DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/27/2025 has been entered.
Claims 1-9, 11-14, 17-20 and 22-24 are pending as amended on 8/27/2025.
Claims 1, 17, 18 and 20 stand withdrawn from consideration.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Objections
Claim 11 is objected to because of the following informalities: Applicant amended claim 11 to change “disilyl functional polymer” to “disilyl functional compound,” however, in the next line, Applicant added “the disilyl functional polymer…” Appropriate correction is required (i.e., changing “polymer” to “compound” as in the preceding line).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 and dependent claims 2-5, 7-9, 12-14, 19 and 22-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 has been amended to recite that the composition has a viscosity of 30,000 mPa.s or less at 25 C and is self-leveling. The specification as filed describes the recited properties (viscosity, self-leveling) for a composition which has a solids content of greater than or equal to 90%. See, e.g., [0010] of the specification as filed. Therefore, the claims as presently drafted (which do not limit the solids content of the composition) are not commensurate in scope with the support provided by the specification (which describes the recited viscosity range only for compositions having a solids content of greater than or equal to 90%). Because Applicant has not demonstrated that the inventor, at the time the application was filed, had possession of compositions within the full scope of the claims, the written description requirement of 35 USC 112(a) has not been complied with.
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 11 and dependent claims 2-9, 12-14, 19 and 22-24 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.
Claim 11 recites a cross-linker (ii) which is a disilyl functional compound, wherein each silyl group has at least one hydrolysable group. However, the formula for the compound permits “n” to be 3. If “n” is 3, there is no X (hydrolysable) group on the silyl group. The claims are indefinite because it is unclear how the requirement for each silyl group to have at least one hydrolysable group could be met if n is 3. This rejection could be overcome by amending the definition of n to delete 3.
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.
Claim 9 is 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.
Claim 9 further limits the recited composition to being “self-leveling,” however, this limitation has been added to the independent claim. Therefore, claim 9 no longer further limits the subject matter of the claim upon 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
Claim(s) 11, 2-9, 19 and 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carbary et al (US 2012/0124931) in view of Colas et al (US 5091484).
As to claims 11, 4, 6, 7 and 9, Carbary discloses a gunnable adhesive composition for use in construction membrane applications (title). The composition is self-levelling [0160], and application does not require heating above ambient temperature [0156]. Carbary discloses that there is no limitation on the material that may be used as the substrate, and names concrete, metal, and cellulosic substrates such as fabric and wood [0081], as well as construction membranes formed from synthetic rubbers and polyolefins [0084] among examples thereof. The substrates disclosed by Carbary correspond to “a roofing surface or substrate” as presently recited. The composition disclosed by Carbary comprises a mixture of silicone resin (a) and an organopolysiloxane (b), and optionally, a silane crosslinker (IV) and catalyst (V), and can harden by curing [0016].
As to instant (i):
Carbary discloses an organopolysiloxane which has two or three X1 groups on each terminal unit (because “a” is 0 or 1), wherein X1 is a hydrolyzable group [0035]; typical hydrolysable groups include hydroxy and alkoxy [0036]. Carbary discloses that methoxy group-containing groups are moisture reactive groups that can be introduced as polyorganosiloxane terminal groups [0040]. The viscosity of the organopolysiloxane ranges from 0.35 to 60 Pa.s [0042], which is equivalent to 350-60,000 mPa.s, and which therefore substantially overlaps the presently claimed range of 1000 to 75000 mPa.s. See also exemplified “Polymer 1,” which is an organopolysiloxane (hydroxyl terminated PDMS) having a viscosity of 50,000 mPa.s [0149]). When forming the composition of Carbary, it would have been obvious to the person having ordinary skill in the art to have selected any appropriate organopolysiloxane viscosity within Carbary’s preferred range of 350-60,000 mPa.s in order to provide a composition having a desired flowability and desired minimization of slump, including a viscosity within the presently claimed range of 1000 to 75000 mPa.s. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to instant (ii):
Carbary discloses that a silane crosslinker may optionally be added. The silane crosslinker has hydrolysable “Z” groups that react with the terminal groups of the organopolysiloxane under ambient conditions to form a cured material [0046]. Carbary names several examples of suitable silane crosslinkers in [0047], including crosslinkers recited in (a) of instant component (ii), such as methyltris(methylethylketoximo)silane, ethyl orthosilicate, methyltriethoxysilane, isobutyltrimethoxysilane, methyltriacetoxysilane, and methyltrimethoxysilane [0047]. Therefore, the silane crosslinker disclosed by Carbary corresponds to instant (ii).
