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 .
Claim Objections
Claims 2 and 5 and objected to because of the following informalities: in claim 2, line 2, “um” should be changed to “µm”; in claim 5, line 2, “0.8 WATT/mm” should be changed to “0.8 WATT/mm2” and in claim 5, line 3, “0.15 WATT/mm” should be changed to “0.15 WATT/mm2”. Appropriate correction is required.
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.
Claims 1, 6, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (Korean Patent Publication No. KR 10-0600497 B1, machine language translation provided and cited herein).
Regarding claim 1, Park discloses a method for surface modification of silicone rubber ([0001] of Park), comprising: a step of plasma treating one surface of silicone rubber ([0005] of Park, surface of silicone rubber modified using plasma), wherein the plasma treatment is performed at a plasma temperature of less than 300 at 1 atm ([0015] of Park, rubber plasma treated in atmospheric pressure plasma apparatus at room temperature.
Regarding claim 6, Park discloses that the discharge frequency of the plasma is 1 khz to 27.12 Mhz ([0012] of Park, RF frequency of 12 to 14 Mhz applied to plasma apparatus).
Regarding claim 8, Park discloses that the plasma treatment interval is 1 mm to 50 mm (distance between plasma gas supply and silicone rubber sheet is 1 to 20 mm).
Regarding claim 9, Park discloses that the surface energy of the surface-modified silicone rubber against water is 10 mN/m to 60 mN/m higher than the surface energy before surface treatment (pg. 4, Table 1 of the original Korean language version of Cheng).
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.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Park.
Regarding claim 7, Park does not specifically disclose that the plasma treatment energy is 0.05 WATT/mm2 to 0.8 WATT/ mm2. Park, however, discloses that as the applied voltage (i.e., wattage) of the plasma is increased, the bonding strength of the silicone rubber sheet is increased ([0022] of Park). Park therefore establishes that the voltage/wattage of the plasma is a variable which achieves a recognized result (i.e., improving the bonding strength of the silicone rubber sheet) ([0022] of Park). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to optimize the wattage of the plasma in the method of Park, including providing a wattage or wattage per mm2 as recited in claim 7. Moreover, as set forth in the MPEP, once a parameter is recognized as a result-effective variable, i.e., a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) (MPEP §2144.05 II B).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Cheng et al. (U.S. Patent Application Publication No. 2010/0132476 A1).
Regarding claim 2, Park discloses that the silicone rubber is in the form of a sheet ([0001] of Park), but does not specifically disclose that the thickness of the silicone rubber sheet is 0.1 µm to 150 mm. Cheng discloses a method comprising plasma treating a PDMS substrate ([0053] of Cheng) wherein the PDMS substrate is 500 µm thick ([0052] of Cheng). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to plasma treat a silicone rubber sheet having a thickness of 500 µm since Cheng establishes that it was known to plasma treat such silicone rubber sheets. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claims 3 and 5 rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Jofre-Reche et al. (“Surface Treatment of Polydimethylsiloxane (PDMS) with Atmospheric Pressure Rotating Plasma Jet”, Plasma Process. Polym., 13, pp. 459-469, 2016).
Regarding claim 3, Park does not specifically disclose that the gas used in the plasma treatment is air or carbon dioxide (CO2). Jofre-Reche, however, discloses a plasma surface treating process for PDMS (Abstract of Jofre-Reche) wherein air is used as the plasma gas (pg. 460, right hand column, sec 2.2.1 of Jofre-Reche). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to substitute air as the plasma gas in the method of Park since Jofre-Reche establishes that air was a suitable plasma gas for plasma treating PDMS. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art (MPEP § 2143 I B). As evidenced by Park, the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components. In addition, as also evidenced by Jofre-Reche, the substituted components and their functions were known in the art. One of ordinary skill in the art could also have substituted one known element for another, and the results of the substitution would have been predictable.
