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 .
Response to Arguments
Applicant’s amendment dated 7/29/2026 requires di and trialkoxysilane to contain heteroatoms in the linking group between the two alkoxysilanes. This obviates rejection over Fukuyama because linking group is alkyl group as such rejections over Fukuyama are withdrawn. Updated search provided additional reference that is applicable against instant claims as filed. Consequently, the office action below will be final as necessitated by amendment.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 17-21, 23, 27-32 are rejected under 35 U.S.C. 103 as being unpatentable over Gubbels (US 2016/0340548) in view of Kawakami (EP 3 015 471).
With respect to claim 17, Gubbels discloses moisture curable composition comprising:
Polymer terminates with hydrolysable silane group (Abstract) wherein polymer A can be polydiorganosiloxane [0018] or a polyether with preferred repeat units being ethylene oxide, propylene oxide and butylene oxide [0025]. The polyether is terminated with hydrolysable groups which in particular include alkyl dialkoxysilyl or trialkoxysilyl groups [0027]. Another example include silyl terminated hydrocarbon polymer [0028] acrylate polymer bearing silyl groups [0029], Silyl terminated polyurethanes [0030]. Each polymer will meet the claim since the only requirement is that polymer A comprises at least one alkoxysilane group.
Crosslinking agent [0036], wherein listed crosslinking include the same compounds as claimed crosslinking catalyst of the instant invention.
A filler in an amount of 3-800 parts, preferably 25-400 parts [0041], wherein preferred reinforcing filler is silica or calcium carbonate which may further include non-reinforcing fillers [0039]. Preferred treated filler is calcium carbonate and it is the only filler listed in [0040].
An alkoxy silanes having general formula [0042]:
PNG
media_image1.png
38
250
media_image1.png
Greyscale
Wherein, integers m and q are either 1, 2 or 3; R1 and R2 are alkoxy groups, Y1 and Y2 are alkyl group; Z1 and Z2 are alkyl groups having 1-12 carbon atoms linked together by G1 group which is a heteroatom [0048]. All compounds listed are difunctional siloxanes and the heteroatom is either amine or urea. While amines are not listed as required heteroatom, they are still encompassed by term “comprising” Additionally, while Gubbels does not explicitly state how the urea is made, urea may include oxygen as another heteroatom. Most importantly, all components D are difunctional silanes, wherein the reactive moieties are the alkoxy groups. This compound is utilized as a treating agent for the silica or calcium carbonate filler, wherein such treating agents are commonly referred to as coupling agents.
While Gobbels does not explicitly teach bisalkoxysilanes that are used to treat reinforcing fillers, Kawakami discloses another type of bisalkoxysilanes which are also coupling agent for polymer composition. Basically, the compound of Kawakami is utilized to perform the same function as the compound of Gobbels. Kawakami discloses compound having following structure:
PNG
media_image2.png
146
546
media_image2.png
Greyscale
The structure has a required -O- bond wherein nitrogen is encompassed by term “comprising”. In addition, R4 is also defined as containing a heteroatom, wherein heteroatom can be oxygen, nitrogen or sulfur [0014].
The molecular weight of the coupling agent meets the limitation of instant claim 1 assuming all substituents on silicone are alkoxy groups (n=0); R1 and R2 are hydrogen, R3 is alkyl having 3 carbon atoms, R4 is alkyl having 3 carbon atoms.
Consequently, under broadest reasonable interpretation, compound of Kawakami meets the definition of bisalkoxysilane of the instant claim 1. Species disclosed in [0017] include two oxygen atoms.
It would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize bisalkoxysilanes of Kawakami and thereby obtain the claimed invention. The substitution would still provide efficient coupling agents, since the substituents on silicon are alkoxy group in both Gubbels and Kawakami. Additionally, Kawakami explicitly states that the inventive silanes are used as coupling agents.
With respect to claim 18, the polymer A of Gubbels is terminated with a silane [0027] includes alkyldialkoxysilane, wherein instantly claimed integer p would be 1 as well as trialkoxysilyl group, wherein the claimed integer p will be zero.
