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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 14 is 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.
Claim 14 is indefinite because the claim is written as a “use” claim without any positive recitation of process steps (see MPEP §2173.05(q), §2173.05(q)(1)).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is written as a “use” claim without any positive recitation of process steps (see MPEP §2173.05(q), §2173.05(q)(1)).
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Ozai et al (U.S. Patent Application Publication 2007/0287014 A1).
Regarding claim 14, Ozai et al (see the entire document, in particular, paragraphs [0012] and [0013]) teaches a composition (see paragraph [0012] (coating composition including a liquid organo-polysiloxane composition) of Ozai et al), wherein the composition includes a micro-filler having a mean particle size between 1-1,000 µm, wherein the micro-filler is selected from the group consisting of low-density hollow fillers, silica or glass micro-fillers and spherical silicone resin particles (see paragraph [0013] (hollow filler having a specific weight of 0.01-0.8 and a particle size of up to 200 µm) of Ozai et al).
Note that claim 14 is a “use” claim (see MPEP §2173.05(q), §2173.05(q)(1)).
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.
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(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maliverney et al (WO 2018/234643 A1) in combination with Ozai et al (U.S. Patent Application Publication 2007/0287014 A1).
Since WO 2018/234643 A1 is not written in English, equivalent document U.S. Patent Application Publication 2021/0332191 A1 will be used to set forth the rejection.
Regarding claim 1, Maliverney et al (see the entire document, in particular, paragraphs [0309], [0314] and [00327]) teaches a process (see paragraphs [0309] (preparing articles made of silicone elastomer by additive manufacturing (e.g., 3D printing)) and [0327] (after printing, the resulting articles may be submitted to various types of post-treatment; spraying or coating of the surface of the elastomer article with a RTV or LSR silicone composition) of Maliverney et al), including (a) coating a 3D-printed silicone article with a cross-linkable silicone composition (see paragraph [0327] (spraying or coating of the surface of the elastomer article with a RTV or LSR silicone composition) of Maliverney et al). Maliverney et al does not teach (1) a cross-linkable silicone composition including a micro-filler having a mean particle size between 1-1,000 µm, wherein the micro-filler is selected from the group consisting of low-density hollow fillers, silica or glass micro-fillers and spherical silicone resin particles. Ozai et al (see the entire document, in particular, paragraphs [0011]-[0013], [0028]-[0030], [0051] and [0053]) teaches a process (see paragraph [0012] (provide a liquid organo-polysiloxane composition for use as a coating material) of Ozai et al), including a cross-linkable silicone composition including a micro-filler having a mean particle size between 1-1,000 µm, wherein the micro-filler is selected from the group consisting of low-density hollow fillers, silica or glass micro-fillers and spherical silicone resin particles (see paragraph [0013] (hollow filler having a specific weight of 0.01-0.8 and a particle size of up to 200 µm) of Ozai et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a cross-linkable silicone composition including a micro-filler having a mean particle size between 1-1,000 µm, wherein the micro-filler is selected from the group consisting of low-density hollow fillers, silica or glass micro-fillers and spherical silicone resin particles in the process of Maliverney et al in view of Ozai et al in order to provide improved silicone rubber property without the use of a silane coupling agent (see paragraph [0011] of Ozai et al).
Regarding claims 2, 4 and 5, see paragraph [0051] (the hollow filler preferably has an outer shell of glass or high melting resin; a shell is often spherically-shaped) of Ozai et al.
Regarding claim 3, see paragraph [0013] (specific weight of 0.01-0.8) of Ozai et al.
Regarding claim 6, see paragraph [0053] (hollow filler in an amount of 0.1-100 parts by weight) of Ozai et al.
Regarding claim 7, see paragraphs [0028] (an organo-polysiloxane having at least two alkenyl groups in one molecule), [0029] (an organohydrogen-polysiloxane having at least two hydrogen atoms bonded to a silicon atom in one molecule), [0030] (a platinum-based catalyst) and [0013] (hollow filler having a particle size up to 200 µm) of Ozai et al.
Regarding claim 8, see paragraph [0327] (spraying) of Maliverney et al.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maliverney et al (WO 2018/234643 A1) in combination with Ozai et al (U.S. Patent Application Publication 2007/0287014 A1) as applied to claims 1-8 above, and further in view of Addison et al (U.S. Patent Application Publication 2013/0165837 A1).
