DETAILED ACTION
Applicant’s response filed on 10/08/2025 has been fully considered. Claims 1, 4, and 6-17 are pending. Claims 2, 3, and 5 are canceled. Claims 10-15 are withdrawn. Claims 16 and 17 are new.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Rejections - 35 USC § 103
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.
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, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Braun et al. (US 8,067,5008 B2, cited in IDS).
Regarding claims 1 and 4, Braun teaches a curable composition comprising a polymer mixture, diisoundecyl phthalate, precipitated calcium carbonate, stabilized titanium dioxide of the rutile type, and dibutyltin dilaurate, wherein the polymer mixture is prepared (32:14-30) by drying 140 g or 12 mmol of polypropylene glycol in vacuo at 80° C, adding 0.3 g of dibutyltin dilaurate under a nitrogen atmosphere at 80° C, adding 0.7 g or 7 mmol of n-butyl isocyanate to this, stirring for 1 hour, mixing this with 3.7 g or 21 mmol of isocyanatomethyldimethoxy-methylsilane, stirring for 1 hour more at 80° C, cooling and mixing the resulting prepolymer mixture with 3.0 g of N-trimethoxysilylmethyl-O-methylcarbamate, 5.3 g of a mixture of 70 wt % bis(1,2,2,6,6-pentamethyl-4-piperidyl) sebacate and 30 wt% methyl-1,2,2,6,6-penta-methyl-4-piperidyl sebacate, storing the product moisture-tight in a glass container under a nitrogen atmosphere before being processed further to the curable composition (29:15-30), wherein phthalic acid esters (17:27) are suitable as plasticizers (17:33), wherein the calcium carbonate (26:36) is a filler (26:32), wherein the titanium dioxide (26:38) is a filler (26:32), wherein the dibutyltin dilaurate (19:56) is a suitable catalyst (19:54), wherein the polymer mixture comprises at least one polymer A having at least one reactive silyl group and at least one polymer B having at least one reactive silyl group (3:48-52), wherein the methyldimethoxysilylmethyl isocyanate is an isocyanate-containing compound (10:33-34), wherein the curable composition is obtainable by reaction of at least one isocyanate-reactive compound with at least one first isocyanate-containing silane compound and with at least one second isocyanate-containing compound, whereby the reaction product includes at least two polymeric compounds, polymer A and polymer B, each having at least one reactive silyl group (7:65-8:4), wherein sebacic acid esters (17:30) are suitable as plasticizers (17:33), which reads on a one-part condensation curable silyl modified polymer-based sealant composition comprising (a) a silyl modified organic polymer having at least two (R)m(Y1)3-m-Si- groups per molecule where each R is a hydrolysable group, each Y1 is an alkyl group containing 1 carbon, and m is 2, or 3, which organic polymer is selected from polyethers, (b) a reinforcing filler, (c) one or more plasticizers, and (d) a catalyst. Braun teaches that the catalyst optionally comprises (19:59-63) isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate (19:64-67), that the catalyst optionally comprises (20:15-16) bismuth tris-2-ethylhexanoate (20:24-25), that the catalyst may be used alone or as a mixture of two or more of the catalysts (20:8-11), that mixtures of one or more catalysts from one or more of the aforementioned groups may preferably also be used as catalysts (20:48-51), and that the preparation may contain up to 5 wt % of such catalysts in the total amount (26:13-15), which suggests using a mixture of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and Braun’s bismuth tris-2-ethylhexanoate to substitute for Braun’s dibutyltin dilaurate in Braun’s polymer mixture in Braun’s curable composition, which suggests the one-part condensation curable silyl modified polymer-based sealant composition further comprising (d) a catalyst comprising (i) a titanate or zirconate and (ii) a metal carboxylate salt selected from bismuth (III) carboxylates, wherein the titanate or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of greater than 0:1 and less than 1:0, wherein the metal carboxylate salt (ii) is selected from bismuth ethylhexanoate
Braun does not teach a specific embodiment of the one-part condensation curable silyl modified polymer-based sealant composition further comprising (d) a catalyst comprising (i) a titanate and/or zirconate and (ii) a metal carboxylate salt selected from the group consisting of zinc (II) carboxylates and bismuth (III) carboxylates, wherein the titanate and/or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of 1:4 to 4:1, wherein the metal carboxylate salt (ii) is selected from the claimed group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a mixture of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and Braun’s bismuth tris-2-ethylhexanoate to substitute for Braun’s dibutyltin dilaurate in Braun’s polymer mixture in Braun’s curable composition, and to optimize the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate to be from 0.25 moles to 4 moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate. The proposed modification would read on the one-part condensation curable silyl modified polymer-based sealant composition further comprising (d) a catalyst comprising (i) a titanate or zirconate and (ii) a metal carboxylate salt selected from the group consisting of bismuth (III) carboxylates, wherein the titanate or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of 1:4 to 4:1 as claimed, wherein the metal carboxylate salt (ii) is selected from bismuth ethylhexanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying acceleration of silanol condensation in Braun’s curable composition, for modifying control of the curing rate of Braun’s curable composition, and for optimizing an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition because Braun teaches that the curable composition comprises a polymer mixture (32:14-30), that the polymer mixture is prepared (32:14-30) using dibutyltin dilaurate (29:15-30), that the dibutyltin dilaurate (19:56) is a suitable catalyst (19:54) to promote crosslinking and/or control the curing rate (19:39-40), that the catalyst optionally comprises a catalyst known for accelerated silanol condensation (19:59-63) that is isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate (19:64-67), that the catalyst optionally comprises a catalyst to control the curing rate of the curable composition (20:15-16) that is bismuth tris-2-ethylhexanoate (20:24-25), that the catalyst may be used alone or as a mixture of two or more of the catalysts (20:8-11), that mixtures of one or more catalysts from one or more of the aforementioned groups may preferably also be used as catalysts (20:48-51), and that the preparation may contain up to 5 wt % of such catalysts in the total amount (26:13-15), which means that the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate in moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate would have affected an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition.
