DETAILED ACTION
Applicant’s response has been fully considered. Claims 1, 8, and 10 are amended, and claim 13 is cancelled. Claims 1, 6, 8, 10, and 14-20 are pending with claims 15-20 withdrawn from consideration.
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 1, 6, 8, 10, and 14 are objected to because of the following informalities:
Regarding claim 1:
In line 5, insert “a” after comprises, and delete “a” after or;
In line 6, insert “a” before straight-chain;
In line 7, insert a comma after the first “group”;
In line 13, insert a comma after H, and delete the first “or”;
In line 15, delete the first or;
In line 17, insert a comma after H, and delete the first “or”;
In line 21, insert “a” before straight-chain;
In line 22, insert a comma after the last “group”;
In line 24, insert a comma after “aralkyl group”;
In line 25, insert a comma after “C”;
In line 26, insert a comma after “atoms”;
In line 32, insert a comma after H, and delete the first “or”;
In line 34, delete the first “or”;
In line 36, insert a comma after H, and delete the second “or”;
In line 39, insert a comma after the first “group”;
In line 43, insert a comma after the second “group”;
In line 45, “comprises” should be singular;
In line 47, insert a comma after “group” and delete the second “or”;
In line 48, insert a comma after the second “group”;
In line 51, insert a comma after “scavenger”;
In line 54, insert a comma after S and a semicolon after O;
In line 61, the h in Rh should be a superscript;
In line 62, the i, j, and t in Ri, Rj, and Rt should be superscripts, and “and any of” should be replaced with “a”;
In line 63, delete “or” at the end of the line;
In line 64, the k, l, m, and t in Rk, Rl, Rm, and Rt should be superscripts, and “and any of” should be replaced with “a”;
In line 65, insert a comma after the second “group”;
In line 66, delete “or”;
In line 67, the n, o, p, q, r, s, and t in Rn, Ro, Rp, Rq, Rr, Rs and Rt should be superscripts, and the word “and” should be deleted;
In line 69, delete “and”;
In line 71, the t, u, and i in Rt, Ru, and Ri should be superscripts;
In line 72, insert a comma after the first “group”; and
In line 95, delete “and” because it is redundant.
Regarding claim 10:
In line 3, insert a comma after H, and delete the first “or”;
In line 5, delete “represents”;
In line 7, insert a comma after the first “group” and delete the second “or”; and
In line 9, insert a comma after the first “group”.
Regarding claims 6, 8, and 14, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
Appropriate correction is required.
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.
Claims 1, 6, 8, 10, and 14 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.
Regarding claim 1, in line 59 there are no structures present for formula (VII), formula (VIII), formulas (IXa) to (IXe), and formula (IX). It is not clear as to what is claimed by the formulae listed in lines 56-58 as well as the definitions of the variables which follow. For the purpose of further examination, the Office will refer to the labeled structures present within the specification.
Also, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “a protecting group” in line 72, and the claim also recites “in particular a tert-butoxycarbonyl group, a fluorenylmethoxycarbonyl group, a benzyloxycarbonyl group, an allyloxycarbonyl group an isoindole-1,3-dione group or a 3-methyl-benzenesulphone group” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim. For the purpose of further examination, the claim will be given its broadest reasonable interpretation which is that of simply a protecting group.
Regarding claim 6, claim 6 recites the limitation "the at least one or more heterocyclic organosilane" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the “at least one organosilane” introduced in line 50 of claim 1.
Regarding claim 8, claim 8 recites the limitation "the at least one or more heterocyclic organosilane" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the “at least one organosilane” introduced in line 50 of claim 1. Further, for clarity, “heterocycle” should be replaced with heterocyclic organosilane.
Regarding claim 10, claim 10 recites the limitation "the at least one or more heterocyclic organosilane" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the “at least one organosilane” introduced in line 50 of claim 1.
Additionally, claim 10 recites “at least one ORd residue” in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim as this variable is found in Formula III which has been deleted from claim 1. For the purpose of further examination, this limitation, and therefore this claim, will not be treated on the merits as the claim/limitation further defines a variable no longer present in the parent claim.
Regarding claim 14, claim 14 recites the limitation "α, ω-dihydroxydialkyl organopolysiloxane" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the “at least one organopolysiloxane” introduced in lines 96 and 97 of claim 1.
Also, claim 14 recites the limitation "heterocyclic organosilane" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted to refer to the “organosilane” introduced in line 50 of claim 1.
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.
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.
Claims 1, 6, 8, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Langerbeins et al. (EP 3269785) in view of Schuh et al. (WO 2018/019632). For convenience, the citations below for Langerbeins et al. are taken from an English language machine translation provided previously; and the citations below for Schuh et al. are taken from English language equivalent US 2019/0284448.