Regarding claim 9, Maliverney et al (in combination with Ozai et al) does not teach (1) a cross-linkable silicone composition coated with a coating weight of between 50-1,000 g/m2 . Addison et al (see the entire document, in particular, paragraphs [0016], [0020], [0026] and [0028]) teaches a process (see paragraphs [0026] (process of making a wound dressing material) and [0028] (including a silicone polymer) of Addison et al), including a cross-linkable silicone composition coated with a coating weight of between 50-1,000 g/m2 ( see paragraph [0020] (total coating weight of silicone is about 50-500 g/m2 ) of Addison et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a a cross-linkable silicone composition coated with a coating weight of between 50-1,000 g/m2 in the process of Maliverney et al (in combination with Ozai et al) in view of Addison et al in order to provide a desired silicone coating on a substrate (see paragraph [0016] of Addison et al).
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maliverney et al (WO 2018/234643 A1) in combination with Ozai et al (U.S. Patent Application Publication 2007/0287014 A1).
Regarding claim 10, Maliverney et al (see the entire document, in particular, paragraphs [0309], [0314] and [00327]) teaches a process (see paragraph [0309] (preparing articles made of silicone elastomer by additive manufacturing (e.g., 3D printing)) of Maliverney et al), including (a) additive manufacturing a silicone article (see paragraph [0309] (preparing articles made of silicone elastomer by additive manufacturing (e.g., 3D printing)) of Maliverney et al); and (b) coating a 3D-printed silicone article with a silicone composition (see paragraph [0327] (after printing, the resulting articles may be submitted to various types of post-treatment; spraying or coating of the surface of the elastomer article with a RTV or LSR silicone composition) of Maliverney et al). Maliverney et al does not teach (1) coating with a cross-linkable silicone composition including a micro-filler having a mean particle size between 1-1,000 µm, wherein the micro-filler is selected from the group consisting of low-density hollow fillers, silica or glass micro-fillers and spherical silicone resin particles. Ozai et al (see the entire document, in particular, paragraphs [0011]-[0013], [0028]-[0030], [0051] and [0053]) teaches a process (see paragraph [0012] (provide a liquid organo-polysiloxane composition for use as a coating material) of Ozai et al), including coating with a cross-linkable silicone composition including a micro-filler having a mean particle size between 1-1,000 µm, wherein the micro-filler is selected from the group consisting of low-density hollow fillers, silica or glass micro-fillers and spherical silicone resin particles (see paragraph [0013] (hollow filler having a specific weight of 0.01-0.8 and a particle size of up to 200 µm) of Ozai et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a cross-linkable silicone composition including a micro-filler having a mean particle size between 1-1,000 µm, wherein the micro-filler is selected from the group consisting of low-density hollow fillers, silica or glass micro-fillers and spherical silicone resin particles in the process of Maliverney et al in view of Ozai et al in order to provide improved silicone rubber property without the use of a silane coupling agent (see paragraph [0011] of Ozai et al).
Regarding claim 11, see paragraph [0314] (photopolymerization, extrusion of material or deposition of material) of Maliverney et al.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maliverney et al (WO 2018/234643 A1) in combination with Ozai et al (U.S. Patent Application Publication 2007/0287014 A1).
Regarding claim 12, Maliverney et al (see the entire document, in particular, paragraphs [0309] and [0327]) teaches a product (see paragraph [0309] (silicone elastomer article) of Maliverney et al), wherein the product is coated with a cross-linkable silicone composition (see paragraph [0327] (silicone elastomer article is coated with a RTV or LSR silicone composition) of Maliverney et al). Maliverney et al does not teach (1) a micro-filler in the coating composition. Ozai et al (see the entire document, in particular, paragraphs [0011]-[0013]) teaches a product (see paragraph [0012] (component coated with a liquid organo-polysiloxane composition) of Ozai et al), including a micro-filler in the coating composition (see paragraph [0013] (hollow filler having a specific weight of 0.01-0.8 and a particle size of up to 200 µm) of Ozai et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a micro-filler in the coating composition of Maliverney et al in view of Ozai et al in order to provide improved silicone rubber property without use of a silane coupling agent (see paragraph [0011] of Ozai et al).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maliverney et al (WO 2018/234643 A1) in combination with Ozai et al (U.S. Patent Application Publication 2007/0287014 A1) as applied to claim 12 above, and further in view of Addison et al (U.S. Patent Application Publication 2013/0165837 A1).
Regarding claim 13, Maliverney et al (in combination with Ozai et al) does not teach (1) that the product is a medical material and/or a medical device. Addison et al (see the entire document, in particular, paragraphs [0001] and [0002]) teaches a product (see paragraph [0001] (a wound dressing) of Addison et al), wherein the product is a medical material and/or a medical device (see paragraph [0001] (a wound dressing including a substrate coated with a silicone) of Addison et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a medical material and/or medical device in Maliverney et al (in combination with Ozai et al) in view of Addison et al in order to provide dressing materials for application to wound surfaces (see paragraph [0002] of Addison et al).
