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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-17 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Colin (FR 3052457 A1; US 2019/0330503 referred to herein as the English language equivalent) in view of Burgman (WO 2019/014414).
Regarding claim 13, Colin teaches an adhesive composition ([0002]), comprising:
A silylated polymer (A) with the following chemical structure ([0012]):
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Chemical Formula I from Original Document FR 3052457
Wherein R4 represents a linear or branched alkyl radical with 1 to 4 carbons ([0013]), R5 represents a linear or branched alkyl radical comprising 1 to 4 carbons, and p is an integer of 0,1, or 2 ([0014]). The structure of Colin therefore reads on the claimed “Polymer (A) comprising an alkoxysilane group,” because the groups of Chemical Formula 1 constitute an alkoxysilane group. Colin teaches that the silylated polymer is included in concentrations of at least 5 wt% ([0050]), which overlaps the claimed range of “3 to 80%,” establishing a prima facie case of obviousness.
Additives ([0210]) which may include inorganic fillers such as calcium carbonate ([0212]), in amounts of between 20 and 80% by weight of the total composition, which reads on the claimed “at least 25% of a carbonate filler (B)”
0.1 to 10 % by weight, relative to the total weight of the adhesive composition ([0201]) of a catalyst (B) intended for the crosslinking of the silylated polymer ([0150]), which reads on the claimed “0.1 to 1% of a crosslinking catalyst (D)”
Colin differs from claim 1 because it is silent with regard to the incorporation of 0.5% to 20% of a polysiloxane resin.
In the same field, Burgman teaches a curable film-forming composition ([0002]) which may comprise polysiloxanes as a primary polymeric binder ([0014]) and crosslinkable polysiloxanes as another required component ([0006]), specifically including silsesquioxanes such as DOWSIL 3055 ([0064]), which reads on the claimed “polysiloxane resin (C).” Burgman teaches that this component is included in amounts ranging from 0.5 wt% to 20 wt% of the composition ([0065]) which is identical to the claimed range of “0.5% to 20%,” establishing a prima facie case of obviousness. Finally, Burgman teaches that the incorporation of this component improves the uniformity of a coating of the inventive composition ([0124]).
Colin also teaches that the inventive composition relates to surface coating compositions ([0090]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate between 0.5 and 20 wt% of Dowsil 3055 into the formulation of Colin, as taught by Burgman, for the purpose of improving the surface uniformity of a coating of the inventive composition.
Burgman teaches the incorporation of Dowsil 3055, which meets the newly claimed structural limitations of the claimed aminoalkylene because the instant Specification explicitly states that Dowsil 3055 comprises at least one aminopropyl group and at least one phenyl group (see instant Specification at p. 12, lines 21-25). Said aminopropyl group reads on the claimed aminoalkylene group wherein the claimed “R’0” is a propyl radical, and the claimed “R”0” is a hydrogen atom.
Regarding claim 14, Colin teaches that the silylated polymer (A) contains the following structure:
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Chemical Formula I from Original Document FR 3052457
wherein R4 represents a linear or branched alkyl radical with 1 to 4 carbons ([0013], R5 represents a linear or branched alkyl radical comprising 1 to 4 carbons ([0014]), and p is an integer of 0,1, or 2 ([0015]), which reads on the claimed alkoxysilane formula ([Chem 13] of claim 14).
Regarding claim 15, claim 3 of Colin teaches that the silylated polymer corresponds to the following formulas (II’) – (IV’) (claim 17):
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Chemical Formulas II’ – IV’ from Original Document FR 3052457
Wherein:
R1 represents a divalent hydrocarbon radical comprising from 5 to 15 carbon atoms which can be aromatic or aliphatic, linear, branched, or cyclic. R1 of Colin therefore reads on the claimed “R1” which likewise “represents a divalent hydrocarbon-based radical comprising from 5 to 15 carbon atoms which can be aromatic or aliphatic and linear, branched, or cyclic.”
