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 .
Election/Restrictions
Claims 5-6, and claim 3 (species γ-aminopropyltrialkoxysilane, formula (3), formula (4), and formula (5)) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/5/2024.
Newly submitted claim 9 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 9 is directed to a process of using the product in claim 1. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product can be used in a materially different process, such as for improving chemical resistance instead of for moisture resistance.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 9 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment
The amendment filed on 11/14/2025 has been entered. Claim 1 is amended. Claim 9 is new. Claim(s) 1-9 is/are pending with claim(s) 3, 5-6 and 9 withdrawn from consideration. Claim(s) 1-2, 4 and 7-8 is/are under examination in this office action.
Response to Arguments
Applicant’s argument filed on 11/14/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the claimed composition provides a product having excellent safety, low odor, adhesion, and curability, as well as satisfactory moisture resistance even though it is a RTV silicone rubber composition of lactate release type, which is an unexpected effect. See Example 1 and Comparative Example 1 of the present specification.
In response, performance of Example 1 and Comparative Example 1 is shown in Table 1 of the specification. Applicant only presented qualitative evaluation for adhesion performance for the examples. The examiner cannot determine if the improvement in adhesion is significant or not without quantitative data. For storage stability, the examiner cannot determine if the difference between Example 1 (hardness=19) and Comparative Example 1 (hardness=18) is significant since the difference is small and there is no data showing experimental error.
The improvement on moisture resistance seems to be significant. However, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 1 recites (A) an organopolysiloxane having general formula (1) which covers a wide variety of compound depending on the R1, R2, a, and n in the formula. However, the examples only employ two dimethylpolysiloxanes. It is not known if other organopolysiloxane will give the same results. Claim 1 recites (B) a hydrolyzable silane compound having general formula (2) which covers a wide variety of compounds depending on the R3, R4, and b in the formula. However, the examples only employ two compound of (B) (methyltris(ethyllactato)silane and vinyltris(ethyl lactato)silane) [0051 spec.]. It is not known if other hydrolyzable silane compound will give the same results. Moreover, claim 1 recites 0.1-30 parts of (B); but the example only employs 6.6 parts of (B). It is not known if 0.1 part or 30 parts of (B) will give the same results. Claim 1 recites (C) an amino-containing hydrolyzable organosilane compound, which covers a wide variety of compounds. However, the example only employs one compound (N-3-(aminoethyl)-y-aminopropyltrimethoxysilane). It is not known if other amino-containing hydrolyzable organosilane compounds will give the same results. Moreover, claim 1 recites 0.1-10 parts of (C); but the example only employs 0.3 parts of (C). It is not known if 0.1 parts or 10 parts will give the same results. Similarly, the example’s use of the claimed (D) and (E) are not commensurate with the full scope of the claimed limitations.
Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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, 4 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alexander et al (US 20140296433 A1) in view of Dingman et al (US 20210238444 A1). Mojsiewicz (Journal of Pharmaceutical and Biomedical Analysis 58 (2012) 200–207) is used as an evidentiary reference.
Regarding claim 1, Alexander teaches filled silicone compositions for adhesive, coating and sealant application [0008], comprising ingredient (A) silyloxy-endcapped polydiorganosiloxane (SiOE Polymer) prepared by reaction of 50-95 wt% of a hydroxyl-endblocked polydiorganosiloxane (HOE Polymer) and 0.75-7 wt% of a first self-catalytic silane SCS1 [0003-0004, 0023, 0026]. The composition can be cured at ambient temperature trigged by moisture [0048, 0050, 0056].
The SiOE polymer is a silyloxy-endblocked polydialkylsiloxane, e.g., having terminal endblocking groups (C1-C6 heterohydrocarbyl)3SiO- or (C1-C6 hydrocarbyl)3SiO- [0019].
The SCS1 can be a molecule having Si directly bonded to 1 hydrocarbyl (e.g., alkyl or alkenyl) and 3 hydrolyzable groups; or a molecule having Si directly bonded to 4 hydrolysable groups. Each hydrolysable group can be alkoxy [0024].
It would have been obvious to one of ordinary skill in the art at the time of filing to select alkyl group as the hydrocarbyl group and alkoxy group as the hydrolysable group for SCS1 in Alexander's composition, as they are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Therefore, the SCS1 can be (alkyl)Si(alkoxy)3, or Si(alkoxy)4.
The polydiorganosiloxane in HOE polymer can be a polydi(C1-C7)hydrocarbyl)siloxane comprising a D unit of R2SiO2/2 wherein R independently is the (C1-C7)hydrocarbyl [0022]. An example of the HOE polymer is (α,Ω)-dihydroxy-polydimethylsiloxane (DH-PDMS) [0036]. The HOE polymer has viscosity of 10,000-100,000 cSt [0005].
The examiner submits that the ingredient (A) is similar to the claimed (A) having formula (1), wherein X=O, R1 in the main chain =(C1-C7) alkyl, R1 in the chain end =(C1-C6) alkyl, OR2=C1-C6 alkoxy. The corresponding a value can be 0 (when there are 4 hydrolysable groups) or 1 (when there are 3 hydrolysable groups). As evidenced by Mojsiewicz, a PDMS having viscosity of 10,000-100,000 cSt has degree of polymerization n=800-1870 [p.201, Table 1], meeting the claimed at least 10. The difference is that X is O instead of the claimed C1-C4 alkylene group.
