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 .
Double Patenting
Claim 1-18 of this application is patentably indistinct from claim 1-18 of Application No. 19/114414. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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.
Claim 6-9,10-13 and 16-18 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.
As to Claim 6, line 3, it is unclear whether the (A1) linear organopolysiloxane further limits the (A) organopolysiloxane of Claim 1 or is in addition to the (1) organopolysiloxane of Claim 1.
As to Claim 9, line 4, it is unclear as to whether the “organopolysiloxane composition” is referring to one of the components of the composition of Claim 1 or to the entire composition. Applicants are suggested to amend to –- hot-melt forming electrode layer-forming organopolysiloxane composition -- for purposes of clarity.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1,3 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2020/116441 citing US 12037481 (US ‘481) as a English translation.
As to Claim 1, US ’481 discloses a composition comprised of curable organopolysiloxanes (Abstract) for use as an electrode layer (para. Col. 26, line 45) in laminate structures (Col. 26, lines 11-15) wherein the polysiloxanes are mixtures comprised of a linear polysiloxane (Col. 7, lines 50-52) and a polysiloxane that has a MQ copolymer structure where RSiO1/2 and SiO4/2 repeat units are present and terminated with vinyl groups (Col. 8, lines 29-39) and the sum total of the repeat units range from 50 to 500 which the Examiner construes as inherently disclosing the molecular weight of 5000 as required by the claims. Table 1 discloses example compositions wherein said copolymers are present at more than 45 mass percent of the overall composition (Table 1, Exs. 5 and 6, Component (a2) and (a3)). Further, the composition can contain conductive fine fillers (Col. 15, lines 13-35).
US ‘481 fails to disclose the physical properties of being non-flowable at 25 deg C and heat meltable per the claim.
As to the difference, the Examiner respectfully submits the prior art would inherently possess the claimed characteristic due to the similarity of the prior art and claimed compositions.
As to Claim 3, US ‘481 discloses the vapor phase growth carbon fiber (para. 0073).
As to Claims 11-13, the cured films of US ‘481 can be used as a transducer for electronic devices (Col. 5, lines 25-28).
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.
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.
Claim(s) 1,3,4,9,11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US ‘481 and further in view of EP 3875543 (EP ‘543), WO 2022/004462 citing US 2023/0295432 (US ‘432) as a English translation, and US 2015/0380636 (US ‘636).
In the alternative, as to Claim 1, US ’481 is relied upon as discussed above, however, US ‘481 fails to disclose the physical properties of being non-flowable at 25 deg C and heat meltable per the claim.
As to the difference, EP ‘543 discloses a polysiloxane composition that can be used in laminate structures comprised of a mixture of linear polysiloxane resins and MQ polysiloxane copolymers wherein the composition is non fluid at 25 deg C and heat meltable (Abstract). The reference notes the advantage of these properties as being excellent gap fillability where any defects in adherends are easily followed (para. 0132).
It would have been obvious to one of ordinary skill in the art to modify the composition of US ‘481 to have the heat meltable properties of EP ‘543 for the advantages of improving the quality of the adhesion between adjacent layers comprised of organopolysiloxanes.
As to Claim 3-4, see 102 discussion above.
As to Claim 4, US ‘481 fails to disclose the use of single walled carbon nanotubes.
As to the difference, US ‘636 disclose use of conductive fillers including vapor grown carbon fiber and single layer carbon nanotubes (para. 0090) for use in organopolysiloxane based transducers (Abstract).
It would have been obvious to substitute the carbon fiber of US ‘481 with the single walled carbon nanotubes of US ‘636 as substitution of art recognized equivalents is within the level of the ordinarily skilled artisan.
As to Claim 9, US ‘481 fails to disclose the specific layer structure of the laminate as required by the claim.
As to the difference, US ‘432 discloses laminate structures comprised of cured organopolysiloxanes similar to those of US ‘481 wherein the electrode layer is formed on the surface a dielectric layer (para. 0015).
It would have been obvious to utilize the organopolysiloxanes of US ‘481 in the specific laminate configuration of US ‘432 as US ‘481 discloses the embodiments directed to the individual layers as well as laminate structures and US ‘432 specifically discloses the claimed structure using similar materials to those of US ‘481.
As to Claims 11-13, see discussion of 102 rejections above.
As to Claim 14, US ‘481 discloses embodiments involving the prior art composition being in laminated film form (Col. 26, line 14), however, fails to disclose a two-step process of generating a laminate involving a hot melt application of the organopolysiloxane as required by step 2.
As to the difference, US ‘432 discloses the method of forming the two layer structure as discussed in Claim 9. EP ‘543 further discloses that the organopolysiloxane can be applied via heating and melting and formed into sheets (para. 0131).
It would have been obvious to one of ordinary skill in the art to arrive at the claimed steps of Claim 14 in view of the teachings of US ‘481, US ‘432 and EP ‘543 for the obvious advantages of creating a laminate article that easily processed using hot melt methods discussed in the prior art.
As to Claim 15, see discussion of Claims, 9,11 and 14 above.
Allowable Subject Matter
Claims 2,5,6-8,10 and 16-18 would be allowable pending resolution of the double patenting issues raised above.
Specifically, none of the prior art discloses the ratio of storage moduli of Claim 2, the volume fraction and volume resistivity of the composition in Claim 5, or the specific breakdown of the composition including the volume fraction of carbon nanotubes of Claims 6-8,10 and 16-18 nor is there any teaching, suggestion or motivation to arrive at the claimed limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAISON P THOMAS whose telephone number is (571)272-8917. The examiner can normally be reached Monday to Friday, 9:00 am-3:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.P.T/Examiner, Art Unit 1762
/jt/ 8/18/2026
/MARK KOPEC/ Primary Examiner, Art Unit 1762
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