R2 represents a saturated or unsaturated divalent hydrocarbon radical which may be linear or branched and which optionally comprising one or more heteroatoms such as oxygen, nitrogen, sulfur, silicon, and which preferably has a number average molar mass ranging from 100 g/mol to 48,600 g/mol. Additionally, n is an integer of greater than or equal to 0, preferably ranging from 1 to 10. The R2 -and n of Colin read on the claimed “R2” and “n” because they reach the claimed limitations of “R2” and “n” when evaluated together for the following reasons:
Firstly, the R2 group of Colin and the claimed “R2” group concern the same type of molecule, comprising “a linear or branched divalent alkylene radical.” The R2 group of Colin is therefore capable of comprising between 2 and 4 carbon atoms.
Secondly, the -[OR2]- group of both Colin and the instant claim are seeking to reach overlapping molecular weight ranges. Colin’s R2 represents a structure with a molecular weight of between 100 and 48,600 g/mol, which taken with the oxygen atom within the group, means that the repeat unit of the polyether of Colin may comprise a molecular weight between 116 and 48,616 g/mol. Applying the repeat unit range (n) of Colin, which is from 1 to 10, the total molecular weight range of the polyether segment of Colin may range between 116 and 486,160 g/mol. The instant claim recites a limitation of “n” such that “the number average molecular weight of the polyether block of formula –[OR2]- ranges from 300 g/mol to 40,000 g/mol,” which overlaps with the range of Colin, establishing a prima facie case of obviousness. R3 represents a divalent linear or branched alkylene radical comprising from 1 to 6 carbon atoms. R3 of Colin therefore reads on the claimed “R0,” which “represents a linear or branched divalent alkylene radical comprising from 3 to 6 carbons.” R3 of Colin also reads on the claimed “R3,” which “represents a linear or branched divalent alkylene radical comprising from 1 to 6 carbon atoms.” In both cases, the claimed limitations of the number of carbon atoms for each group overlaps the range of 1 to 6 carbon atoms as recited by Colin, establishing a prima facie case of obviousness.
R4 and R5 represent linear or branched alkyl radicals with 1 to 4 carbons. As described in the rejection of claim 14 above, these representations are identical to the R4 and R5 of the claimed chemical structures.
p is an integer of 0, 1, or 2. As described in the rejection of claim 14 above, this representation is identical to the p of the claimed chemical structures.
-X represents a divalent radical chosen from -NH2-, -NR7-, or -S- and -R7 represents a linear or branched alkyl radical comprising from 1 to 12 carbon atoms. When the -X of Colin represents -NH2-, it reads on the claimed “R6,” which may represent “a hydrogen atom.” Additionally, when the -X of Colin represents -NR7-, the limitation of “R6” is met because R7 reads on the claimed “R6” which may represent a “linear, branched, or cyclic alkyl radical comprising from 1 to 6 carbon atoms.”
-f is an integer ranging from 1 to 6
These structures read on the claimed structures ([Chem 14], formulas (II) through (IV)) as follows:
Chemical formula (III’) of Colin reads on the claimed formula (II) because their structures differ only by a single oxygen atom:
As explained above, the R-group representations of Colin read on the claimed R-group representations (R3 reads on the claimed “R0,” and R2 reads on the claimed “R2”).
The n value of Colin overlaps with that of the instant claim. For the chemical structure (III’) of Colin to properly align with that of the instant claim (II), the O-R2 ether group of Colin (III’) would need to be condensed into the already represented polyether segment, however doing so will only raise the value of n by one, which does not impact the ability for Colin’s n to read on the claimed “n”
A single atom discrepancy between two chemical structures is not considered patentably distinct. See MPEP 2144.09. Therefore, the claimed structure II is considered obvious because of their structural similarity, as one of ordinary skill in the art would recognize that compound (III’) of Colin and (II) of the instant claim would have patentably indistinct performances.
Chemical formula (II’) of Colin reads on the claimed formula (III) because the structures are the same. Additionally, the claimed limitation of “m1 is zero or an integer; n and m1 are such that the number-average molecular weight of the polymer of formula (II) ranges from 500 g/mol to 50,000 g/mol” is met because Colin likewise teaches that n may be an integer from 1 to 10, which corresponds to a molecular mass of chemical formula (II’) being within the same claimed range.
