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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 2, 2025 has been entered.
Claim 1 is amended. Claims 1, 6, 8, 10, and 13-20 are pending with claims 15-20 withdrawn from consideration.
Claim Objections
Claims 13 and 14 are objected to because of the following informalities:
Regarding claims 13 and 14, in line 2 of each claim, the amendment where “it” was deleted in a previous response is still present. This notation should be deleted.
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, 13, 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, claim 1 is directed to a composition comprising a curing agent, at least one or more heterocyclic organosilanes, and α,ω-dihydroxydialkyl organopolysiloxane. However, the claim states that the composition consists essentially of the α,ω-dihydroxydialkyl organopolysiloxane. It is unclear how the transitional phrase of “consisting essentially of” limits the compound in question. The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). Additionally, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. In this instance, the phrase is being applied to a type of compound and not the invention as a whole. The invention as a whole is open to other components other than those claimed. Therefore, it is unclear as to how this phrase limits the scope of the claim in this instance. For the purpose of further examination, the claim will be interpreted as simply comprising an α,ω-dihydroxydialkyl organopolysiloxane compound.
Regarding claims 6, 8, 10, 13, and 14, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 8, claim 8 depends from cancelled claim 2. Therefore, it fails to further limit the claim on which it depends. For the purpose of further examination, claim 8 will be interpreted to depend from claim 1.
Regarding claim 13, claim 13 recites that the composition contains at least one organopolysiloxane. Claim 1, from which claim 13 depends, already requires the presence of an α,ω-dihydroxydialkyl organopolysiloxane. Therefore, claim 13 fails to further limit claim 1 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 10, 13, 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, 8, 10, and 13, 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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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 (¶91).
Langerbeins et al. does not teach that the composition further includes a heterocyclic 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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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). 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 December 2, 2025 have been fully considered but they are not persuasive.
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.
Applicant also asserts that neither Langerbeins et al. or Schuh et al. teaches an α,ω-dihydroxydialkyl organopolysiloxane compound as claimed. This argument is unpersuasive. Langerbeins et al. teaches that the composition may contain an α,ω-dihydroxydialkyl organopolysiloxane (¶91).
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