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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 5, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The final four lines of claim 13 seem to be in direct conflict with the subject matter that precedes them. In particular, the fourth-to-last line of claim 13 stipulates that z and z1 in formulae (II), (III), and (VI) are stipulated to be equal to 1 whereas both of these variables are defined as being between 1 and 50 in the preceding description (but where z1 is necessarily less than, or equal to z). This same passage is in direct conflict with the limitations of claims 14, 16, and 17 also. (Applicant is advised that, should they amend the claims to remove the subject matter that allows z and z1 to be between 2 and 50, than claims 14, 16, and 17 will no longer be further limiting.) Further, the fourth- and third to last lines of claim 13 seem to mandate the presence of compounds of the formula (II) whereas line 4 indicates that their presence is optional.
The Examiner expects that this disconnect explains their apparent insistence in the Remarks section that the isocyanate scavenger (VI) is mono-functional. Until the claims are amended to create uniformity of concept, the Examiner will continue to construe the isocyanate scavenger (VI) as being possibly multi-functional, though it is still asserted that mono-functional oligomeric scavengers with 3 or more identical repeating units may be gleaned from Ludewig.
Claim Rejections - 35 USC § 102/103
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.
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 13-21, and 23-28 are rejected under 35 U.S.C. 102 as being anticipated by, or 35 U.S.C. 103 as being unpatentable over, Ludewig et al., U.S. Patent Application Publication No. 2007/0055035.
Ludewig is directed to an approach for providing a hydrolysable silane-terminated polyether by first reacting a polyoxyalkylene polyol with a stoichiometric excess of an isocyanate-functional silane bearing hydrolysable alkoxy groups and subsequently reacting the resulting product mixture with an isocyanate-reactive compound (abstract). Relevant to the present discussion, there are mentioned as permutations of the compound featuring isocyanate-reactive moieties diethylene glycol monoalkyl ether [0030] and polypropylene glycols and polybutylene glycols [0032] having a molecular weight of 400 mol/g or less [0029], the latter two of which are anticipatory of the genus defined in formula (VI). "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960)
In the course of reacting, for instance, an oxypropylene diol tetramer, or tetrapropylene glycol, (z=2 in formula VI) with the leftover isocyanatopropyltrimethoxysilane from the initial silylated polymer-forming reaction summarized in paragraphs [0025-0028] where polyoxyalkylenes are exemplary of the polymer [0017], there would be produced a mixture comprising a silane-terminated polymer correlated with (SP1), and at least a polymer correlating with (SP3) for which z=2 and z1=1, if not both (SP2) and (SP3) derived from said tetramer and isocyanatopropyltrimethoxysilane where the former is added in stoichiometric excess [0036].
It is conceded that Ludewig is not anticipatory of those permutations of the isocyanate scavenger (VI) where Y2 is a residue derived from an oligomer/polymer having at least 3 identical units and where z is 1. Still, the Examiner reiterates here that diethylene glycol monoalkyl ethers are contemplated as scavengers in [0030] as are oxyethylene- and oxypropylene glycol oligomers with a molecular weight of less than 400 g/mol in [0029,0031]. The lists of compounds set forth in these passages and also [0032], while large, are not intended to be comprehensive as evidenced by the fact that paragraphs [0030] and [0031] begin with the word “Examples” as in “Examples monofunctional/polyfunctional alcohols”. Accordingly, a skilled practitioner of the invention defined by this disclosure will appreciate that other permutations of either of these are suitable and those permutations that are structurally analogous would be most obvious. According to MPEP 2144.09, compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Applied to the current fact pattern the difference between diethylene glycol monoalkyl ethers and tetraethyleneglycol monoalkyl ether is that the latter features the successive addition of two more of the same group -CH2CH2O- as are present in the former.
Claim Rejections - 35 USC § 13
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Ludewig et al., U.S. Patent Application Publication No. 2007/0055035 in view of Ziche et al., U.S. Patent Application Publication No. 2005/0119436.
Whereas the claims require that the carbamate/urethane linkage-promoting catalyst is the conventional dibutyltin dilaurate, claim 22 instead mandates that a bismuth-based catalyst be employed instead. Ziche in the background section discusses this known conversion between a hydroxy-functional polymer and an isocyanate-functional silane noting that the reaction has to be carried out with moisture excluded. See [0004-0006]. In the next paragraph, it is advocated that the aforementioned precursors be instead reacted in the presence of a bismuth catalyst because the resulting products are stable in the presence of moisture. It would be obvious to one of ordinary skill to, likewise, perform the reactions outlined in [0059] of Ludewig where, again, oxypropylene diol tetramer is substituted for butanediol, to realize the same benefit.
Response to Arguments
As an initial matter, there is conflicting subject matter in regards to whether the isocyanate scavenger (VI) is confined to those that are mono-functional or not. Because some language of the claims still embraces ones that may be polyfunctional, the claims are still considered to be unpatentable on at least this foundation.
Ludewig need not expressly mention mono-functional trimers or higher oligomers/polymers in association with prior art component (C), correlated with claimed component (VI), for them to be deemed obvious, and the number of other permutations offered by the reference is immaterial. Moreover, the MPEP is clear that structural homologs of named compounds may be held as obvious where the properties are expected to be similar upon making the proposed substitution. There is nothing on the record that would suggest that the properties would be significantly different were diethylene glycol monoalkyl ether to be replaced with tetraethyleneglycol monoalkyl ether.
That the intent of adding an isocyanate scavenger may be different is really of no consequence. Additionally, it is observed that Ludewig does not mention isolating the reaction product derived from prior art component (C) and residual isocyanatosilane (B) from the product mixture of (A) and (B). In other words, the components obtained by scavenging the residual compound correlated with claimed formula (V) using a compound correlated with claimed component (VI) is retained.
As to the notion that the rejections should be withdrawn due to unexpected improvements, the data of Table 1 reflects that the properties of 2c are not really all that distinguished from those of 2a and 2b, especially 2b. The elongation at break is somewhat depressed and the adhesion of the composition to different substrates is similar for all but a few (and the adhesivity profile is even closer between 2b and 2c. One problem with Applicants’ showing is that the differences between the examples 2a/2b and 2c is not confined to the use of oligomeric vs small molecule scavengers alone. Rather, the amount of excess silylating reagent and scavenger is also different and this seems to have some influence over the outcomes insofar as Examples 2a and 2b employ the same isocyanate-functional silane, but in different amounts and this difference led to 2b not exhibiting similar levels of adhesion with polycarbonate, polystyrene, and PVC rigid white Komadur ES. Therefore, it is difficult to ascertain to what the performance differences are actually attributed. Another big issue is that Applicants’ showing is hardly commensurate with the scope of the claims beginning with the fact that the invention is not confined to compounds (VI) where z equals 1 only.
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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April 13, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
