DETAILED ACTION
Pending Claims
Claims 55-59, 62-66, and 69-77 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 22, 2026 has been entered.
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Claims 56-59 (species (1)) and 63-66 (species (4)) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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.
Claim Objections
Claim 77 is objected to because of the following informalities:
For improved clarity, claim 77 should state: an acrylic copolymer derived from monomers consisting of one or more (meth)acrylate monomer and a hydroxy functional monomer. Appropriate correction is required.
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.
Claims 55, 62, 69, and 73-76 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nambu et al. (US Pat. No. 5,344,880).
Claims 55, 62, 69, and 73-76 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nambu et al. (US Pat. No. 5,344,880).
Regarding claims 55, 62, 69, and 73-76, Nambu et al. disclose: (55) a composition (Abstract; column 1, lines 35-58), comprising:
an acrylic copolymer derived from one or more (meth)acrylate monomer and a hydroxy functional monomer (“(A)” in column 1, line 66 through column 3, line 49; see also column 16, lines 1-23);
a functional silicone polymer (“(C)” in column 6, line 61 through column 9, line 56; see also polyorganosiloxane in Table 2);
a crosslinker (“(B)” in column 3, line 50 through column 6, line 60; see also column 14, lines 47-54 and column 15, lines 5-35); and
a moisture cure catalyst (column 9, line 57 through column 11, line 30; see also curing catalyst in Table 2),
wherein the hydroxy functional monomer is 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 (column 2, lines 6-26; see also column 16, lines 1-23);
(62) wherein the acrylic copolymer is derived from greater than 0% to 30% by weight, of the hydroxy functional monomer (column 16, lines 1-23; see also column 3, lines 33-49);
(69) wherein the acrylic copolymer is derived from one or more additional monomers selected from the group consisting of an ethylenically unsaturated carboxylic acid monomers, a (meth)acrylamide, a styrene, and a hydroxyethyl acrylate (column 16, lines 1-23; see also column 2, line 56 through column 3, line 16);
(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 (column 7, lines 13-28; see also polyorganosiloxane in Table 2);
(74) wherein the functional silicone polymer comprises a polysiloxane backbone (column 6, line 61 through column 7, line 12; see also polyorganosiloxane in Table 2); (75) wherein the polysiloxane backbone is a polydialkylsiloxane backbone (column 6, line 61 through column 7, line 12; see also polyorganosiloxane in Table 2); and (76) wherein the polydialkylsiloxane backbone is a polydimethylsiloxane backbone (column 6, line 61 through column 7, line 12; see also polyorganosiloxane in Table 2).
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 70-72, and 77 are rejected under 35 U.S.C. 103 as being unpatentable over Nambu et al. (US Pat. No. 5,344,880).
Regarding claim 71, the teachings of Nambu et al. are as set forth above and incorporated herein. Nambu et al. fail to explicitly disclose: (71) wherein the acrylic copolymer has a weight average molecular weight of from 1,000 Daltons to 20,000 Daltons. Rather, they disclose a number average molecular weight ranging from 1,500 to 40,000, preferably 3,000 to 25,000 (see column 3, lines 33-43). The skilled artisan would have expected the weight average molecular weight to be higher than the number average molecular weight due to a minimum polydispersity index (Mw/Mn) value of 1. Accordingly, the lower number average molecular weight values contemplated by Nambu et al. would have likely corresponded to weight average molecular weight values that overlap the instantly 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, the skilled artisan would have expected the teachings of Nambu et al. to obviously embrace the instantly claimed weight average molecular weight of the acrylic copolymer (from 1,000 Daltons to 20,000 Daltons) because: (a) Nambu et al. disclose a number average molecular weight ranging from 1,500 to 40,000, preferably 3,000 to 25,000; (b) the skilled artisan would have expected the weight average molecular weight to be higher than the number average molecular weight due to a minimum polydispersity index (Mw/Mn) value of 1; (c) accordingly, the lower number average molecular weight values contemplated by Nambu et al. would have likely corresponded to weight average molecular weight values that overlap the instantly claimed range; and (d) 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.
Regarding claim 70, the teachings of Nambu et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (70) wherein the acrylic copolymer has a measured Tg of from -60oC to 40oC. However, the skilled artisan would have expected the acrylic copolymer of Nambu et al. to obviously embrace copolymers satisfying the instantly claimed Tg because the teachings of Nambu et al. satisfy all the monomer limitations (and relative amounts thereof) of the instantly claimed copolymer. In addition, the teachings of Nambu et al. obviously satisfy the molecular weight limitations of the instantly claimed copolymer.