In the same field of endeavor, Dingman teaches a moisture curable polyorganosiloxane compositions that do not require heating to cure and are used as sealants, adhesives, or coatings [abstract, 0003]. Dingman teaches (A) a polyorganosiloxane endblocked with alkoxysilyl-containing groups at both molecular terminals [0011]:
X-(SiR112O)m-SiR112-X
wherein R11 is the same or different monovalent hydrocarbon group lacking an aliphatic unsaturated bond, “m” is an integer of from 20 to 1000, X is -R13-SiR11a(OR12)(3-a), wherein R12 is an alkyl group, R13 is the same or different alkylene group, “a” is 0, 1 or 2 [0014-0017].
Therefore, Dingman’s (A) reads on the claimed (A), wherein Dingman’s R11 is the claimed R1, Dingman’s R13 is the claimed X = C1-C4 alkylene group, m=20-1000 overlaps the claimed n≥10, “a” overlaps the claimed a.
Dingman teaches that the moisture curable polyorganosiloxane composition can provide good to excellent coating performance and mechanical properties [0009]. It would have been obvious to one of ordinary skill to substitute Alexander’s ingredient (A) with Dingman’s (A) in order to obtain good to excellent coating performance and mechanical properties, because they are used for the same purpose, and they have substantially similar structure, with the only difference being an alkylene linkage versus oxygen linkage.
Alexander’s composition further comprises 0-5 wt% of (B) second self-catalytic silane SCS2 [0003, 0027] including vinyl tri(ethyllactate)silane [0028] which is equivalent to vinyltris(ethyl lactato)silane. As evidenced by the applicant, this compound reads on the claimed (B) [0020 spec.].
The composition further comprises 0.01 to 50 weight wt % of adhesion promoter (D) including gamma-aminopropyltriethyoxy silane [0033], which reads on the claimed (C), as evidenced by the applicant [claim 2].
The composition further comprises 1 to 20 wt% of a filler (F) such as (f1) a reinforcing filler, (f2) an extending filler, (f3) a conductive filler [0034], which reads on the claimed inorganic filler (D).
The composition further comprises 0.001 wt % to 5 wt % of cure catalyst (C) [0031], which reads on the claimed curing catalyst (E).
The aforementioned amounts overlap the claimed amounts:
%
corresponding to the claimed
HOE polymer + SCS1
(50-95)+(0.75-7)
(A) (100 parts)
SCS2
0-5
(B) (1-30 parts)
adhesion promoter
0.01-50
(C) (0.1-10 parts)
Filler
1-20
(D) (1-800 parts)
Catalyst
0.001-5
(E) (0.001-15 parts)
A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The recited “room temperature vulcanizable” is a statement of intended use that imparts no additional structure beyond the claimed composition and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Nevertheless, Alexander teaches that the composition is curable at ambient temperature [0006, 0012].
The recited “characterized in that as a base polymer for improving the moisture resistance of a cured product of the room temperature vulcanizable organopolysiloxane composition” represents a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
Regarding claim 4, Alexander teaches dimethyltin dineodecanoate and tetraalkoxytitanate as the catalyst [0031], meeting the claimed organotin compound and organotitanium compound.
Regarding claims 7-8, Alexander teaches that the first composition may comprise a plasticizer [0034]. Alexander also teaches that the first composition may comprise a polydimethylsiloxane fluid having a kinematic viscosity of from 100 cSt to 1000 cSt (e.g., Dow CorningTM 200 fluid having kinematic viscosity of 1000 cSt) [0034], which is a non-reactive silicone oil, identical to the claimed dimethylsilicone oil and is therefore capable of functioning as a plasticizer.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alexander et al (US 20140296433 A1) in view of Dingman et al (US 20210238444 A1) as applied to claim 1 above, further in view of Kodama et al (US 20170037287 A1).
Regarding claim 2, Alexander teaches gamma-aminopropyltriethyoxy silane as stated above. Alexander does not teach N-β-(aminoethyl)-γ-aminopropyltrialkoxysilane.
In the same field of endeavor, Kodama teaches a room temperature curable silicone rubber composition for adhesives [0002] comprising an adhesion promotor that can be either 3-aminopropyltriethoxysilane (equivalent to gamma-aminopropyltriethyoxy silane ) or N-(2-aminoethyl)-3-aminopropyltrimethoxysilane (equivalent to N-β-(aminoethyl)-γ-aminopropyltrimethoxysilane) [0058].
It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since Kadama recognized gamma-aminopropyltriethyoxy silane and N-β-(aminoethyl)-γ-aminopropyltrimethoxysilane are equivalent for the same purpose as an adhesion promotor in room temperature curable silicone rubber for adhesives, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute gamma-aminopropyltriethyoxy silane with N-β-(aminoethyl)-γ-aminopropyltrimethoxysilane in Alexander’s composition.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Examiner, Art Unit 1762