With respect to claims 19 and 20, silyl terminated polymer of Gubbel has alkyloxy repeat unit -OR- [0027] wherein alkyl group has 2-4 carbon atoms. This meets instantly claimed formula II. The mumber average molecular weight of the polyalkylene oxide polymer is 300-10,000 [0025].
With respect to claim 21, Gubbles discloses in his claim 9, that the content of polymer A is in a range of 30-70 wt% based on the total content of the composition.
With respect to claim 23, the bisalkoxy silanes of Gubbel meet required molecular weight. The molecular weight compound with 2 silicon atoms, 9 carbon atoms, 7 oxygen atoms and one nitrogen alone is 276.
With respect to claim 27, the content of bisalkoxysilane is 1-50wt wt.% (claim 14 of Gubbels).
With respect to claim 28, as it was disclosed in the rejection of 17, preferred filler is calcium carbonate.
With respect to claim 29, claim 9 of Gubbels discloses composition comprising 30-70 wt.% of polymer A, 30-70wt.% of filler (calcium carbonate), 0.5-10 wt.% of silane D (bisalkoxysilane) and 0.5-10 Wt.% of crosslinking agent.
With respect to claim 30, the composition of Gubbels discloses use of additives such as plasticizers, pigments, stabilizers [0070], non-reinforcing fillers (see rejection of claim 17), adhesion promoters [0059], chain extenders [0060]. See also Gubbels’ claim 8.
With respect to claim 31, Gubbels teaches that the composition can be utilized as sealant (adhesive), coatings and the like [0073].
With respect to claim 32, Gubbels adds the bisalkoxy silane to the claimed composition as disclosed in the rejection of claim 17.
With respect to claim 33, includes tin-based catalyst (tin II octanoate) [examples], wherein bisalkoxysilane can also function as a catalyst especially amine based alkoxysilanes.
Claims 17-21, 23, 26-33 are rejected under 35 U.S.C. 103 as being unpatentable over Prasse (US 2015/0011705).
With respect to claims 17, 23, 26 and 28, Prasse discloses moisture curable composition comprising: polyoxyethylene polymer terminated with alkoxysilyl group (Abstract) as component B [0011] also last chemical structure in [0020]. Component A is organosilicone compound with at least two condensable groups [0035-0036].
Component C is a crosslinker, which includes hexaethoxydisiloxane [0048, 0056].
Hexaethoxydisiloxane has following chemical structure:
PNG
media_image3.png
242
340
media_image3.png
Greyscale
And a molecular weight of 326. This compound also meets the requirements of instant claims 23 and 26.
Component F of the composition of Prasse is a filler [0065-0066]. Preferred filler is selected from either silica or calcium carbonate. Calcium carbonate further meets limitation of the filler in instant claim 28.
Crosslinking catalyst is utilized in an amount of 0.01-3 parts [0060-0061].
While Prasse discloses many siloxane compounds that can be utilized as crosslinker C, hexaethoxydisiloxane is explicitly recited as a compound suitable for such purpose. Consequently, it would be obvious to one having ordinary skill in the art at the time instant invention was filed to utilize hexaethoxydisiloxane as crosslinker in the composition of Prasse, because such compound, due to presence of at least two functional groups will functionally obtain the same result which is crosslinking of the composition as any other compound named by Prasse.
With respect to claim 18, the polymer of Prasse has following structure [0011]:
PNG
media_image4.png
36
422
media_image4.png
Greyscale
Wherein R1 is alkyl, R is alkyl and R2 can be either alkyl having 8-22 carbon atoms or silicone-based compound; an integer x is 1-20. When R2 is substituted with silicone, and an integer a is 1, 2 or 3 the resulting compound can be trialkyl silane. This is because Prasse teaches one end terminated with hydrocarbon (Abstract). Compound of formula I would therefore meet instant formula II where first end is alkoxy end and second alkylsilane (p=3).
With respect to claims 19 and 20 , when calculating the molecular weight of the compound I, the molecular weight of the alkoxy end is 105, the molecular weight of the hydrocarbon end is 73, ethylene oxide repeat unit has molecular weight of 44. Ends were calculated assuming R groups are methyl groups. Component A of formula I is a divalent group hydrocarbon radical [0011] where heteroatoms are optional. Assuming A group is propyl group molecular weight is 45. 105+73+45 adds up 223 g/mol. With ethylene oxide being 44 the minimum number of repeat units has to be 7 resulting in overall molecular weight of 531. In most preferred embodiments, the number of ethylene oxide repeat units in Prasse is 6-9 with ethylene oxide as preferred embodiment for alkoxy silane terminated end.