Chemical formula (IV’) of Colin reads on the claimed formula (IV) because the structures are the same. As explained above, the -X- linkage of Colin may comprise an -NH2- Linkage or a tertiary amine linkage which reads on the claimed “R6.” Additionally, the claimed limitation of “m is an integer other than zero and n and m are such that the number-average molecular weight of the polymer of formula (IV) ranges from 500 g/mol to 50,000 g/mol” is met because Colin likewise teaches that n may be an integer from 1 to 10, which corresponds to a molecular mass of chemical formula (IV’) being within the same claimed range.
Regarding claim 16, Colin teaches that the additives may include inorganic fillers such as calcium carbonate ([0215]). Calcium carbonate is an alkaline-earth metal carbonate.
Regarding claim 17, as described above, Colin as modified by Burgman teaches the incorporation of Dowsil 3055, which meets the claimed structural limitations because the instant Specification explicitly states that Dowsil 3055 comprises at least one aminopropyl group (see instant Specification at p. 12, lines 21-25)
Regarding claim 19, as described above, Colin as modified by Burgman teaches the incorporation of Dowsil 3055, which meets the claimed structural limitations because the instant Specification states that Dowsil 3055 is an acceptable commercial product which meets the criteria for the claimed silsesquioxane “(C)” (see instant Specification at p. 12, lines 21-25).
Regarding claim 20, as described above, Colin as modified by Burgman teaches the incorporation of Dowsil 3055, which meets the claimed molecular weight range because the instant specification states that Dowsil 3055 has a molecular weight of between 500 and 1,000 g/mol (see instant Specification at p. 12, lines 21-25), which falls within the claimed range of “400 g/mol to 4000 g/mol.”
Regarding claim 21, Colin teaches the use of other additives which are neither silylated polymers nor catalysts, including fillers (which may include carbon black, which is not a carbonate filler), adhesion promoters, plasticizers, rheological agents, moisture absorbers, and UV and thermal stabilizers ([0212]). The additives of Colin therefore read on the claimed “at least one additive selected from the group consisting of plasticizers, solvents, pigments, adhesion promoters, moisture absorbers, UV stabilizers, rheological agents, and also fillers other than carbonate fillers.”
Additionally, Colin teaches the following limitations on the additives’ amounts within the composition:
Fillers may be present from around 20 to 80% by weight of the total composition ([0219])
Rheological agents may be present from 0.01 to 8% by weight of the total composition ([0221])
Plasticizers may be present from 0 to 5% by weight of the total composition ([0224])
Moisture absorbers may be present from 0.5 to 3% by weight of the total composition ([0227])
All of the above stated filler amounts overlap the claimed range of “0.5% to 30% by weight of at least one additive,” establishing a prima facie case of obviousness.
Regarding claims 22 and 23, all of the compositional limitations of claim 13 are overlapped by those of Colin. These compositional teachings also overlap with the claimed ranges of claims 22 and 23, as follows:
Colin teaches that the silylated polymer is included in concentrations of at least 15 wt% ([0148]), which overlaps the claimed ranges of “10% to 50%” and “20% to 30%.”
Colin teaches 10 % by weight, relative to the total weight of the adhesive composition ([0201]) of a catalyst (B), which reads on the claimed “0.2% to 0.8%” in both of claims 22 and 23.
Colin teaches additives ([0214]) which may include inorganic fillers such as calcium carbonate ([0215]), in amounts of between 20 and 80% by weight of the total composition, which reads on the claimed ranges of “25 to 80%” and “40% to 60%.”
Burgman teaches the incorporation of silsesquioxanes such as DOWSIL 3055 ([0064]) in amounts ranging from 0.5 wt% to 20 wt% of the composition ([0065]) which is identical to the claimed range of “0.5% to 20%,” establishing a prima facie case of obviousness.