As to instant (iv):
Carbary discloses a catalyst may optionally be used [0049]. The catalysts named by Carbary in [0049] are condensation catalysts as presently recited (note that the catalysts named by Carbary in [0049] are substantially the same as the condensation catalysts named in the instant specification in paragraphs [0048-9]).
As to instant (iii):
Carbary discloses a silicone resin which contains Q and M units [0017], wherein the ratio of M:Q ranges from 0.6:1 to 0.9:1 [0021] (i.e., within the presently claimed range of 0.5:1 and 1.2:1, and overlapping the range of 0.6:1 to 0.8:1.4 (i.e., 0.57:1) recited in claim 4). The weight average molecular weight of the silicone resin is 14,000 to 19,000 [0024], which falls within the presently claimed range of 3000 to 30,000. Carbary discloses that the R1 groups on the M units may be monovalent hydrocarbon groups, including e.g., methyl or vinyl [0019, 0020]. However, Carbary fails to teach an MQ resin wherein M units have reactive alkoxy groups.
Like Carbary, Colas discloses a composition which comprises a diorganopolysiloxane with terminal groups which comprise hydrolysable (“Q”) groups (col 1, line 66 to col 2, line 8), an MQ resin, and a titanium catalyst compound (col 2, lines 8-15; col 3, lines 45-55). Like the composition disclosed by Carbary, the composition taught by Colas is self-levelling (col 4, line 31) and cures to an elastomer at room temperature under the influence of atmospheric moisture (col 4, lines 18-29).
Colas discloses that use of certain alkoxy-functional MQ resins in elastomer-forming organosilicon compositions can provide uncured compositions with acceptable flowability, without negatively affecting the physical properties of the cured elastomer. The MQ resin serves as both a crosslinker and reinforcing agent, which eliminates the need for extra fillers or crosslinkers (although such components may be added) (col 1, lines 56-65). In Colas’ MQ resin, the (M) units have a formula RaR’3-aSiO1/2, wherein R is an alkyl group and R’ is an alkoxy-containing group of the formula -R”Si(OR*)3 (wherein R” is a divalent alkylene group linking two silicon atoms together and R* is an alkyl group having 1-8 carbons; col 2, lines 53-62). The OR* groups are most preferably methoxy groups. It is preferred that in from 0.1 to 30% of all monovalent units (M units), “a” in the formula RaR’3-aSiO1/2 is 2 (i.e., a substituent containing OR* is present) in order to give the resin sufficient reactivity to be useful as cross-linking centers for the elastomer forming composition (col 3, lines 9-15).
Considering Colas’ disclosure, when forming a room-temperature curable flowable siloxane sealant composition comprising a polyorganosiloxane with terminal hydrolysable groups and an MQ resin, the person having ordinary skill in the art would have been motivated to provide methoxy group-containing substituents (i.e., substituents according to Colas’ formula RaR’3-aSiO1/2 wherein a is 2) on the M units of the MQ resin in order to improve the flowability (reduce the viscosity) of the composition while retaining desired physical properties of the cured elastomer (see col 5, lines 25-29). Additionally, the person having ordinary skill in the art would have recognized that the content of Colas’ R’ groups in an MQ resin corresponds to a content of crosslinking centers in the composition (col 3, lines 13-18). Therefore, when forming an MQ resin having R’ groups, one would have been motivated to select any content of R’ groups (which contain the hydrolysable OR* groups) within Colas’ disclosed range of 0.1 to 30% of all monovalent (M) units in order to achieve a desired degree of crosslinking in the cured composition product.
It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a self-levelling gunnable adhesive composition comprising a moisture-reactive methoxy-terminated polyorganosiloxane, a silane crosslinker, a condensation catalyst, and an MQ silicone resin having an Mw of 14,000 to 19,000, as taught by Carbary, by providing up to 30% of the M units in Carbary’s MQ resin with a hydrolysable group-containing substituent according to Colas’ formula RaR’3-aSiO1/2 wherein a is 2 (including a percentage of M units corresponding to an MQ resin having more than 1 wt% hydrolysable (OR*) groups), thereby arriving at an MQ resin corresponding to instant organosilicate resin (iii).