Therefore, the skilled artisan would have expected the acrylic copolymer of Nambu et al. to obviously embrace copolymers satisfying the instantly claimed Tg because: (a) the teachings of Nambu et al. satisfy all the monomer limitations (and relative amounts thereof) of the instantly claimed copolymer; and (b) the teachings of Nambu et al. obviously satisfy the molecular weight limitations of the instantly claimed copolymer.
Regarding claim 72, the teachings of Nambu et al. are as set forth above and incorporated herein. The composition of Nambu et al. features: a component (A) corresponding to the instantly claimed acrylic copolymer, a component (B) corresponding to the instantly claimed crosslinker, a component (C) corresponding to the instantly claimed functional silicone polymer, and a component (D) corresponding to the instantly claimed moisture cure catalyst. They fail to explicitly disclose: (72) wherein the acrylic copolymer is present in an amount of from 5% to 80% by weight, based on a total weight of the composition. Rather, their composition preferably features:
from 0.1 to 50 parts by weight of (C), per 100 total parts by weight of (A) and (B) (see column 9, lines 48-55); and
from 0.1 to 10 parts by weight of (D), per 100 total parts by weight of (A) and (B) (see column 11, lines 22-30);
with a weight ratio of (A)/(B) ranging from 8/2 to 2/8 (see column 6, lines 50-60).
Accordingly, these ranges would have obviously embraced embodiments satisfying the instantly claimed amount of acrylic copolymer.
Therefore, the skilled artisan would have expected the teachings of Nambu et al. to obviously embrace embodiments satisfying the instantly claimed amount of acrylic copolymer (from 5% to 80% by weight) because: (a) the composition of Nambu et al. features: a component (A) corresponding to the instantly claimed acrylic copolymer, a component (B) corresponding to the instantly claimed crosslinker, a component (C) corresponding to the instantly claimed functional silicone polymer, and a component (D) corresponding to the instantly claimed moisture cure catalyst; (b) the composition of Nambu et al. preferably features from 0.1 to 50 parts by weight of (C), per 100 total parts by weight of (A) and (B); (c) the composition of Nambu et al. preferably features from 0.1 to 10 parts by weight of (D), per 100 total parts by weight of (A) and (B); and (d) the composition of Nambe et al. preferably features a weight ratio of (A)/(B) ranging from 8/2 to 2/8.
Regarding claim 77, the teachings of Nambu et al. are as set forth above and incorporated herein. The exemplary embodiment of Nambu et al. features a copolymer derived from multiple (meth)acrylate monomers, hydroxyethyl methacrylate, and additional monomers (see column 16, lines 1-23. Accordingly, this exemplary embodiment fails to disclose: (77) an acrylic copolymer derived from monomers consisting of one or more (meth)acrylate monomer and a hydroxy functional monomer (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). However, the general teachings Nambu et al. only require {an acrylic or meth acrylic acid monomer or a derivative therefrom} (corresponding (meth)acrylates) (see column 2, lines 1-5 & 26-55) and {a hydroxy group-containing monomer} (see column 2, lines 1-5 & 6-25). The remaining monomers of Nambu et al. are optional (see column 2, line 56 through column 3, line 16).
Therefore, the teachings of Nambu et al. would have obviously embraced embodiments featuring an acrylic copolymer derived from monomers consisting of one or more (meth)acrylate monomer and a hydroxy functional monomer because: (a) the exemplary embodiment of Nambu et al. features a copolymer derived from multiple (meth)acrylate monomers, hydroxyethyl methacrylate, and additional monomers; (b) the general teachings Nambu et al. only require {an acrylic or meth acrylic acid monomer or a derivative therefrom} (corresponding (meth)acrylates) and {a hydroxy group-containing monomer}; and (c) the remaining monomers of Nambu et al. are optional.
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 July 22, 2026 have been fully considered but they are not persuasive.
Argument 1 (see paragraph bridging pages 5-6 of the response): Applicant states that Verosky does not teach or suggest the acrylic copolymer of claim 55 at least because the acrylic copolymer of claim 55 is not silyl-functionalized. The Office respectfully disagrees.
The copolymer of claim 55 does not positively recite the presence of silyl-functionality; however, it fails to exclude silyl-functionality. The language “derived from one or more (meth)acrylate monomer and a hydroxy functional monomer” is open to the presence of additional monomers. These additional monomers would have embraced the monomers introduced in dependent claim 69, as well as silyl-functional monomers. As discussed in the above rejection, 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 6 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).
Furthermore, Applicant’s arguments have been considered with respect to the newly applied teachings of Nambu et al. However, these arguments are moot with respect to Nambu et al. because this new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
July 29, 2026
Prosecution Insights