Claims 12 and 13 are product-by-process claims, and while product-by-process claims are defined by and limited by the process, the determination of patentability of product-by-process claims is based on the product itself, not on its process of production (see MPEP §2113(I) and §2113(II)).
Claim(s) 1 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (U.S. Patent Application Publication 2024/0066551 A1) in combination with Darling (U.S. Patent No. 5,895,805 A).
Regarding claim 1, Jia et al (see the entire document, in particular, paragraphs [0001],[0014], [0017], [0058]-[0060], [0110], [0113] and [0158]) teaches a process (see paragraphs [0001] (method for post-treatment of an additive manufactured object) and [0017] (additive manufacturing material includes silicone) of Jia et al), including (a) coating a 3D-printed silicone article with a cross-linkable silicone composition including a filler (see paragraphs [0014] (coating at least part of the surface of the object with a curable silicone composition) and [0110] (curable silicone composition includes silica fine particles) of Jia et al). Jia et al does not teach (1) a composition including a micro-filler having a mean particle size between 1-1,000 µm. Darling (see the entire document, in particular, col. 5, lines 1-5 and 62-65; col. 6, lines 6-10 and 48-56) teaches a process (see col. 6, lines 6-10 (method of applying a composition to an object) and col. 5, lines 1-5 (composition is a polydimethylsiloxane including hollow plastic microspheres) of Darling), wherein the composition includes a micro-filler having a mean particle size between 1-1,000 µm (see col. 6, lines 48-52 (hollow organic microspheres having a density of less than 0.10 g/ml (or 0.10 g/cm3 ) and a diameter of 15-200 µm) of Darling), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a micro-filler having a mean particle size between 1-1,000 µm in the process of Jia et al in view of Darling in order to provide a composition which has lightness, stiffness and insulating abilities (see col. 5, lines 62-65 of Darling).
Regarding claim 6, see paragraph [0113] (amount of silica is 0.5-40 wt%) of Jia et al.
Regarding claim 7, see paragraphs [0058] (at least one organo-polysiloxane compound including at least two alkenyl radicals bonded to silicon atoms), [0059] (at least one organohydrogen-polysiloxane compound including at least two hydrogen atoms bonded to a silicone atom) [0060] (at least one platinum-based catalyst) and [0110] (silica fine particles as filler0 of Jia et al.
Regarding claim 8, see paragraph [0158] (dip coating) of Jia et al.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (U.S. Patent Application Publication 2024/0066551 A1) in combination with Darling (U.S. Patent No. 5,895,805 A) as applied to claims 1 and 6-8 above, and further in view of Ozai et al (U.S. Patent Application Publication 2007/0287014 A1).
Regarding claim 2, Jia et al (in combination with Darling) does not teach (1) substantially spherical particles as micro-fillers. Ozai et al (see the entire document, in particular, paragraphs [0011]-[0013], [0028]-[0030], [0051] and [0053]) teaches a process (see paragraph [0012] (provide a liquid organo-polysiloxane composition for use as a coating material) of Ozai et al), including substantially spherical particles as micro-fillers (see paragraph [0051] (the hollow filler preferably has an outer shell of glass or high melting resin; a shell is often spherically-shaped) of Ozai et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide substantially spherical micro-fillers in the process of Jia et al (in combination with Darling) in view of Ozai et al in order to provide improved silicone rubber property without the use of a silane coupling agent (see paragraph [0011] of Ozai et al).
Regarding claims 4 and 5, see paragraph [0051] (the hollow filler preferably has an outer shell of glass or high melting resin) of Ozai et al.
Regarding claim 3, see paragraph [0013] (specific weight of 0.01-0.8) of Ozai et al.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (U.S. Patent Application Publication 2024/0066551 A1) in combination with Darling (U.S. Patent No. 5,895,805 A) as applied to claims 1 and 6-8 above, and further in view of Addison et al (U.S. Patent Application Publication 2013/0165837 A1).
Regarding claim 9, Jia et al (in combination with Darling) (1) a cross-linkable silicone composition coated with a coating weight of between 50-1,000 g/m2 . Addison et al (see the entire document, in particular, paragraphs [0016], [0020], [0026] and [0028]) teaches a process (see paragraphs [0026] (process of making a wound dressing material) and [0028] (including a silicone polymer) of Addison et al), including a cross-linkable silicone composition coated with a coating weight of between 50-1,000 g/m2 ( see paragraph [0020] (total coating weight of silicone is about 50-500 g/m2 ) of Addison et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a a cross-linkable silicone composition coated with a coating weight of between 50-1,000 g/m2 in the process of Jia et al (in combination with Darling) in view of Addison et al in order to provide a desired silicone coating on a substrate (see paragraph [0016] of Addison et al).
