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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/20/2026 has been entered.
Election/Restrictions
Claims of 3-10, are elected and examined below.
Claims 12-14, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/08/2025.
Response to Amendment
The previous rejection of Claims 3 and 11 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 3 and 4, under 35 U.S.C. 102(a)(1) as being anticipated by JP 2008-019361 A to Ono et al. (hereinafter Ono) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 3 and 4, under 35 U.S.C. 102(a)(1) as being anticipated by CN 102146275 A to Yu. (hereinafter Yu) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 11, under 35 U.S.C. 102(a)(1) as being anticipated by JP 2013-221079 A to Hashimoto et al. (hereinafter Hashimoto) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 11 under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0191625 A1 to Lomoelder et al. (hereinafter Lomoelder) is/are withdrawn in light of the Applicant’s amendments.
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.
Claims 3-11 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.
Claims 3-5, and 11 recites, “wherein the reaction to form the final silyl polymer is free of any other silane compound than the at least one amino silane compound.” This appears to be a negative limitation excluding other silane compounds in the final silyl polymer formation. However, the Applicant’s specification only appears to describe reacting the partial silyl polymer (PSP) with an amino silane compounds and optionally another polyol compound (Specification, page 8, ln 1-7), and there is no positive recitation of “other silane” compounds.
Thus, because the specification is merely silent on other silane compounds, there is no support for the negative limitation and it is considered new matter. “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claim…and [t]he mere absence of a positive recitation is not basis for an exclusion.” See MPEP 2173.05(i).
Claims 6-10, are dependent claims which fail to alleviate the issues above.
Claim Rejections - 35 USC § 102
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(s) 3-8, and 10-11, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0240689 A1 to Kramer et al. (hereinafter Kramer).
Regarding claims 3-8, and 10-11, Kramer teaches a polymer formulation obtained by first reacting a polyoxypropylenediol (Acclaim 12200) with vinyltriethyoxysilane and isocyanatopropyltriethoxy silane until no isocyanate groups are detected. (para 239). This intermediate meets the claimed partial silyl polymer (Bi) wherein the Acclaim 12200 meets the claimed polyether polyol, and the above isocyanatopropyltriethoxy silane meets the claimed iso-silane compound. The above intermediate is then further mixed with a polyoxypropylenediol (Acclaim 4200), isophorone diisocyanate (IPDI), and N-(3-triethoxysilylpropyl)-hydroxypropanamide (hydroxy silane 1), to obtain polymer (M-15). (para 239). The above Acclaim 4200 meets the claimed polyether polyol (Bii), the above IPDI meets the claimed alicyclic isocyanate (A), the above N-(3-triethoxysilylpropyl)-hydroxypropanamide meets the amino-silane and when mixed together, would react in-situ to produce the final silyl polymer and isocyanate prepolymer reaction product of claim 7, and the above Polymer (M-15) formulation meets the adhesive composition of claim 3-4. The above Polymer (M-15) is then mixed with diisodecyl phthalate (DIDP), and fillers of calcium carbonate (PC and GCC), (Table 3, para 273-276), to form a moisture-curing formulation (para 273-276), which meets the fillers of claim 10. Kramer also teaches the composition can further include suitable solvents (para 124 and 150), be used as an adhesive (para 125).
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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kramer as applied to claim 5 above, and further in view of Hashimoto.
Regarding claim 9, as cited above and incorporated herein, Kramer teaches claim 5. Kramer also teaches the composition can further include suitable solvents (para 124 and 150), be used as an adhesive (para 125).
Kramer does not explicitly teach the listed solvents of claim 9.
However, as cited above, Hashimoto teaches polymer (A-5) obtained by reacting a polyoxypropylene diol (Preminol S4016) with 3-isocyantepropyltriethoxysilane (para 38), which is in the same field of use to the Applicant’s invention of a silyl polymer containing adhesive composition. Hashimoto further teaches an adhesive composition is obtained by mixing the above polymer (A-5) with ethyl acetate solvent, terpene phenol resins (i.e. polyol), an acrylic copolymer (b-2), and a polyisocyanate crosslinking agent (trimethylolpropane-tolylene diisocyanate trimer adduct, (CORONATE L), (para 50 and 46), and can further include curing catalysts (para 19). Hashimoto further teaches the ethyl acetate is generally added to adjust the viscosity. (para 23).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to further include the ethyl acetate solvent of Hashimoto as the solvent in Kramer because Hashimoto teaches the same field of use to the Applicant’s invention of a silyl polymer containing adhesive composition and Hashimoto further teaches the ethyl acetate is generally added to adjust the viscosity. (para 23).
Response to Arguments
Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive in part.
On page 8, the Applicant argues that Kramer does not teach amino silane compound reacted with the partial silyl polymer, but instead Kramer teaches a N-(3-triethoxysilylpropyl)-hydroxypropanamide that contains an “amide.” This is not persuasive because it is known in the art that an amide group is merely a product of where an carboxyl -OH group is replaced with an amino group and the resultant amide may have free primary or secondary “amino groups,” i.e. -NH2 or -NH groups, after the reaction. In this case, the N-(3-triethoxysilylpropyl)-hydroxypropanamide of Kramer contains a free secondary amino group and thus, meets the claimed amino silane compound.
The Applicant also argues that Kramer does not teach the absence of other silane compounds. This is not persuasive because the claim only appears to state only limit the “other silane” compounds during the reaction to form the final silyl polymer such as the reaction of the partial silyl polymer and amino silane. It does not state that other silane compounds are excluded during the reaction to form the partial silyl polymer and in Kramer, the other vinyltriethoxysilane is during the formation of the partial silyl polymer and the final silyl polymer of Kramer is formed from reacting a partial silyl polymer, a polyol, a diisocyanate, and N-(3-triethoxysilylpropyl)-hydroxypropanamide. There does not appear to be another silane compound in that final reaction.
On page 8, the Applicant argues that Kramer does not teach the mixture of a component A and component B, specifically that the final silyl polymer from the reaction of the partial silyl polymer and amino silane is not formed prior to the addition of the isocyanate of component A. This is not persuasive because the Applicant’s claims are to a mixture of component A and B and the final silyl polymer would be formed in situ by the reaction of the mixture of the isocyanate, partial silyl polymer, a polyol, and N-(3-triethoxysilylpropyl)-hydroxypropanamide of Kramer. Thus, the mixture of components in Kramer would result in an in situ composition of a final silyl polymer and isocyanate component.
It is noted that the Applicant’s claims are to a “mixture” of component A and component B, but are not directed to a two-component adhesive composition of component A and component B, which Kramer does not appear to teach. The examiner suggest amending the claim to delete “a mixture of” and insert a two-component solvent-based retort adhesive composition to overcome the prior art of Kramer.
On page 9, in regard to the obviousness rejection of Kramer in view of Hashimoto, the Applicant makes the same arguments in regard to Kramer above. The arguments are found unpersuasive for the reasons addressed above.
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 HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766