With respect to claim 21, the content of component B (compound of formula I) is 0.1-50 parts by weight of the composition.
With respect to claim 27, crosslinker C (hexaethoxydisiloxane) is 0.01-20 parts, preferably 0.5-10 parts, most preferably 2-6 parts [0059], which is reported based on the content of organosilicone compound A. Since organosilicon compound of Prasse also meets generic disclosure of the polymer A in claim 17, which only comprises the silane terminated polyethylene oxide, then the content of crosslinker is as reported in [0059].
With respect to claims 21 and 29, with bisalkoxysilane being in an amount of 2-6 parts, carbonate filler is utilized in a preferred amount of 10-200 parts, crosslinking catalyst D is 0.01-3 parts [0060-0061] balance being component A, with maximum content based on the lower end of the composition is 88 parts. This further meets claim 21 this time with component A and compound of formula I.
With respect to claim 30, additives include pigments, stabilizers, filler other than silica and calcium carbonate [0069], adhesion promotes (also meet moisture absorbers) [0068] and the like.
With respect to claim 31, composition of Prasse can be utilized as a sealant, an adhesive, protective coatings and the like [0081].
With respect to claim 32, the composition was already rejected with claim 17. With respect to the process, the components can be mixed [0074] wherein addition of bisalkoxysilane would be an inherent step within the process itself. By the way of example 1 polymeric components are mixed first in a planetary mixer when crosslinkers, catalysts and fillers are added to obtain final product. Please note, that examiner relies upon process steps only, not the composition disclosed therein.
With respect to claim 33, the crosslinking accelerator of Prasse meet the limitations of instantly claimed crosslink catalyst. These include tin-based compounds and aminosilanes [0060].
Claim 17-21, 23, 2633 are rejected under 35 U.S.C. 103 as being unpatentable over Gubbels (US 2016/0340548) in view of over Prasse (US 2015/0011705).
Discussion of the disclosure of Gubbels from paragraph 1 of this office action is incorporated here by reference.
As it was disclosed in paragraph 1, the crosslinking agents of Gubbels are bisalkoxy silanes, wherein the linking group comprises amine or urea. Having said that, the component G1 in the silane D [0042] is defined as heteroatom. Importantly, all silane compounds are bistrialkoxy silane, which is the reactive group when it comes to crosslinking or any reaction that coupling agents would perform.
The different between Gubbels and instant invention is use of difunctional silane as the crosslinker, wherein the bisalkoxy silanes having different linking group and still perform its function as crosslinkers or coupling agents.
Prasse discloses following crosslinker which is a hexaethoxydisiloxane has following chemical structure:
PNG
media_image3.png
242
340
media_image3.png
Greyscale
And a molecular weight of 326. This compound also meets the requirements of instant claims 23 and 26.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the crosslinker of Prasse in the composition of Gubbles and thereby obtain the claimed invention. The crosslinker of Prasse will have the same reactive groups triethoxy group as the crosslinkers of Gubbels. Since the alkoxy group (in instant case ethoxy group) are responsible for the crosslinking or surface treating, both compounds will result in the same crosslinking mechanism as well as the same crosslinking degree because both compounds contain the same amount of ethoxy groups.
Relevant Art
US 2,698,861 to Shorr discloses process of making coupling agents comprising linking group being alkyldisulfide.
US 2003/0069332 to Agostini discloses coupling agents comprising at least 2 sulfurs.
US 2010/0305263 to Prasse discloses another moisture curable composition comprising siloxane terminated polymer utilizing the same hexaethoxydisiloxane compound.
US 3,842,111 to Meyer-Simon discloses sulfur containing organosilicone as coupling agent.
US 7,737,202 to Cruse discloses free-flowing filler which is treated with silane coupling agents, wherein the coupling agents include disulfide linking group.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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, Mark Eashoo can be reached at 5712701046. 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.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 10, 2026
Prosecution Insights