicone composition injected in step (II) (meeting the limitations of claim 10-13). Component (A) is a hot meltable silicone fine particles that provides good hot melt properties to the present composition, cures by curing agent (C), has a softening point of 30° C. or higher, and has a hydrosilylation reactive group and/or radical reactive group. Examples of the hydrosilylation reactive group in component (A) include alkenyl groups with 2 to 20 carbon atoms such as a vinyl group, allyl groups, butenyl groups, pentenyl groups, hexenyl groups, heptenyl groups, octenyl groups, nonenyl groups, decenyl groups, undecenyl groups, dodecenyl groups, and the like, and silicon-bonded hydrogen atoms. The hydrosilylation reactive group is preferably an alkenyl group. The alkenyl group can be straight chain or branched chain, and preferably is a vinyl group or hexenyl group. Component (A) preferably has at least two hydrosilylation reactive groups in a molecule (meeting the limitations of claim 6 and 7). Component (B) is at least one type of filler that does not have a softening point or does not soften at the softening point of component (A) or lower, and is a component that improves handling workability of the present composition and provides mechanical properties or other properties to the cured product of the present composition. Examples of component (B) include inorganic fillers, organic fillers, and mixtures thereof, but preferably an inorganic filler. Examples of the inorganic filler include reinforcing fillers, white pigments, heat conductive fillers, electrically conductive fillers, phosphors, and mixtures of two types or more thereof. Furthermore, examples of the organic filler include silicone resin type fillers, fluororesin type fillers, and polybutadiene resin type fillers. The average particle size or shape of the white pigment is not restricted, but the average particle size is within a range of 0.05 to 10.0 μm and preferably within a range of 0.1 to 5.0 μm. Furthermore, a surface of the white pigment can be treated by a silane coupling agent, silica, aluminum oxide, and the like. (meeting the limitations of claim 8). The amount of component (B) is not restricted, but the amount is preferably within a range of 10 to 3000 parts by mass, within a range of 10 to 2500 parts by mass, or within a range of 10 to 2000 parts by mass with regards to 100 parts by mass of component (A) in order for the obtained cured product to have excellent hardness and mechanical strength (meeting the limitation that the filler is 400 to 3000 parts by mass relative to a total of 100 parts by mass of component (A) and component (B)). Component (C) is a curing agent to cure component (A), and is not restricted as long as component (C) can cure component (A) and can be an organic peroxide (meeting the limitations of claim 4). The size of the pellet is not restricted, but has an average particle size more or has a circle equivalent diameter of 500 μm, for example. (meeting the limitations that the average particle size of the pellets is in the range of 0.1 to 10.0 mm)(see Abstract and paragraphs 0009-0019, and 0082-0110).
With regards to the limitations that the composition is a solid at 25°C and has a melt viscosity of 200 Pa's or less as measured by a flow tester at 180°C, and that the curing provides a cured product with a bending strength of 15 MPa or more as measured using a method specified in JIS K 6911-1995 "General Testing Method for Thermosetting Plastics", the Examiner takes the position that such limitations are inherent in the composition taught by Imaizumi et al. given that the composition taught by Imaizumi et al. and that of the claimed invention are identical.
With regards to the limitation that the curable silicone composition is compositionally homogenized by melt kneading in the temperature range of 50 to 150°C, and then is molded into a granular form, the patentability of a product does not depend on its method of production. If the product is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
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.
4. Claims 1, 3-13, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Imaizumi et al. (US 2018/0105692 A1).
With regards to the average particle size, the Examiner would like to point out that workable physical properties, such as particle sizes, are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties.
Response to Arguments
5. Applicant's arguments filed on September 30, 2026 have been fully considered but they are not persuasive. Applicants traverse the rejections of record and state that the claimed invention requires that the curable silicone composition is compositionally homogenized by melt kneading in the temperature range of 50 to 150 °C and then molded into a granular form and the granular curable silicone composition has an average particle size of 1.0 to 5.0 mm. Applicants argue that the open-ended statement "500 µm or more" does not disclose the claimed range with sufficient specificity merely because it may theoretically encompass some values within that range and that Imaizumi's working show dimensions substantially outside Applicant's claimed range.
First, if the prior art disclosure does not disclose a claimed range with "sufficient specificity" to anticipate a claimed invention, any evidence of unexpected results within the narrow range may render the claims nonobvious. Second, the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
Applicants further state that the claimed compositional homogeneity is also a structural characteristic of the finished product. However, the structure imparted by a recited process has been considered and it is unclear what distinctive structural characteristics are imparted to the final granular product. Lastly, once a product appearing to be substantially identical is found and a 35 USC 102 /103 rejection has been made, the burden shifts to the Applicant to show an unobvious difference.
The Examiner invite the Applicants to point to specific experimental data to establish that the process of making the granular product and the claimed particle size conclusively show distinct and unexpected results.
Conclusion
6. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CALLIE SHOSHO can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787