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (U.S. Patent Application Publication 2024/0066551 A1) in combination with Darling (U.S. Patent No. 5,895,805 A).
Regarding claim 10, Jia et al (see the entire document, in particular, paragraphs [0001], [0014], [0017], [0036], [0110] and [0168]-[0175]) teaches a process (see paragraphs [0001] (3D printing process) and [0017] (additive manufacturing material includes silicone) of Jia et al), including (a) additive manufacturing of a silicone article (see paragraphs [0168]-[0175] of Jia et al); and (b) coating the 3D-printed article with a cross-linkable silicone composition including a filler (see paragraphs [0014] (coating at least part of the surface of the object with a curable silicone composition) and [0110] (curable silicone composition includes silica fine particles) of Jia et al). Jia et al does not teach (1) coating with a cross-linkable silicone composition including a micro-filler having a mean particle size between 1-1,000 µm. Darling (see the entire document, in particular, col. 5, lines 1-5 and 62-65; col. 6, lines 6-10 and 48-56) teaches a process (see col. 6, lines 6-10 (method of applying a composition to an object) and col. 5, lines 1-5 (composition is a polydimethylsiloxane including hollow plastic microspheres) of Darling), wherein the composition includes a micro-filler having a mean particle size between 1-1,000 µm (see col. 6, lines 48-52 (hollow organic microspheres having a density of less than 0.10 g/ml (or 0.10 g/cm3 ) and a diameter of 15-200 µm) of Darling), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a micro-filler having a mean particle size between 1-1,000 µm in the process of Jia et al in view of Darling in order to provide a composition which has lightness, stiffness and insulating abilities (see col. 5, lines 62-65 of Darling).
Regarding claim 11, see paragraph [0036] (extrusion 3D printer) of Jia et al.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (U.S. Patent Application Publication 2024/0066551 A1) in combination with Darling (U.S. Patent No. 5,895,805 A).
Regarding claim 12, Jia et al (see the entire document, in particular, paragraphs [0168]-[0175] and [0179]) teaches a product (see paragraphs [0168]-[0175] (additive manufacturing of a silicone cube) and [0179] (cube is dipped in a bath of silicone composition including a silica filler) of Jia et al). Jia et al does not teach (1) a micro-filler in the coating composition. Darling (see the entire document, in particular, col. 5, lines 1-5 and 62-65; col. 6, lines 6-10 and 48-56) teaches a product (see col. 6, lines 6-10 (coated object) of Darling), including a micro-filler in the coating composition (see col. 5, lines 1-5 (composition is a polydimethylsiloxane including hollow plastic microspheres) and col. 6, lines 48-52 (hollow organic microspheres having a diameter of 15-200 µm) of Darling), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a micro-filler in the coating composition of Jia et al in view of Darling in order to provide a composition which has lightness, stiffness and insulating abilities (see col. 5, lines 62-65 of Darling).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (U.S. Patent Application Publication 2024/0066551 A1) in combination with Darling (U.S. Patent No. 5,895,805 A) as applied to claim 12 above, and further in view of Addison et al (U.S. Patent Application Publication 2013/0165837 A1).
Regarding claim 13, Jia et al (in combination with Darling) does not teach (1) that the product is a medical material and/or a medical device. Addison et al (see the entire document, in particular, paragraphs [0001] and [0002]) teaches a product (see paragraph [0001] (a wound dressing) of Addison et al), wherein the product is a medical material and/or a medical device (see paragraph [0001] (a wound dressing including a substrate coated with a silicone) of Addison et al), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a medical material and/or medical device in Jia et al (in combination with Darling) in view of Addison et al in order to provide dressing materials for application to wound surfaces (see paragraph [0002] of Addison et al).
Claims 12 and 13 are product-by-process claims, and while product-by-process claims are defined by and limited by the process, the determination of patentability of product-by-process claims is based on the product itself, not on its process of production (see MPEP §2113(I) and §2113(II)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEO B. TENTONI whose telephone number is (571)272-1209. The examiner can normally be reached 7:30-4:00 ET M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LEO B. TENTONI
Primary Examiner
Art Unit 1742
/LEO B TENTONI/ Primary Examiner, Art Unit 1742
