DETAILED ACTION
Applicants’ reply has been considered but does is not sufficient to overcome the prior art rejection. The rejection below is maintained from the previous office action. Applicants’ traversal is addressed in paragraph 4.
Claim Rejections - 35 USC § 103
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, 3 to 15, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Ziche et al. in view of Wakabayashi et al.
Ziche et al. teach a crosslinkable organosilicon composition.
For claimed component a) see the polymer (A) found in line 52 of column 2. The
terminal group of formula (I) corresponds to the claimed general formula (I). Specifically the formulas found on column 3, line 53 to column 4, line 5, exemplify groups of formula (I). Lines 59-66 show various silanes meeting claimed (I) in which the N atom is attach-ed to a methyl group and an alkylene group, as well as attachment to the polymer itself.
For claimed component c) see the catalyst found in column 5, lines 50 to 61. This teaches multiple metal alkoxides.
Column 9, line 25, teaches alkyl aromatics as useful solvents. These are aprotic
organic solvents and meet claimed d).
Ziche et al. teach each of claimed a), c) and d). This differs from that claimed in that it does not teach claimed b). . Note, though, that the teachings in Ziche et al. are inclusive of all known and useful condensation catalysts (column 5, lines 48 and 49).
Wakabayashi et al. teach, as a condensation catalyst (c2), metal carboxylates having a quaternary carbon adjacent to the carbonyl group. See paragraph 109. This improves curability and adhesiveness. See paragraphs 104 and 105. Examples of the metal carboxylates are found in paragraph 115 to 118 and include potassium versatate (or potassium neodecanoic, as found in claims 4 and 20).
Wakabayashi et al. also teach that these catalyst can be used in combination with other metal carboxylate catalysts. See paragraph 130. This combination increases catalytic activity, curability and other properties.
From this one having ordinary skill in the art would have found it obvious to add the metal carboxylate (c2) in Wakabayashi et al. to the composition of Ziche et al. such that there is a combination of the claimed catalysts b) and c) therein, in an effort to take advantage of the properties and benefits thereof as taught by Wakabayashi et al., noted supra. In this manner claims 1, 4 and 20 are rendered obvious
For claim 3, again see the end groups shown in column 3, lines 59 to 66, which show formulas meeting this claim.
For claim 4, see column 5, lines 43 to 46. The preferred range of 20 to 40 wt% falls within the claimed range.
For claim 5, note that such a potassium catalyst is specifically disclosed in para-graph 118.
For claims 6 and 9, note that adjusting the amount of catalyst in the combined composition noted supra would have been well within the skill of the ordinary artisan, in an effort to optimize properties while not using an excess of catalyst. This is particularly true in view of the fact that Wakabayashi et al. teach adding two different catalysts.
For claims 7 and 8, note that paragraph 130 in Wakabayashi et al. teach each of these catalysts. They are also taught in Ziche et al. in column 5, lines 51 to 53.
For claim 10, note that no pigment or colorant is required such that the obvious composition noted above would be expected to be a clearcoat. Note that the claimed compositions are the same (with the exception of one catalyst) as that in Ziche et al. such that the appearance of the compositions would be expected to be the same.
For claim 11 note that of the required components in Ziche et al., none is a cross-linking agent or a tin containing compound such that these limitations are met. On the other hand, see column 5, line 66 to column 6, line 4, which teaches tin in this amount.
For claims 12 to 15, see column 10, line 16, which teaches using the composition as a coating. Note that multilayered coatings are extremely common and well known, in an effort to ensure optimal coverage and thickness and smoothness of the resulting layers. Column 9, line 50, through column 10, line 10, teaches the coating method as claimed.
For claim 21 again see paragraph 130 in Wakabayashi et al. and column 5, lines 51 to 53 of Ziche et al. Both sections teach catalysts having 4 alkoxy groups.
For claim 22, note that such polysiloxanes are not required in the composition of Ziche et al. Furthermore they are not embraced by the preferred composition as found in column 9, lines 34 to 44.
Response to Arguments
Initially applicants assert that the Examiner has not met the burden of examina-tion, allegedly because the reference is “complex” and the particular part relied upon was not designated “as nearly as practicable”. The Examiner strongly believes that the office action was written appropriately such that one having ordinary skill in the art would have no difficulty ascertaining the pertinent sections from the 8 lines referred to from the Ziche et al. reference.
Applicants have requested a clear indication of the specific chemical formulas that read on the present claims. The Examiner thought this was self-evident since it appears that every end group shown in column 3, from line 59 through column 4, line 5, meets the structure of general formula (I). The structures shown in this excerpt contain an -NR1X- group that meets the claimed linkage between the Si atom and the remainder of the compound R1. In fact, applicants have made it easy to explain this since their response recognizes that the compounds referenced in column 3 all fall within the -O-CO-N(R3)- groups. The Examiner agrees with this assessment. It does not appear that any further explanation is needed since applicants have reviewed and referenced the pertinent teachings.
Applicants state that the general formula (I) is attached via the * linkage of the nitrogen atom. They also refer to paragraph 63 of the specification.
Applicants are reminded that it is the claims that are being examined and not the teachings in the specification. The claims state that the compound R1 “comprises”1 the silane group shown by general formula (I). The units referenced above in the Ziche et al. reference “comprise” the silane group shown by general formula (I).
Furthermore while applicants state that the * group indicates attachment via the nitrogen atom to the “skeleton of the compound”, the “skeleton” (which is the compound R1) is not defined. It can include a carboxylic acid group.
In short, there simply is nothing that excludes the -O-CO- linkage found in Ziche et al. and the units noted supra meet the claimed general formula (I).
As for the Wakabayashi et al. reference, the Examiner assumed that applicants would recognize the structure for potassium and bismuth neodecanoate and how they meet the formula for catalyst C1 in claim 1.
From an extremely quick google search, note the following.
Potassium Versatate (Potassium Neodecanoate)
Potassium versatate, also known as potassium neodecanoate (CAS 26761-42-2), is the potassium salt of neodecanoic acid,
Applicants’ claim 5 states that the catalyst C1 can be potassium neodecanoate. It is the Examiner’s opinion that one having ordinary skill in the art would recognize how potassium versatate (in Wakabayashi et al. ) meet claimed formula (III) (catalyst C1).
Finally applicants make a general reference to surprising and unforeseeable results using the catalysts C1 and C2 in mixture, or using compound R1 in combination with C1. They do not cite specific results or show comparisons between the inventive composition and the closest prior art. This broad argument carries no weight.
Applicants have not referred to any specific showings in the specification to support this position. Even if applicants had, there is nothing that would indicate any showings are commensurate in scope with the prior art. In addition, since Wakabayashi et al. teach improvements using the catalysts in combination, there is nothing that shows that any differences, IF present, would in fact be considered unexpected.
In view of the above, this rejection is maintained.
If applicants maintain that they cannot understand the correlation between the prior art and the claims, they are welcome to schedule an interview with the Examiner for further explanation.
Conclusion
THIS ACTION IS MADE FINAL. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users.
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
1 Applicants are reminded that this is an open term and allows for the presence of other, unnamed, units.
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