As to the presently recited viscosity (in claim 11) and solids content (in claim 6):
Carbary teaches that solvent may be used to aid with the flow and help fluidize the components, and may range from 4 to 7 wt% based on the weight of the gunnable adhesive composition [0053]. Therefore, modified Carbary suggests a composition having a solids content of at least 93 wt% (for a maximum of 7 wt% solvent), which falls within the presently claimed range of at least 90%.
While Carbary teaches a self-levelling composition, and teaches that an increase in viscosity results in more force being required to apply material [0050], Carbary fails to disclose a suitable range of viscosities.
However, as set forth above, Carbary and Colas disclose substantially similar compositions and applications thereof, and both characterize the compositions as self-levelling. Colas discloses that compositions having high viscosity tend to make the manufacture and manipulation of the elastomer-forming compositions more difficult, and that low viscosity is preferred where self-levelling is desired (col 1, lines 37-43). Colas discloses that the compositions comprising the crosslinkable MQ resins have lower viscosity than commercially available flowable siloxane sealants, but do not have inferior mechanical properties (col 5, lines 25-29). Colas teaches that a commercially available flowable sealant has a viscosity of 35 Pa.s (i.e., 35,000 mPa.s), while Colas’ exemplified compositions have viscosities of, e.g., 9, 4 and 19 Pa.s (col 5, lines 3-5 and lines 40-42), which is equivalent to 9000, 4000 and 19,000 mPa.s, respectively (i.e., within the presently claimed range). Considering Colas’ disclosure, when forming a self-levelling flowable siloxane composition as suggested by modified Carbary, it would have been obvious to the person having ordinary skill in the art to have selected a viscosity within the range of values exemplified by Colas (i.e., 4000-19,000 mPa.s) in order to achieve desired self-levelling properties (without sacrificing mechanical properties).
As to claims 2, 3 and 24, as an example of the organopolysiloxane which may be used in the composition, Carbary names a polydimethylsiloxane (PDMS) containing three alkoxy groups, or two alkoxy groups together with an alkyl group [0041]. PDMS terminated with alkoxy groups (such as (MeO)3SiCH2CH2Si(Me2)O-- groups as taught in [0040]) has a structure according to instant formula (1) in claim 2 and the formula in instant claim 3 wherein X is methoxy, n is 0, Z is a divalent organic group, R1 is methyl, y is 2 and z is an integer.
As to claim 5, Carbary discloses fillers which may be included, such as calcium carbonates and silicas, in [0051]. (While Colas discloses that use of the crosslinking MQ resin can eliminate the need for extra fillers, such components may be added (col 1, lines 60-65) and names examples of fillers which can be included, such as calcium carbonate, quartz and silica, in col 4, lines 11-12).
As to claim 8, modified Carbary is silent as to the recited capability of the composition. However, given the substantial similarities between the composition suggested by modified Carbary and the composition described/recited in the instant specification and claims, there is reasonable basis to conclude that modified Carbary suggests a composition which is capable of being applied as a paste to a joint between substrates to provide a smooth surface which remains in position until cured.
As to claim 19, Carbary discloses that there is no limitation on the material that may be used as the substrate, and names concrete, metal, and cellulosic substrates such as fabric and wood [0081], as well as construction membranes formed from synthetic rubbers and polyolefins [0084] among examples thereof. Considering the substantial overlap in the materials taught by Carbary and the materials which are considered roofing surfaces in [0078] of the instant specification, the substrates disclosed by Carbary correspond to “a roofing surface” as presently recited.
As to claim 22, Carbary discloses that the silane crosslinker is added in amount from 0.5 to 15 parts per hundred (based on combined amount of silicone resin and organopolysiloxane); too much causes a decrease in green strength and/or cure rate, and the exact amount depends on various factors included type of crosslinker, type of resins, and catalyst [0048]. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a composition comprising silane crosslinker, as suggested by modified Carbary, by selecting any appropriate amount of silane crosslinker within Carbary’s disclosed range of 0.5 to 15 pph in order to achieve a desired degree of crosslinking, green strength and cure rate, including an amount corresponding to at least a stoichiometric amount relative to the organopolysiloxane. [Note that in instant example 1 in table a1 and instant example 3 in table 4a, silane crosslinker is used in amounts of 6 pph and 9 pph, respectively, based on combined amount of silicone and organopolysiloxane resins. There is reasonable basis to conclude, therefore, that Carbary’s disclosed range of 0.5 to 15 pph silane crosslinker includes concentrations which correspond to amounts which are at least stoichiometric relative to (i) as presently recited.]
As to claim 23, Carbary discloses an adhesion promoter as an optional component [0056].
