DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/21/26 has been entered.
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, albeit with emphasis on a different teaching in Ziche et al.
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 to 26 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).
As this rejection applies on the new limitation in claim 1 that the silane group is attached to the skeleton through a urea linkage please note the following.
The formula on column 2 teaches that the silane group is attached to the back-bone via the -L- group. As can be seen from line 59, such an -L- group can be a urea linkage. See the units
PNG
media_image1.png
23
156
media_image1.png
Greyscale
and
PNG
media_image2.png
23
137
media_image2.png
Greyscale
(R3).
Note too that column 4, line 12, teaches that the backbone may be a polysilox-ane urea/urethane copolymer which renders obvious either a urea or urethane group as an attachment.
From these two points, the skilled artisan would have found the attachment of the Si atom to the polymer backbone in Ziche et al. through a urea linkage to have been obvious.
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 catalysts 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, see the end groups shown in column 2, line 55 to the top of column 3. This teaches groups and formulas that fall within the breadth of 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.
For new claims 23 to 26, note the following.
On one hand note that these are product by process claims such that the process does not need to be taught for the claimed structure to be met. The reaction product of claims 23 to 26 results in the same structure as that disclosed by the prior art.
On the other hand, see the teachings on column 4, lines 50 to 59, which teaches reacting a functional silane with a terminated polymer to form the -L- group as claimed. The skilled artisan would recognize that, to form a urea linkage, a urethane and amine must be reacted such that these reactants would have been an obvious selection.
For claims 25 and 26, note that neither of these claims require that these groups be reacted in the preparation reaction, only that the claims are limited to the compounds shown.
Also, for claim 25, note that the R3 group in column 2, line 59, is hydrocarbon and column 3 discloses alkyl as a preferred group such that the amine used to form the urea linkage noted above would have to be an alkyl functionalized amine.
Response to Arguments
Applicants’ arguments have been considered but are not deemed persuasive. The bulk of the argument rely on the urea linkage that has been included in claim 1. As noted supra this is not persuasive as such a linkage is disclosed in Ziche et al.
Applicants also include arguments towards unexpected results or improvements. This is not persuasive as 1) the few embodiments in the specification are in no way commensurate in scope with the breadth of the claims, 2) one cannot extrapolate from the examples to determine unobviousness for a greater range or different species and 3) the Examiner questions if these results are in face unexpected when Wakabayashi et al. teach that a combination of catalysts results in improved properties.
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.
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
Prosecution Insights