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 following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 5, 9-10, and 12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., U.S. Patent # 6,627,672 for the reasons outlined previously, and in view of the following additional consideration(s).
Apparently having observed that the amount of tin catalyst reported in the exemplifications summarized in Table 1 is 0.4 wt.%, Applicant has narrowed the range of suitable quantities of this component to 0.07% to 0.35%. As an initial matter, the current record doesn’t reflect that there is anything particularly critical with a maximum amount of .35%. Indeed, how could it when original claim 7 allowed it to be as much as 0.5%? In this regard, the Examiner reminds Applicant of the Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) decision which held that, “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Moreover, acceptable quantities of a tin catalyst are assuredly not limited to this exact value mentioned in Table 1 and one of ordinary skill in the art of formulating moisture/condensation-curable organopolysiloxane compositions is capable of determining suitable amounts of a catalyst (undoubtedly a result-effective variable) as a matter of routine experimentation.
The same goes for a suitable amount of the titanium catalyst. It is widely documented that titanium catalysts, while themselves effective promoters of condensation curing reactions, exhibit less activity than do their tin-based counterparts and, therefore, it would be obvious that more of a titanate must be employed in this capacity. (See, as one document that teaches the lower activity of titanium catalysts, [0004] of U.S. 2022/0162393.) As with the tin catalyst candidates, one of ordinary skill is able to ascertain acceptable quantities of a titanate catalyst as a matter of routine experimentation. “Discovering an optimum value of a result effective variable involves only routine skill in the art.” In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., U.S. Patent # 6,627,672 in view of Levandoski et al., U.S. Patent # 6,140,444 for the reasons outlined previously.
Response to Arguments
The Examiner continues to maintain that the rejection should be withdrawn predicated on the notion that they have demonstrated embodiments of the base polymer of the claimed invention that contain acrylate groups to exhibit superior “process development” rates. Again, notwithstanding the fact that a methacrylate-terminated congener is disclosed in Table 1 of Lin, the Examiner still regards the acrylate-terminated polymers to be anticipated for reasons articulated before.
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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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December 23, 2025
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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