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 Interpretation
In their response dated 3/24/2026 the applicants amended the claim to remove amine containing compounds as bis(alkoxysilane) or tris(alkoxysilanes). However instant claims are directed to a moisture crosslinkable composition comprising components A-D. Term comprising still encompasses presence of aminosilanes even though not required by the composition itself.
Response to Arguments
Applicant’s arguments received on 3/24/2026 were directed to a rejection over Kawate in view of Fukuyama. However, the amendment which removed amino group from silanes completely changes not only the scope of the claims (breadth) but also a manner in which the prior art is interpreted. As a result, the rejection stated in the final office action dated 12/31/2025 has to be withdrawn.
Consequently, the rejections of record will be restated to reflect amendments to the claims.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 17, 18, 21, 23, 24, 26-31 and 33 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Fukuyama (EP 304 958) previously made of record.
With respect to claims 17, 23, 24, Fukuyama discloses composition comprising (clam 1):
Component A – which is polyorganosiloxane that is terminated with either hydroxy or alkoxy group which meets instant polymer A,
Component B – having following formula:
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Wherein a and b can be zero, R1 and R4 are monovalent hydrocarbon, R2 and R5 are alkyl groups which meet instant group R10 and R3 meets instantly claimed R8. This chemical structure further meets structure of instant claim 24.
Component C – which is aminosilane encompassed by term “comprising”. Exemplary bis(alkoxysilanes) or tri(alkoxysilanes) are listed starting bottom of page 3 and compound such as bis(triethoxysilyl)ethane has molecular weight of 354.59 g/mol. The molecular weight of this alkoxysilane further meets instant claim 23.
Component D – epoxyalkoxysilane also encompassed by term “comprising”
Component E – catalyst (claim 3) which reads on instant component D
Component F – 1-200 preferably 5-100 parts by weight of inorganic filler. The inorganic filler includes calcium carbonate and zinc carbonate (p. 5, l. 25-30).
While Fukuyama discloses that plasticizers can be utilized its amount is not disclosed (p. 5, l. 34). Consequently, for the purpose of the rejection the content of the plasticizer is zero.
While Fukuyama does not explicitly state that the composition is moisture curable such is an inherent property for following reason: The silane compounds of Fukuyama comprise hydrolysable groups at the terminal ends of the polymer and hydrolysable crosslinker which also acts as water scavenger to maintain the shelf stability of the unopened container. Once composition is exposed to air atmospheric moisture reacts with the hydrolysable groups (in this case alkoxy) resulting in formation of silanol (Si-OH). The terminal silanol groups formed initiate condensation reaction under acidic or mild basic conditions forming Si-O-SI and release either water or alcohol. As such the system of Fukuyama depends on atmospheric moisture to initiate curing.
With respect to claim 18, according to claim 6 of Fukuyama the polymer A includes polydimethylsiloxane that is terminated with either hydroxy or alkoxy group as mentioned above, wherein alkoxy groups meet instant claims. The chemical structure of such polymer would be:
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Wherein R4 is methyl group (alkyl group having 1 carbon atom). Structures on page 3 of Fukuyama further disclose that the terminal alkoxy groups can be methyl or ethyl:
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With respect to claim 21, considering content of the components within the composition is as follows (see claim 1 and page 1):
Component B – 0.5-15 parts
Component C – is 0.1-10 parts
Carbonate filler range being 5-100 parts (example 3 discloses 60 parts)
The component A (polymer A) range would be anywhere from 15 parts (upper ranges of B and C) and higher since the content of carbonate can be lower than 60 parts (see page 3 of the specification, or rejection of claim 17).
With respect to claim 26, Fukuyama discloses:
Bis(triethoxysilyl)ethane
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The formula depicted in rejection of instant claim 17 further encompasses compounds with other substituents or linking groups.
With respect to claim 27, content of bis(alkoxysilanes) or tri(alkoxysilanes) is in a range of 0.5-15 parts (claim 1), which lies within the claimed range of 0.1-20 parts.
With respect to claim 28, the carbonate filler is calcium carbonate (p. 5) example 3 renders it preferred filler.
With respect to claims 29 and 33, as it was depicted in the rejection of claim 21, catalyst is utilized in amount of 0.001-5 parts and includes organotitanite, tin based catalyst (p. 5, l. 5-10; claim 6), tri or bis(alkoxysilanes) are utilized in amount of 0.5-15 parts, carbonate filler in a range of 1-200 parts (claim 6), the content of the polymer (based on 100 parts as depicted above is 15 parts or more. Table 1 discloses polymer precursor utilized in amount of 60 parts.
