DETAILED ACTION
Pending Claims
Claims 55-59, 62-66, and 69-76 are pending.
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 .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Election/Restrictions
Claims 56-59 (species (1)) and 63-66 (species (4)) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 29, 2025. Claims 67 and 68 of species (4) have been cancelled.
Response to Amendment
The objection to claims 60 and 61 has been rendered moot by the cancellation of these claims.
The objection to claims 55, 62, and 69-74 has been overcome by amendment.
The rejection of claim 74 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph (indefinite), has been overcome by amendment.
The rejection of claims 55 and 72-74 under 35 U.S.C. 102(a)(1) as being anticipated by Verosky et al. (US 2012/0111498 A1) has been overcome by amendment.
The rejection of claims 55 and 72-74 under 35 U.S.C. 102(a)(2) as being anticipated by Verosky et al. (US 2012/0111498 A1) has been overcome by amendment.
The rejection of claims 60 and 61 under 35 U.S.C. 103 as being unpatentable over Verosky et al. (US 2012/0111498 A1) has been rendered moot by the cancellation of these claims.
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 55, 69, and 72-76 are rejected under 35 U.S.C. 103 as being unpatentable over Verosky et al. (US 2012/0111498 A1).
Regarding claims 55, 69, and 72-76, Verosky et al. disclose: (55) a composition (Abstract; paragraph 0004), comprising:
a silyl-functionalized hydrocarbon (paragraphs 0014-0024; Tables 1 & 3: “Silylated (Alkoxy) Organic Polymer”, specifically “Kaneka Telechelic Polyacrylates”);
a functional silicone polymer (paragraphs 0011-0013; Tables 1 & 3: “Hydroxyl terminated polydiorganosiloxane”, specifically “polydimethylsiloxane”);
a crosslinker (paragraphs 0026-0028; Tables 1 & 3: “vinyl/methyltrialkoxysilane” and “secondary crosslinking silane”); and
a moisture cure catalyst (paragraph 0025; Tables 1 & 3: “Cure Catalyst”, specifically “alkyl tin carboxylate”);
(72) wherein the silyl-functionalized hydrocarbon is present in an amount of from 5% to 80% by weight, based on a total weight of the composition (paragraph 0024: “more desirably about 50% to about 80%”);
(73) wherein the functional silicone polymer comprises a hydroxyl functional group, an amine functional group, a thiol functional group, an alkoxy functional group, a hydride functional group, a vinyl functional group, or a mixture thereof (paragraphs 0011-0013; Tables 1 & 3: “Hydroxyl terminated polydiorganosiloxane”, specifically “polydimethylsiloxane”); and
(74) wherein the functional silicone polymer comprises a polysiloxane backbone (paragraphs 0011-0013; Tables 1 & 3: “Hydroxyl terminated polydiorganosiloxane”, specifically “polydimethylsiloxane”); (75) wherein the polysiloxane backbone is a polydialkylsiloxane backbone (paragraphs 0011-0013; Tables 1 & 3: “Hydroxyl terminated polydiorganosiloxane”, specifically “polydimethylsiloxane”); and (76) wherein the polydialkylsiloxane backbone is a polydimethylsiloxane backbone (paragraphs 0011-0013; Tables 1 & 3: “Hydroxyl terminated polydiorganosiloxane”, specifically “polydimethylsiloxane”).
