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 .
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.
Claims 1-3, 5-14 are pending. Applicant’s previous election of the following species still applies and claim 14 is withdrawn (directed to a different combination of alkoxy silanes than the elected species).
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Response to Amendment
Applicant’s amendment of 02/17/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 12 is/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 pre-AIA the applicant regards as the invention.
Claim 12 recites a heat cured composition that provides a liquid silicon rubber which is unclear because the liquid silicone rubber would be a liquid prior to curing not after. Claim 12 also recites “high consistency” which is vague because it is unclear what qualifies as “high consistency”.
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.
If 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.
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 nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-3, 5-7, 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beyer (U.S. 2020/0181408) in view of David (U.S. 2007/0219312) in view of Yoshitaka (JP 2010-265362, cited by Applicant, see machine translation).
Regarding claims 1-3, 5-7, 10-13, Beyer teaches a curable silicone rubber composition comprising A1 and A2 ingredients corresponding to the claimed (i) ingredient and having an overlapping viscosity ([0045]-[0065]), a B2 ingredient corresponding to the claimed (ii) ingredient with an amount that appears to overlap the claimed amount ([0081]-[0086]), a catalytic amount of platinum catalyst as in claim 13, and an amount of cure inhibitor that appears to overlap the claimed amount of claim 13 ([0090]-[0096]). The composition also includes a B1 ingredient which may be a hydride Q resin (i.e., including Q, SiO4/2, units), corresponding to the elected cure modifier (c) species as in claim 6 in order to promote hardness ([0076]-[0079]). Beyer also teaches silica filler as in claim 10 ([0097]). The composition inherently produces a silicone rubber as in claim 11 and is a liquid silicone rubber composition as in claim 12 that can be heat cured ([0138]). The composition is also disclosed as including optional additives such as adhesion promoters but the claimed compounds (a) and (b) are not specifically disclosed.
However, David is also directed to a platinum catalyzed addition cured silicone composition ([0026]-[0030], [0039]) and teaches that a combination of the elected alkoxysilane compounds (i.e., the glycidoxy silane species and the fumarate silane species) may be included as adhesion promoters ([0041]), corresponding to the claimed (a) ingredient as in claims 2-4, such that it would have been obvious to have included such silane compounds in the composition of Beyer because David discloses they provide adhesion as sought by Beyer.
Additionally, Yoshitaka is also directed to a platinum catalyzed addition cured silicone composition ([0008]-[0033], [0102]) and teaches that a mixture of hydrogen functional polysiloxanes that are not containing an aryl group and containing an aryl group ([0086], [0103]) may be utilized with the aryl group containing hydrogen functional polysiloxanes improving wettability and allowing for improved adhesion to aromatic substrates ([0103]), and with the aryl group containing polysiloxanes being formed with pendent aromatic groups as in the polysiloxanes of the present specification that have the present immiscibility properties (i.e., reaction of styrene with trimethylsiloxy terminated copolymers of dimethylsiloxane and methylhydrogensiloxane units, yielding dimethyl/methylhydro/phenylmethyl siloxane copolymer, [0110]-[0114], as in claim 5). Thus, it would have been obvious to have included such aromatic hydride functional polysiloxanes in Beyer as taught by Yoshitaka in order to improve wettability and adhesion to aromatic substrates.
The above ingredients from the cited references corresponding to the claimed (a), (b), and (c) ingredients correspond to the claimed adhesion modifier composition, with all other ingredients corresponding to the claimed curable organopolysiloxane composition.
The amounts of the claimed (a), (b), and (c) ingredients is not explicitly disclosed for the overall composition and/or as claimed in claim 7. However, each of the above ingredients is provided with a corresponding effected property (i.e., hardness for the hydride Q resin from Beyer, adhesion promotion for the glycidoxy silane species and the fumarate silane species from David, and wettability for the hydride functional aryl group containing polysiloxane from Yoshitaka) such that it would have been obvious to have adjusted the amount of these ingredients in the overall composition, and relative to each other, (including to values within claims 1 and 7) as part of the optimization of their respective effects as set forth above. In addition to these amounts being obvious to optimize as art-recognized result effective variables, the claimed amounts are also prima facie obvious based on the following from the MPEP.
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, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); 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, 4 USPQ 237 (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.”).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beyer (U.S. 2020/0181408) in view of David (U.S. 2007/0219312) in view of Yoshitaka (JP 2010-265362, cited by Applicant, see machine translation), as applied to claim 1 above, and further in view of Ishikawa (U.S. 6,191,247).
Regarding claims 8-9, modified Beyer teaches all of the above subject matter but does not disclose the catalysts of claims 8-9. However, Ishikawa is also directed to addition cured platinum catalyzed silicone rubber compositions (See abstract, col. 3, line 20-col. 4, line 60) and teaches that when alkoxy functional ingredients (like the adhesion promoters from modified Beyer) and/or silica (also taught by Beyer) are used, zinc and titanium condensation catalysts as in claims 8 and 9 (inherently transesterification catalysts like in the present specification) may be included to improve the efficiency of such alkoxy functional ingredients and/or silica (col. 12, lines 10-35), with the amount of such ingredients being obvious to adjust to within the claimed range as part of optimizing their catalytic/efficiency improving effect, such that it would have been obvious to have included such catalysts in modified Beyer in order to improve the efficiency of the alkoxy functional ingredients and/or silica as taught by Ishikawa.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that HCR is known in the art and cites [0009] of Beyer, however, this discussion of HCR is still too vague to allow for the term to be recited in a claim (assuming, arguendo, that Beyer’s discussion represents the industry accepted meaning of the term) because of the multiple uses of the word “typical.” It is maintained that the scope of HCR is indefinite (even more so in view of the citation to Beyer). Applicant also ignores the portion of the rejection of claim 12 related to liquid silicone rubber.
Applicant argues that the present composition provides various benefits not recognized by the prior art. It is unclear if this is an argument against the prior art (not persuasive because the prior art does not need to arrive at the claimed subject matter for the same reason as Applicant) or if it is an unexpected results argument (not persuasive because the claims are broad in terms of the type and amount of each ingredient compared to the present examples, which makes the claims non-commensurate in scope).
Applicant then argues against David on the grounds that the list of adhesion promoters is too long which is not persuasive because the list in David is not remotely long enough to render the claimed subject matter non-obvious.
Conclusion
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787