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carbary et al (US 2012/0124931) in view of Colas et al (US 5091484), and further in view of Modic (US 4618522) and Brady et al (US 4668315).
As to claims 12 and 14, the rejection of claim 11 over Carbary in view of Colas is incorporated here by reference. As set forth above, Carbary discloses that there is no limitation on the material that may be used as the substrate, and names concrete, metal, and cellulosic substrates such as fabric and wood [0081], as well as construction membranes formed from synthetic rubbers and polyolefins [0084] among examples thereof. Carbary further teaches that the adhesive is useful in flashing systems [0086] and for adhering construction membranes in various barrier applications, such as a film on a surface of a building wrap [0087]. However, Carbary fails to teach applying the silicone composition to a roofing membrane or fabric with an applicator as recited in claim 12, and in a manner as recited in claim 14.
Modic discloses roofing fabric membrane having improved tear strength and flame retardancy (col 2, lines 28-31), formed by applying a silicone coating composition to a base fabric material (col 2, lines 43-45). Modic teaches various methods, including spraying, dipping, brushing and rolling, recognized for applying silicone compositions to a basic fabric material substrate (paragraph bridging col 4-5).
Brady similarly discloses a method of providing a water impervious membrane covering for a roof by coating a cloth with silicone elastomeric compositions (col 1, lines 10-13), such that the coated cloth forms a water impermeable membrane when cured under atmospheric conditions (col 2, line 60 to col 3, line 3). Brady teaches that the method is uncomplicated, and is designed to use a variety of silicone elastomeric compositions that can be easily applied to any size roof by unskilled labor (col 3, lines 4-10). The composition can be applied by any convenient method such as spraying, brushing, rolling, and squeegeeing (col 8, lines 14-16). Brady further teaches that the method can be used to repair roofs which have developed leaks (col 3, lines 54-55).
Considering the disclosures of Modic and Brady, one would have been motivated to apply any suitable moisture curable silicone elastomeric composition to a roofing fabric in order to provide a roofing material having improved tear strength and/or water impermeability. It would have been obvious to the person having ordinary skill in the art, therefore, to have applied (using any appropriate art-recognized method, e.g., rolling) a moisture curable silicone elastomer composition to a roof or roofing fabric and allowing to cure, as taught by Modic and/or Brady, utilizing modified Carbary’s silicone resin-containing composition as the moisture curable composition, thereby arriving at the presently claimed subject matter.
As to claim 13, modified Carbary suggests a method according to claims 12 and 14, as set forth above. Brady teaches that by using an emulsion with a low enough viscosity, the cloth can be bonded to the roof surface wherever desired by coating the cloth and allowing the coating to flow down through the cloth to the underlying surface (col 11, lines 25-32). Brady also discloses reducing the porosity of the cloth so that the silicone composition does not soak down into the cloth but forms an impermeable coating on top without having to impregnate the entire thickness of the cloth (col 5, lines 20-26). Considering Brady’s teaching, one having ordinary skill in the art would have recognized that as the viscosity of a composition decreases and/or as the fabric porosity increases, the degree to which a composition penetrates a roofing fabric increases.
The person having ordinary skill in the art would have been motivated to adjust the amount of penetration into a fabric in order to achieve a desired degree of bonding to another surface and/or to achieve a desired thickness of a coating remaining on top of the fabric. It would have been obvious to the person having ordinary skill in the art, therefore, to have applied a silicone composition to a roofing fabric, as suggested by modified Carbary, by selecting a composition viscosity and roofing fabric porosity which achieves any desired degree of roofing fabric penetration, including at least a partial penetration as presently recited.
Response to Arguments
Applicant's arguments filed 8/27/2025 have been fully considered.
Applicant’s arguments that the rejections over Bekemeier have been overcome in view of the amendments to the claims requiring the composition to have a viscosity of less than 30,000 mPa.s and to be self-levelling are persuasive. Bekemeier teaches that the composition is a hot melt adhesive, and does not teach a composition which is self-levelling as presently recited.
However, in view of the new rejections citing Carbary as primary reference, the claims are not in condition for allowance. Carbary teaches an adhesive that may be applied to a substrate with a standard caulking gun, and heat above ambient temperature is not required [0156]. Carbary further teaches that the composition is self-leveling [0160], and teaches application of compositions on substrates using a draw down technique to be tested for properties [0120]. Therefore, Carbary discloses a composition which, unlike the composition of Bekemeier, is not a hot melt adhesive and is self-levelling.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766