With respect to claim 30, additives of Fukuyama (p. 5, l. 32-35) include solvents, adhesion promoters, other polymers, thixotropy agents, heat stabilizers and the like.
With respect to claim 31, composition of Fukuyama can be utilized as a sealant, coating or adhesive (p. 5, l. 47-49).
Claim 32 is rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Fukuyama (EP 304 958) previously made of record.
With respect to claim 32, Fukuyama discloses composition comprising (clam 1):
Component A – which is polyorganosiloxane that is terminated with either hydroxy or alkoxy group which meets instant polymer A,
Component B – having following formula:
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Wherein a and b can be zero, R1 and R4 are monovalent hydrocarbon, R2 and R5 are alkyl groups which meet instant group R10 and R3 meets instantly claimed R8. This chemical structure further meets structure of instant claim 24.
Component C – which is aminosilane encompassed by term “comprising”. Exemplary bis(alkoxysilanes) or tri(alkoxysilanes) are listed starting bottom of page 3 and compound such as bis(triethoxysilyl)ethane has molecular weight of 354.59 g/mol. The molecular weight of this alkoxysilane further meets instant claim 23.
Component D – epoxyalkoxysilane also encompassed by term “comprising”
Component E – catalyst (claim 3) which reads on instant component D
Component F – 1-200 preferably 5-100 parts by weight of inorganic filler. The inorganic filler includes calcium carbonate and zinc carbonate (p. 5, l. 25-30).
Claim 32 is directed to a method wherein “for improving resistance to aging” after composition is crosslinked is considered intended use. Having said that since the composition of Fukuyama can be also used as coating, the coating will always protect the surface it is applied to. Such function is an inherent function (p. 5, l. 47-49).
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 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama (EP 304 958) previously made of record in view of Patel (WO 2013/165552).
Discussion of Fukuyama from paragraph 1 of this office action is incorporated here by reference. In short summary, Fukuyama discloses moisture curable composition for adhesives, sealants and coatings which comprises alkoxy terminated polymer, carbonate filler, catalyst and tri(alkoxysilane) or bis(alkoxysilane).
Claim 1 of Fukuyama is very open to polymers utilized to make such composition as long as they comprise hydrolysable group at both ends of the polymer. The hydrolysable groups of Fukuyama are hydroxy and alkoxy groups.
With respect to claims 19 and 20, Patel discloses another moisture curable composition, which comprises the same type of catalyst as Fukuyama, and wherein moisture curable silicone polymer comprises hydrolysable group and further contains alkoxysilanes which act as crosslinking monomers (just like those of Fukuyama). The composition of Patel is also adhesive composition [0027] with good storage stability.
Silicone based polymer of Patel has following chemical structure [0035]:
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Wherein c can only be an integer between 0-1 [0038] n being 0-100, most preferably 1, R1 being alkyl [0035]. The R2 is hydrolysable group such as hydroxy or alkoxy group [0036]. Z is divalent linking group [0037] which includes C1 to Cn alkane, which encompasses C3 of claim 20. X is a polymeric component with n repeating units which includes polyethers, polyurethanes, and the like [0038].
If X group is polyether the non-limiting examples of polyoxyalkylenes are polyoxyethylene, polyoxypropylene, polyoxybutylene and the like [0039]. Polymer X [0052] is polymerized using according to patents incorporated therein as a reference. One such reference US 6,919,293 discloses polyether polyols with number average molecular weight of at least 150, preferably at least 200 and up to 50,000 (col. 4). These are the polyols or polyethers or polyoxyalkyls that are preferred by Patel. Their molecular weight is dictated by the viscosity such that they can be utilized to make coatings (coil. 1) which is also the purpose of Patel.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize polymers of Patel in the composition of Fukuyama and thereby obtain the claimed invention. Such modification would be obvious for following reasons:
The polymers of Patel have hydrolysable group which as taught by Patel will undergo curing initiated by moisture.
The polymers of Patel are suitable for making adhesive, sealants and coating as it is required by Fukuyama.
Polymers of Patel can form composition which has good storage stability, also a goal of Fukuyama.
Moreover, the combination of two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to for a third composition that is to be used for the very same purpose may be prima facie obvious. In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 426 (CCPA 1971).Selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp. 325 U.S. 327, 65 USPQ 297 (1945).
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 30, 2026