The exemplary embodiments of Verosky et al. are formulated with a silyl-functionalized hydrocarbon having a polyacrylate backbone (see Tables 1 & 3: “Silylated (Alkoxy) Organic Polymer”, specifically “Kaneka Telechelic Polyacrylates”). These exemplary embodiments fail to explicitly disclose a polyacrylate backbone that is: (55, 69 & 72-76) an acrylic copolymer derived from one or more (meth)acrylate monomer and a hydroxy functional monomer. However, the general teachings of Verosky et al. contemplate copolymeric backbones formed from a plurality of (meth)acrylate monomers. These include: (55 & 72-76) hydroxy functional monomers selected from the group consisting of hydroxyethyl acrylate, hydroxypropyl acrylate, hydroxy methylethyl acrylate, hydroxyethyl acrylamide, hydroxybutyl acrylate, hydroxyethyl methacrylate, hydroxypropyl methacrylate, glycerol monomethacrylate, and hydroxypropyl methacrylamide (see paragraph 0021); and (69) wherein the acrylic copolymer is derived from one or more additional monomers selected from the group consisting of an ethylenically unsaturated carboxylic acid monomer, a (meth)acrylamide, a styrene, and a hydroxyethyl acrylate (see paragraphs 0021 & 0023).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Verosky et al. with the instantly claimed acrylic copolymer (derived from a hydroxy functional monomer and optionally additional monomers) because: (a) the exemplary embodiments of Verosky et al. are formulated with a silyl-functionalized hydrocarbon having a polyacrylate backbone; (b) the general teachings of Verosky et al. contemplate copolymeric backbones formed from a plurality of (meth)acrylate monomers; and (c) the (meth)acrylate monomers of Verosky et al. include hydroxy functional (meth)acrylate monomers (and other optional monovinyl monomers) selected from hydroxyethyl acrylate, hydroxypropyl acrylate, hydroxyethyl methacrylate, and hydroxypropyl methacrylate.
Claims 62 and 70 are rejected under 35 U.S.C. 103 as being unpatentable over Verosky et al. (US 2012/0111498 A1) in view of Liu et al. (US 2012/0095159 A1).
Regarding claim 62, the teachings of Verosky et al. are as set forth above and incorporated herein. They fail to disclose: (62) wherein the acrylic copolymer (backbone) is derived from greater than 0% to 30% by weight, of the hydroxy functional monomer.
Liu et al. disclose a similar composition formulated with silicones and similar silyl containing acrylic polymers (see Abstract; paragraphs 0025). They disclose that the silyl containing acrylic polymers undergo a self-crosslinking reaction in the presence of water/moisture and the catalyst (see paragraph 0029; see also paragraphs 0030 & 0035-0037). The acrylic polymers include copolymers prepared with hydroxyl containing monomers, such as hydroxyl containing (meth)acrylates (see paragraph 0040). Liu et al. demonstrate that the instantly claimed hydroxyl functional monomer content is recognized in the art as a suitable hydroxyl functional monomer content for acrylic copolymers used in this type of silicone/acrylic formulation (see paragraph 0040). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the silyl-functionalized polyacrylate of Verosky et al. with the instantly claimed hydroxy functional monomer content (from greater than 0% to 30% by weight) because: (a) Verosky et al. contemplate embodiments featuring a polyacrylate backbone prepared with a combination of monomers including hydroxy functional (meth)acrylate monomers; (b) Liu et al. disclose a similar composition formulated with silicones and similar silyl containing acrylic polymers, wherein the silyl containing acrylic polymers undergo a self-crosslinking reaction in the presence of water/moisture and the catalyst; (c) the acrylic polymers of Liu et al. include copolymers prepared with hydroxyl containing monomers, such as hydroxyl containing (meth)acrylates; (d) Liu et al. demonstrate that the instantly claimed hydroxyl functional monomer content is recognized in the art as a suitable hydroxyl functional monomer content for acrylic copolymers used in this type of silicone/acrylic formulation; and (e) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 70, the combined teachings of {Verosky et al. and Liu et al.} are as set forth above and incorporated herein. They fail to disclose: (70) wherein the acrylic copolymer has a measured Tg of from -60°C to 40°C. Rather, the supporting teachings of Liu et al. (see paragraph 0036) disclose that these acrylic copolymers are preferably prepared with greater than about 40 wt% of “low Tg monomers”, including C4-C10 alkyl(meth)acrylates. These “low Tg monomers” yield a homopolymer Tg of less than about 0oC. They also contemplate the use of additional high Tg (meth)acrylate monomers, wherein the choice of monomers is dictated by consideration of adhesive properties, material compatibility and other desired characteristics. This suggests that the acrylic copolymers contemplated by Verosky et al. (see paragraphs 0021-0023) would have obviously embraced copolymers satisfying the instantly claimed Tg.