Colin teaches that fillers other than carbonate fillers may be used ([0215]) and [0216]), and that the total amount of fillers in the composition may be between 20 and 80% by weight of the total composition ([0219]). Therefore, Colin teaches the claimed ranges of “0.5% to 30%” and “10% to 30%” of “an additive chosen from plasticizers, solvents, pigments, adhesion promoters, moisture absorbers, UV stabilizers, rheological agents and fillers other than the carbonate fillers.” Further, the fact that Colin regards both carbonate and non-carbonate fillers together in the 20-80 wt% allowable in the composition does not interfere with its ability to read on the claimed range, because a composition comprising 50% by weight of calcium carbonate and 20% by weight of carbon black would satisfy all of the claimed limitations while still falling within the teachings of Colin.
Regarding claim 24, Colin teaches that the composition is an adhesive composition ([0203]). Colin also teaches that the application of the composition may be used to form a coating or a seal ([0150]). The uses of Colin as modified therefore read on the claimed “adhesive, sealant, or coating.”
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed November 12, 2025, with respect to the rejections of claims 13-17 and 19-24 under 35 USC 112(b) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicant's arguments regarding 35 USC 103 have been fully considered but they are not persuasive.
Applicant argues that the combination of prior art references Colin and Burgman is improper:
Applicant first argues an improper motivation to combine the two references, stating that the two references are directed towards different inventions. Applicant admits that Colin mentions that the inventive compositions thereof may be used as coatings (see p. 9 of Applicant’s remarks, second-to-last paragraph), but contends that the main inventive direction of Colin is towards an adhesive composition, finally stating that “the whole of the Colin reference should be considered rather than cherry-picking only minor parts of the reference that support a conclusion of obviousness.” However, the rejections of-record do not deny the broader teachings of Colin which include adhesive compositions. Although Colin may be mostly directed towards adhesive compositions, the presence of said teachings do not rebut the presence of teachings directed towards coatings. Patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Colin clearly discloses coatings and does not teach away from or otherwise disparage the use of compositions in this application. It is therefore proper to rely on Colin’s disclosure of coatings in the rejection.
As described above, Colin does teach that the inventive compositions are suitable for coatings ([0090]). Furthermore, Burman specifically mentions that the contended additive, the polysiloxane resin, increases the uniformity of a coating ([0124]). Finally, Burman is directed towards coatings with substantial similarities to those of Colin, both predominantly including silylated (e.g., polysiloxane) polymers.
Applicant refers to the sections of Colin which refer to adhesives to argue that a person of ordinary skill in the art would not reasonably desire to improve the smoothness of Colin’s inventive composition. However, the teaching within Colin which is directed towards coatings would be reasonably combined with the teachings of Burgman which are likewise directed towards coatings. As argued by the Applicant on p. 10, appearance is impacted by the smoothness of a coating – this factor would be readily apparent to one having ordinary skill in the art when considering the coatings of Colin in-context of the teachings of Burgman.
Applicant next argues that there would be no expectation of success in combining the two references, stating that the compositions of the two inventions are different. Applicant argues that the polymers within the two are different, and that the crosslinking chemistries involved in the two likewise differ.
Applicant’s arguments that the documents’ polymeric binders are different centers on the incorporation of an alkoxysilyl group within Colin, and an absence thereof within Burgman. However, both refer to compositions containing curable polymers (Abstract of each). Furthermore, while Burgman does not appear to contemplate alkoxysilyl functionality in the binder component ([0014]), Burgman does not teach away from the use thereof; to the contrary, Burgman specifically teaches the incorporation of alkoxysilylated additives in the composition ([0100]), suggesting that alkoxysilyl groups are suitable therein. Applicant further argues differences in reactivity, stating that the silane polymers within Colin react with one another, while those of Burgman react with different additives. While the compositions may differ slightly in reaction mechanisms, both compositions result in chemically cured compositions comprising silylated polymers, and including alkoxysilane functionality. One having ordinary skill in the art would understand that additives imparting useful properties to one crosslinked silylated polymer-bound composition would be generally applicable to another, absent a specific teaching away from doing so. One having ordinary skill in the art would therefore have a reasonable expectation of success in combining Colin and Burgman.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762