Regarding claim 5, neither Park nor Jofre-Reche specifically disclose that when air is used in the plasma treatment, the output of the plasma is 0.05 WATT/mm2 to 0.8 WATT/mm, and when carbon dioxide (CO2) is used, the output of the plasma is 0.15 WATT/mm or 0.5 WATT/mm2. Park, however, discloses that as the applied voltage (i.e., wattage) of the plasma is increased, the bonding strength of the silicone rubber sheet is increased ([0022] of Park). Park therefore establishes that the wattage of the plasma is a variable which achieves a recognized result (i.e., improving the bonding strength of the silicone rubber sheet) ([0022] of Park). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to optimize the wattage of the plasma in the method of Park, including providing a wattage or wattage per mm2 as recited in claim 5. Moreover, as set forth in the MPEP, once a parameter is recognized as a result-effective variable, i.e., a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) (MPEP §2144.05 II B).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Jofre-Reche as applied to claim 3 above and further in view of Aadim et al. (“Influence of Gas Flow Rate on Plasma Parameters Produced by Plasma Jet”, IOP Conf. Series: Materials Science and Engineering, 987, 2020).
Regarding claim 4, neither Park nor Jofre-Reche specifically disclose that, when air is used in the plasma treatment, the supply flow rate of the air is 1L/Wh to 10L/Wh, and when carbon dioxide (CO2) is used, the supply flow rate of carbon dioxide (CO2) is 1 L/Wh to 3 L/Wh. Aadim, however, establishes that plasma gas flow rate is a variable which achieves a recognized result (i.e., affecting the intensity of emissions of the plasma) (pg. 9, Conclusion section of Aadim). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to optimize the plasma gas flow rate in the modified method, including providing a flow rate as recited in claim 4. Moreover, as set forth in the MPEP, once a parameter is recognized as a result-effective variable, i.e., a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) (MPEP §2144.05 II B).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng in view of Dongxu et al. (“Analysis of Plasma Bonding process and Effect for PDMS”, Mach, Sci. & Tech. for Aerospace Eng., Vo. 37, No. 5, May 2018) and Park.
Regarding claim 10, Cheng discloses a joining method of silicone rubber ([0054] of Cheng, PDMS substrates bonded together), comprising: a step of joining silicone rubber, one surface of which has been plasma treated, with another silicone rubber ([0053] of Cheng, surfaces of PDMS substrates #20 #30 plasma treated).
Cheng does not specifically disclose compressing the silicone rubber with another silicone rubber during joining. Dongxu, however, discloses that the bonding effect of PDMS can be significantly improved by applying pressure during bonding (Abstract of Dongxu). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to apply pressure during bonding in the method of Cheng. One of skill in the art would have been motivated to do so in order to improve the improve the bonding effect as taught by Dongxu (Abstract of Dongxu).
Cheng does not specifically disclose that the surface is modified through the method of claim 1. Park, however, discloses a method for surface modification of silicone rubber ([0001] of Park), comprising: a step of plasma treating one surface of silicone rubber ([0005] of Park, surface of silicone rubber modified using plasma), wherein the plasma treatment is performed at a plasma temperature of less than 300 at 1 atm ([0015] of Park, rubber plasma treated in atmospheric pressure plasma apparatus at room temperature. According to Park, the treated sheet has improved surface activity and higher adhesive strength ([0005] of Park). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to surface treat the silicone rubber sheets of Cheng using the method of Park. One of skill in the art would have been motivated to do so in order to improve the surface activity and the adhesive strength of the sheet as taught by Park ([0005] of Park).
Regarding claim 11, Dongxu does not specifically disclose the compression is performed for 1 to 60 seconds at a pressure of 0.1 kg/cm2 to 10 kg/cm2. Dongxu, however, discloses that the bonding pressure is more than 0.4 MPa (i.e., >4 kg/cm2) (Abstract of Dongxu). Dongxu therefore clearly teaches a compression range (i.e., >4 kg/cm2) that overlaps with that recited in claim 11 (i.e., 0.1 kg/cm2 to 10 kg/cm2) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (See MPEP 2144.05(I)). Regarding the compression or bonding time, Dongxu establishes that bonding time is a variable which achieves a recognized result (i.e., affecting the bonding of PDMS substrate) (Abstract of Dongxu). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to optimize the bonding or compression time in the modified method, including providing a bonding time as recited in claim 11. Moreover, as set forth in the MPEP, once a parameter is recognized as a result-effective variable, i.e., a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) (MPEP §2144.05 II B).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746