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 .
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 1, 3, 6, 8-17, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto (US 20150299543 A1) in view of Takasu (US 20120286220 A1) and Ikeno (JP 2003327833 A, hereinafter referring to the ESPACENET translation) and further in view of Yang (US 9,006,357 B2).
Regarding claim 1, Miyamoto teaches a curable silicone composition ([0002]) comprising:
An organopolysiloxane (A) having at least two silicon-bonded alkenyl groups per molecule ([0017]), which reads on the claimed “(A) a polymer having two or more alkenyl groups”
An organopolysiloxane (B) wherein the silicon atoms may have small quantities of hydroxyl groups (i.e., said hydroxyl groups are optional [0023]). The embodiment of component (B) within Miyamoto which does not contain hydroxyl groups therefore does not read on the claimed “(B) a polyorganosiloxane having a hydroxyl group bound to a silicon atom,” and thus this embodiment of Miyamoto meets the claimed limitation requiring one of “(A)” OR “(B).”
Miyamoto differs from claim 1 because it is silent with regard to the silica, surface-treated with an alkyl silane. Miyamoto does however teach the incorporation of inorganic fillers which may include silica ([0051]).
In the same field of endeavor, Takasu teaches the incorporation of surface-modified silicas ([0164]) in curable silicone compositions ([0018]), and explains that the surface treatment of silica with octyl silane constitutes hydrophobicization ([0164]), which is recognized in the art as a means for improving the compatibility of a filler and its polymer matrix. Takasu further explains that the incorporation of the silica is useful for imparting a thixotropic nature to the composition, and for improving the strength and toughness of the post-cure product ([0163]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the octyl-silane surface-treated silica of Takasu to the formulation of Miyamoto for the purpose of creating a composite with improved material properties and high filler compatibility. The octyl-silane surface-treated silica reads on the claimed component “(C) a silica powder surface-treated with an alkyl silane.”
Miyamoto further differs from claim 1 because it is silent with regard to the incorporation of tributyl borate.
In the same field of endeavor, Ikeno teaches a self-adhesive organopolysiloxane composition ([0001]) with improved self-adhesiveness, which incorporates 0.01 to 5 parts by mass of a borate ester compound ([0007]). Ikeno further teaches that the borate ester acts as a condensation promoter to improve adhesion, and has the effect of promoting hydrolysis of other alkoxysilyl groups and ring-opening of epoxy groups, which strengthens the interactions between said other components and the substrate ([0031]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate borate esters into the formulation of Miyamoto as taught by Ikeno for the purpose of incorporating improving the adhesiveness of the organopolysiloxane formulation. However, Miyamoto as modified by Ikeno still differs from claim 1 because it is silent with regard to the specific use of Tributyl borate.
In the same field of endeavor, Yang teaches curable polyorganosiloxane compositions (Abstract), comprising a Lewis acid as a reaction catalyst (col. 1, lines 39-43), wherein the Lewis acid may be a trialkylborate such as of trimethyl, triethyl, and tributylborates (col. 16, lines 51-55). Miyamoto also recognizes the use of trialkylborates as condensation catalysts (promoters, [0031]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize tributylborate as the condensation promoter within the formulation of Miyazaki, as Yang recognizes it as a suitable trialkylborate Lewis acid useful for catalysis within polyorganosiloxane formualtions.
Regarding the limitation requiring that the silica is “fumed silica,” Takasu specifically teaches the use of fumed silica ([0166]).
Regarding the limitation requiring that the mass ratio of the fumed silica (claimed component “(C)”) and claimed component “(D)” is “9:1 to 1:9,” it is recognized that this range of ratios is equivalent to an amount of 10 to 90 wt% of fumed silica surface-treated with octyl silane, with regard to the combined masses of said silica and claimed component “(D).”
Takasu teaches that the silica is included in amounts ranging from 2 to 80 wt% of the overall formulation ([0180]), and Ikeno teaches that the borate ester, which reads on the claimed component “(D),” is included in amounts ranging from 0.01 to 5 parts per 100 parts of organopolysiloxane ([0034]). Therefore, it would have been obvious to one of ordinary skill in the art to incorporate these amounts within the formulation of Miyamoto, as described above.
Miyamoto teaches example formulations comprising 100 parts of organopolysiloxane components and 0.1 parts each of hydrosilylation catalyst (component (D), Abstract) and inhibitor (component (E), [0043]) (p. 7, Table 1), and from 1 ppm to 10 wt% of component (C) ([0038]).
Given that the formulations of Miyamoto include 100 parts of organopolysiloxane, it would have been obvious to include between 0.01 and 5 parts of borate ester within these formulations, as described above. In doing so, the formulations of Miyamoto as modified include between 100.21 and 105.2 parts total of organopolysiloxane components, catalyst, inhibitor, and borate ester. Furthermore, since the remaining components of the modified composition (component (C) of Miyamoto and the silica of Ikeno) are included in amounts ranging from 1ppm to 10 wt % and 2 to 80 wt%, respectively, the above range of parts comprises between about 10 and about 98 wt.% of the overall modified formulation. Therefore, the overall modified formulation comprises between about 102.26 and 1052 parts by weight in total. Of this total amount, as described above, silica comprises between 2 and 80 wt%, or a total of between 5.11 and 631.2 parts by weight.
