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
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of copending Application No. 19/114412 reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to curable organopolysiloxanes further conductive fillers and no presence of an organic solvent
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of copending Application No. 19/114414 reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to curable organopolysiloxanes further conductive fillers and no presence of an organic solvent
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18013879 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to curable organopolysiloxanes further conductive fillers and no presence of an organic solvent
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US Patent No. 9947858. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to curable organopolysiloxanes further conductive fillers and no presence of an organic solvent
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1-4,7,8,9-14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2022/004462 citing US 2023/0295432 (US ‘432) as a English language equivalent.
As to Claim 1, US ‘432 discloses curable organopolysiloxane compositions (Abstract) used to form electrodes (para. 0072) where the composition is comprised of reactive organopolysiloxanes where one of the polymers contains two carbon-carbon double bonds per molecule and one polymer is comprised of Si-H bonded groups at 0.5 to 2.5 mol per 1 mol of the carbon-carbon double bonds in the polymer. Further, the composition comprises conductive fine particles such as VGCF (para. 0073). The reference discloses the composition can be solvent free (para. 0090).
As to Claims 2-4, see discussion of Claim 1.
As to Claim 7, US ‘432 discloses a polymer of dimethylsiloxane blocked at both ends of the polymer with a dimethylhydrogensiloxane group which the Examiner construes contains two Si-H bonds in total. See Claim 1 in regards to Si-H content in the polymer.
As to Claim 8, the composition can further contain platinum based hydrosilylation catalysts (para. 0066).
As to Claims 9-14, US ‘432 discloses a laminate article and method of making the laminate comprised of an organopolysiloxane layer containing conductive particles (i.e. electrode layer) onto a organopolysiloxane layer that is a dielectric layer. The laminate can be used as a transducer or electronic device (paras. 0112-0114).
Claim(s) 1-5,7 and 8 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 2021/0380807 (US ‘807).
As to Claim 1, US ‘807 discloses a curable organopolysiloxane composition that further contains single walled nanotubes (Abstract). The reference is silent with respect to the presence of solvent and the Examiner construes this as not being present.
As to Claim 2, see discussion of Claim 1.
As to Claim 3, the reference discloses the use of a hydrosilylation catalyst (para. 0036), an linear organopolysiloxane that contains terminal carbon-carbon double bonds (vinyl groups) (para. 0015, 0019) and a organopolysiloxane that has a molar ratio of Si-H bonds to carbon-carbon double bonds of 0.5 to 5 to 1 mol (para. 0020).
As to Claims 4-5, see discussion of Claim 1.
As to Claim 7, see discussion of Claim 3 above. The reference further discloses organopolysiloxanes that contain Si-H terminated end groups (para. 0024).
As to Claim 8, the composition can further contain platinum containing hydrosilylation catalysts.
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) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US ‘432 in view of US 2015/0380636 (US ‘636).
As to Claim 5, US ‘432 fails to disclose the use of carbon nanotubes.
As to the difference, US ‘636 discloses organopolysiloxanes composition for use in laminate sensors (Abstract) where the electrode layers contain nanotubes and VGCF (para. 0090).
It would have been obvious to one of ordinary skill in the art to substitute the VGCF of US ‘432 with the nanotubes of US ‘636 as substitution is within the level of the ordinarily skilled artisan.
As to Claim 6, US ‘432 discloses the composition as having a volume resistivity of 102 ohm-cm (para. 0037).
However, US ‘432 fails to disclose the volume fraction of the conductive fine particles.
As to the difference, it would have been obvious to optimize the content of the conductive filler for purposes of reaching the target volume resistivity level as the electrical properties of the material are directly related to conductive filler content.
Claim(s)6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US ‘807.
As to Claim 6, US ‘807 discloses the compositions have volume resistivities of 100 ohm-cm (para. 0112), however, fails to disclose the specific volume fraction of carbon nanotubes.
As to the difference, it would have been obvious to optimize the content of the conductive filler for purposes of reaching the target volume resistivity level as the electrical properties of the material are directly related to conductive filler content.
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/ 8/19/2026
/MARK KOPEC/Primary Examiner, Art Unit 1762
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