Regarding claims 1, 6, and 8, Langerbeins et al. teaches a composition, that may be used as an adhesive (¶1), comprising (a) a hardener (curing agent) containing a compound with the general structural formula R1mSi(R)4-m, wherein each R1 independently represents an optionally substituted straight-chain or branched C1 to C16 alkyl group, an optionally substituted straight-chain or branched C2 to C16 alkenyl group, or an optionally substituted C4 to C14 aryl group; m is an integer from 0 to 2; each R is independently selected from the group consisting of
a hydroxycarboxylic acid ester residue having the general structural formula (I):
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186
241
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wherein each R2 independently represents H or an optionally substituted, straight-chain or branched C1 to C16 alkyl group or a C4 to C14 aryl group; each R3 independently represents H or an optionally substituted, straight-chain or branched C1 to C16 alkyl group or a C4 to C14 aryl group; R4 represents an optionally substituted, straight-chain or branched C1 to C16 alkyl group, a C4 to C14 cycloalkyl group, a C5 to C15 aralkyl group, or a C4 to C14 aryl group; R5 represents C or an optionally substituted saturated or partially unsaturated cyclic ring system with 4 to 14 carbon atoms, or an optionally substituted aromatic group with 4 to 14 carbon atoms; and n is an integer from 1 to 10;
-O-C(O)-R6, where R6 is H, a C1 to C16 alkyl group, a C4 to C14 cycloalkyl group, or a C4 to C14 aryl group; and
-O-N=CR7R8, where R7 and R8 independently represent H, a C1 to C16 alkyl group, a C4 to C14 cycloalkyl group, or a C4 to C14 aryl group (¶20).
The composition further contains an α,ω-dihydroxydialkyl organopolysiloxane (component c) (¶91).
Langerbeins et al. does not teach that the composition further includes at least one organosilane. However, Schuh et al. teaches an adhesive (¶1) comprising from 0.5% to 15% by weight of a “getter material,” (¶26) that is also known as a scavenger for water or oxygen (¶15), and is preferably a cyclic azasilane that is a compound of the general formula
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116
132
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wherein R is a hydrogen, alkyl radical, or aryl radical; X is an alkyl or aryl radical; and Y is an alky or aryl group or an alkoxy group, where the Y groups may be the same or different (¶30-35). This corresponds to definition of b1, which is a heterocyclic organosilane with a silicon atom linked to a nitrogen atom (heteroatom). Langerbeins et al. and Schuh et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of adhesive compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 0.5% to 15% by weight of a cyclic azasilane, as taught by Schuh et al., to the composition, as taught by Langerbeins et al., and would have been motivated to do so because these compounds are effective for scavenging chemically combined hydroxy groups, water, and oxygen that can harm the function of the adhesive.
Regarding claim 14, Langerbeins et al. teaches that the composition can contain from 30 to 80% by weight of the organosilicone compound (the organopolysiloxane) (¶98), and from 1 to 15% by weight of the hardener (curing agent) (¶100). Additionally, as set forth above, Schuh et al. teaches using the cyclic azasilane in from 0.5% to 15% by weight (¶26).
Response to Arguments
Applicant's arguments filed April 17, 2026 have been fully considered but they are not persuasive.
Applicant argues that Schuh et al. does not teach or suggest iminosilanes of the general structural formula (VII), silanoaminosilanes of the general structural formula (VIII), or amino-protecting group-containing organosilanes (IXa) to (IXe) derived from the general structural formula (IX). This argument is unpersuasive. While applicant is correct in that Schuh et al. does not teach or suggest the above-named compounds, it does teach a heterocyclic organosilane which corresponds to claimed component b1. Only one of b1 or b2 is required for the claimed composition; both compounds are not required to be present. Therefore, since component b1 is taught by Schuh et al. and component b2 is not required to be present, applicant’s argument is unpersuasive.
Applicant argues that one of ordinary skill in the art would not be motivated to modify the composition of Langerbeins et al. by considering Schuh et al. because Schuh et al. does not possess the claimed curing agent and α,ω-dihydroxydialkyl organopolysiloxane compound which forms a silicon rubber mass. This argument is unpersuasive. As stated in the above rejection, Langerbeins et al. teaches the claimed curing agent and the claimed α,ω-dihydroxydialkyl organopolysiloxane compound. Schuh et al. is cited for its teaching of a cyclic azasilane, which is used in a composition that is an adhesive and may include a rubber based on silicone. Schuh et al. is not required to teach the claimed curing agent and α,ω-dihydroxydialkyl organopolysiloxane compound as those components are taught by Langerbeins et al. References do not have to contain the exact some components in order to be combinable.
In this case, Langerbeins et al. is directed to a composition containing a hardener and adhesion promoter for use as an adhesive agent in silicone rubber compositions (¶1). Langerbeins et al. additionally states that the composition can comprise further customary additives (¶92). Schuh et al. teaches an adhesive (¶1), which may include an elastomer based on silicone (¶43), comprising from 0.5% to 15% by weight of a “getter material,” (¶26) that is also known as a scavenger for water or oxygen (¶15), and is preferably a cyclic azasilane. Schuh et al. teaches that the benefit of adding a scavenger such as this to an adhesive based on silicone rubber is to scavenge chemically combined hydroxy groups, water, and oxygen that can harm the function of the adhesive. The suggestions and reasonings for combining that are used in the obviousness rejection of record are present in the prior art of record, and based on this teaching, one of ordinary skill in the art would have been motivated to modify the composition of Langerbeins et al. with the specific teaching of Schuh et al. referenced. This argument is unpersuasive.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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