Therefore, the modified composition contains between 5.11 and 631.2 parts by weight of the octylsilane-modified fumed silica and between 0.01 and 5 parts by weight of the borate ester components. With regard to the combined masses of these two components, the octylsilane-modified fumed silica may therefore comprise between 50.5 wt% and 99.99 wt%, which overlaps the equivalent to the claimed range of 10 to 90 wt% as described above, establishing a prima facie case of obviousness.
Regarding claim 6, Miyamoto teaches that component (A) is an organopolysiloxane having at least two silicon-bonded alkenyl groups per molecule ([0017]), which reads on the claimed “(A-2).”
Regarding claim 8, Miyamoto as modified teaches the resin compositions according to all of claims 1-7 as described above. Miyamoto further teaches that the organopolysiloxane component (B) is a crosslinking agent within the composition ([0023]), which reads on the claimed “cross-linking agent.” Finally, Miyamoto also teaches the incorporation of a hydrosilylation reaction catalyst (D) ([0039]), which reads on the claimed “curing catalyst.”
Regarding claim 9, Miyamoto teaches the curing of the composition ([0052]), which achieves a cured product ([0053]).
Regarding claims 10 and 11, Miyamoto teaches that the cured resin composition may be used as an adhesive or a sealant ([0094]).
Regarding claim 12, Miyamoto as modified teaches the mixing of the components to form a curable composition ([0044]), and meets all of the claimed compositional limitations of the claimed components as described above.
Regarding claim 13, Miyamoto as modified teaches the mixing of the components to form a curable composition ([0044]), and teaches the curing of the composition at a preferably elevated temperature between 50 and 200°C ([0052]), which overlaps the claimed curing temperature of “30 to 300°C,” establishing a prima facie case of obviousness. Miyamoto as modified also meets all of the claimed compositional limitations of the claimed components as described above.
Regarding claim 14, Miyamoto as modified teaches all of the limitations of claim 1 as described above. Further, Miyamoto as modified teaches that the organopolysiloxane component (B) is a crosslinking agent within the composition ([0023]), which reads on the claimed “cross-linking agent.” Miyamoto further teaches the incorporation of a hydrosilylation reaction catalyst (D) ([0039]), which reads on the claimed “curing catalyst.”
Finally, Miyamoto as modified by Takasu teaches an organopolysiloxane (A) having at least two silicon-bonded alkenyl groups per molecule ([0017]), which reads on the claimed “polyorganosiloxane (A-2) having two or more alkenyl groups.”
Regarding claim 15, Miyamoto as modified teaches the curing of the formulation of claim 14, as Miyamoto as modified reaches all of the limitations of claim 14 (see rejection of claim 14 above), and Miyamoto teaches the curing of the formulation ([0044]).
Regarding claims 16 and 17, Miyamoto teaches that the cured resin composition may be used as an adhesive or a sealant ([0094]).
Regarding claims 22 and 23, as described above, Miyamoto as modified teaches the incorporation of octylsilane-modified fumed silica and borate ester compounds, wherein, with regard to the combined masses of these two components, the octylsilane-modified fumed silica may comprise between 50.5 wt% and 99.99 wt%.
Regarding the limitation of claims 22 and 23 requiring that the mass ratio of the fumed silica (claimed component “(C)”) and claimed component “(D)” is “7:3 to 3:7,” it is recognized that this range of ratios is equivalent to an amount of 30 to 70 wt% of fumed silica surface-treated with octyl silane, with regard to the combined masses of said silica and claimed component “(D).” The range taught by Miyamoto as modified overlaps this claimed range, establishing prima facie cases of obviousness for claims 22 and 23.
Response to Arguments
Applicant's arguments filed December 3, 2025 have been fully considered but they are not persuasive.
Applicant first argues that the claims are limited to include only one of the claimed components “(A)” OR “(B) within the claimed composition, and asserts that the composition of Miyamoto requires both of said components. However, as described above, the organopolysiloxane of Miyamoto which was previously indicated as reading on claimed polymer “(B)” may contain small amounts of hydroxyl groups (i.e., said hydroxyl groups are optional). Therefore, the embodiment of Miyamoto wherein the organopolysiloxane (B) does not contain hydroxyl groups does not fall within the purview of claimed polymer “(B),” and therefore this embodiment within the composition of Miyamoto contains an organopolysiloxane which reads on the claimed polymer “(A),” but does not contain a polymer reading on the claimed polymer (B).”
Applicant next argues that the prior art fails to contemplate the desirable effects of tributyl borate within the claimed composition. However, as described in the previous rejection and the rejection above, it would have been obvious to utilize tributyl borate, as Yang recognizes it as a suitable trialkylborate compound. Furthermore, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV).
Applicant further argues that none of the references use tributyl borate in a working example. However, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). Tributyl borate is therefore rendered obvious by its inclusion in the prior art despite not being included in a working example.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762