DETAILED ACTION
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.
Claims 1 to 16 are rejected under 35 U.S.C. 103 as being unpatentable over CN 106810573, as interpreted by the English language translation.
This rejection relies on the same rejection rationale found in the previous office
action with one exception – the newly amended range for “p”. This amendment over-came the anticipation rejection but raised an obviousness rejection, found below.
The CN reference teaches the following compound:
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90
350
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In which R1 can be methyl or ethyl and R3 is -CH2CH2-. See page 1/2 and
paragraph 25. This meets the compound required in both claims 1 and 2 with the exception of the “p” value. The CN reference teaches a corresponding value of 2, while applicants’ claims are now limited to 0, 1 or 3 to 12. However such a difference would have been obvious to one having ordinary skill in the art since “p” values of 1 and 3 are adjacent members of a homologous series, found on either side of the “p” value of 2.
Compounds which are homologs (differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In the instant application, one having ordinary skill in the silane art would recognize that ethylene groups and propylene or methylene groups are often used in the alternative to attach Si atoms to functional groups. This known commonality coupled with the fact that they are adjacent homologs renders the difference obvious.
Under Background technique the CN reference teaches that these compounds
are coupling agents used in amounts of between 3 to 15%. It also teaches that amino silane couplings agents are useful in polyurethane and epoxy systems.
From this one having ordinary skill in the art would have found the addition of the silane coupling agent found in the CN reference to a polyurethane or epoxy system in an amount of from 3 to 15 wt% to have been obvious, in an effort to take advantage of the known benefits and properties associated therewith. Note that the amount of 3 to 15 overlaps to a significant degree with the claimed range of .01 to 10. In this manner claims 3 to 6 are rendered obvious.
For new claim 7, note that values within this range are addressed supra.
For new claims 8 and 9, see the structure shown in the CN reference, page 1/2.
In fact, each of the newly added limitations in claims 8 to 16 are shown in the silane shown on page 1/2.
This shows a tri(m)ethoxy group on the terminal Si atom meeting an “n” value of 3 and claims 8 to 13. This also shows a propylene group meeting an “m” value of 3.
Applicants’ remarks have been considered but are not deemed persuasive. The remarks focus on the fact that the silane formula has been amended to distinguish from that in the CN reference. While the Examiner agrees, this does not address the current rejection of obviousness. Applicants also remark that the inventive compound has improved shelf stability after being mixed with a reactive isocyanate or epoxy resin. There is nothing that establishes any unexpected results when compared to the closest prior art. The Examiner would expect it to be hard for applicants to show unexpected results since the closest prior art is within the realm of applicants’ originally claimed invention.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
11/27/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765