Therefore, the skilled artisan would have expected the silyl-functionalized polyacrylate of Verosky et al. to obviously embrace copolymers satisfying the instantly claimed Tg (from -60°C to 40°C) because: (a) Liu et al. disclose a similar composition formulated with silicones and similar silyl containing acrylic polymers, wherein the silyl containing acrylic polymers undergo a self-crosslinking reaction in the presence of water/moisture and the catalyst; (b) Liu et al. disclose that these acrylic copolymers are preferably prepared with greater than about 40 wt% of “low Tg monomers”, including C4-C10 alkyl(meth)acrylates, wherein these “low Tg monomers” yield a homopolymer Tg of less than about 0oC; (c) Liu et al. also contemplate the use of additional high Tg (meth)acrylate monomers, wherein the choice of monomers is dictated by consideration of adhesive properties, material compatibility and other desired characteristics; and (d) this suggests that the acrylic copolymers contemplated by Verosky et al. would have obviously embraced copolymers satisfying the instantly claimed Tg.
Claim 71 is rejected under 35 U.S.C. 103 as being unpatentable over Verosky et al. (US 2012/0111498 A1) in view of Watanabe et al. (US 2017/0022400 A1).
Regarding claim 71, the teachings of Verosky et al. are as set forth above and incorporated herein. Verosky et al. disclose that their polyacrylate backbones have a molecular weight distribution (Mw/Mn) of less than 1.8 and most preferably less than 1.3 (see paragraph 0022). They fail to explicitly disclose: (71) wherein the acrylic copolymer has a weight average molecular weight of from 1,000 Daltons to 20,000 Daltons.
Watanable et al. disclose a similar moisture curable composition (Abstract; paragraphs 0014-0021) formulated with similar silyl containing acrylic copolymers (see paragraphs 0023-0034). They disclose that these copolymers preferably have a Mn- of from about 3000 to 50000 to achieve a balance of elasticity and process-ability (see paragraph 0033). When applying this range to the teachings of Verosky et al., the molecular weight distribution (Mw/Mn) of Verosky et al. would have yielded a Mw range that overlaps the claimed range. In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the silyl-functionalized polyacrylate of Verosky et al. with the instantly claimed weight average molecular weight (from 1,000 Daltons to 20,000 Daltons) because: (a) Verosky et al. disclose that the polyacrylate backbones of their silyl-functionalized polyacrylate have a molecular weight distribution (Mw/Mn) of less than 1.8 and most preferably less than 1.3; (b) Watanable et al. disclose a similar moisture curable composition formulated with similar silyl containing acrylic copolymers; (c) Watanabe et al. disclose that these copolymers preferably have a Mn- of from about 3000 to 50000 to achieve a balance of elasticity and process-ability; (d) when applying this range to the teachings of Verosky et al., the molecular weight distribution (Mw/Mn) of Verosky et al. would have yielded a Mw range that overlaps the claimed range; and (e) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Response to Arguments
Applicant's arguments filed March 9, 2026 have been fully considered but they are not persuasive.
Argument 1 (see paragraph bridging pages 6-7 of the response): Applicant merely states that Verosky does not teach or suggest the acrylic copolymer of claim 55. The Office respectfully disagrees. As discussed above, the silyl-functionalized hydrocarbon (having a polyacrylate backbone) of Verosky et al. obviously embraces the instantly claimed acrylic copolymer.
Argument 2 (see first two full paragraphs on page 7 of the response): Applicant argues that the deficiencies of Verosky are not cured by Liu or Watanabe. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
April 17, 2026
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