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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 5, 2026 has been entered.
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..05 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]), and further teaches the incorporation of an additional crosslinking agent which may include an aminosilane adhesion promoter ([0212]-[0213] and [0229])). Together, the catalyst and co-catalyst of Colin may comprise the catalytic components of the system, which reads on the claimed “0.1 to 1% of a crosslinking catalyst (D), wherein the crosslinking catalyst comprises an aminosilane.” The adhesion promoters are specified as being included in amounts ranging from 0.05 to 20% ([0254]). While Colin states that the aminosilane is an “adhesion promoter,” an aminosilane’s capability of functioning as a catalyst is a characteristic intrinsic to the nature of the chemical structure itself, regardless of the name given thereto. Therefore, it is the Office’s position that the aminosilane of Colin is capable of performing as a crosslinking catalyst regardless of the categorization supplied by the prior art.
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 filed May 5, 2026 have been fully considered but they are not persuasive.
Applicant asserts that the newly amended limitation requiring that the catalyst within the claimed composition comprises inter alia an aminosilane distinguishes the claimed composition from prior art document Colin because the main catalyst of Colin is a metal alkoxide/oxime reaction product, which is not among the claimed catalyst types.
However, as the Applicant admits, Colin does teach the incorporation of an aminosilane (c.f. Applicant’s Remarks at p. 9). As described above, while Colin may not contemplate the aminosilane as being the primary catalyst in the composition, the aminosilane is nonetheless optionally present in the claimed amount. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore, the aminosilane within Colin reads on the claimed catalyst despite not being named as such within the teachings of Colin. Importantly, the claims do not negatively limit the incorporation of the catalyst utilized within Colin, and the claims specifically state that the claimed catalyst “comprises” an aminosilane, an amine, a tin-based catalyst, titanium acetylacetonate, and/or an aluminum bis(ethyl acetonate)monoacetylacetonate. The claimed catalyst is therefore open to the incorporation of additional catalysts.
Finally, Colin specifically states that the additional additives within the formulation may be added in accordance with normal practice ([0259]), and prima facie any order of mixing is obvious (see MPEP 2144.04.IV.C.). Therefore, it would have been obvious to one having ordinary skill in the art to add the adhesion promoter (alongside all of the other ingredients of Colin) alongside the polymer and catalyst to form the inventive mixture; in so doing, the aminosilane would have been capable of performing the function of a catalyst.
Conclusion
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
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