Regarding claim 6, Braun teaches that the polymer mixture is prepared (32:14-30) by drying 140 g or 12 mmol of polypropylene glycol in vacuo at 80° C, adding 0.3 g of dibutyltin dilaurate under a nitrogen atmosphere at 80° C, adding 0.7 g or 7 mmol of n-butyl isocyanate to this, stirring for 1 hour, mixing this with 3.7 g or 21 mmol of isocyanatomethyldimethoxy-methylsilane, stirring for 1 hour more at 80° C, cooling and mixing the resulting prepolymer mixture with 3.0 g of N-trimethoxysilylmethyl-O-methylcarbamate, 5.3 g of a mixture of 70 wt % bis(1,2,2,6,6-pentamethyl-4-piperidyl) sebacate and 30 wt% methyl-1,2,2,6,6-penta-methyl-4-piperidyl sebacate, storing the product moisture-tight in a glass container under a nitrogen atmosphere before being processed further to the curable composition (29:15-30), that the methyldimethoxysilylmethyl isocyanate is an isocyanate-containing compound (10:33-34), and that the curable composition is obtainable by reaction of at least one isocyanate-reactive compound with at least one first isocyanate-containing silane compound and with at least one second isocyanate-containing compound, whereby the reaction product includes at least two polymeric compounds, polymer A and polymer B, each having at least one reactive silyl group (7:65-8:4), which reads on wherein silyl modified organic polymer (a) is a polymer terminated with (R)m(Y1)3-m-Si-D-[NH-C(=O)]k- where each R is a hydrolysable group, each Y1 is an alkyl group containing 1 carbon, m is 2, D is a divalent C1 alkylene group, and k is 1. Braun teaches that the isocyanate-containing compound is optionally (10:33) methyl-dimethoxysilylethyl isocyanate (10:38-39), trimethoxysilylethyl isocyanate (10:39-40), ethyl-dimethoxysilylethyl isocyanate (10:40), methyldiethoxysilylethyl isocyanate (10:40-41), triethoxy-silylethyl isocyanate (10:41), ethyldiethoxysilylethyl isocyanate (10:42), methyldimethoxy-silyl-propyl isocyanate (10:42-43), trimethoxysilylpropyl isocyanate (10:43), ethyldimethoxy-silylpropyl isocyanate (10:43-44), methyldiethoxysilyl-propyl isocyanate (10:44-45), triethoxysilylpropyl isocyanate (10:45), ethyldiethoxysilylpropyl isocyanate (10:46), methyldimethoxysilyl-butyl isocyanate (10:46-47), trimethoxysilylbutyl isocyanate (10:47), diethylmethoxysilyl butyl isocyanate (10:48), ethyldimethoxysilylbutyl isocyanate (10:49), methyldiethoxysilyl-butyl isocyanate (10:49-50), triethoxysilylbutyl isocyanate (10:50), diethyl-ethoxysilylbutyl isocyanate (10:50-51), ethyldiethoxysilylbutyl isocyanate (10:51-52), methyl-dimethoxysilylpentyl isocyanate (10:52), trimethoxysilylpentyl isocyanate (10:53), ethyldimethoxysilylpentyl isocyanate (10:54), methyldiethoxy-silylpentyl isocyanate (10:54-55), triethoxysilylpentyl isocyanate (10:55-56), diethylethoxysilylpentyl isocyanate (10:56), ethyldiethoxysilylpentyl isocyanate (10:57), methyldimethoxysilyl-hexyl isocyanate (10:57-58), trimethoxysilylpentyl isocyanate (10:58), ethyldiethoxysilylpentyl isocyanate (10:58-59), methyldimethoxysilylhexyl isocyanate (10:59-60), trimethoxysilylhexyl isocyanate (10:60), ethyldimethoxysilylhexyl isocyanate (10:60-61), methyldiethoxysilylhexyl isocyanate (10:61), triethoxysilylehexyl isocyanate (10:62), or ethyldiethoxysilylhexyl isocyanate (10:62-63), which suggests using Braun’s methyl-dimethoxysilylethyl isocyanate, trimethoxysilylethyl isocyanate, ethyl-dimethoxysilylethyl isocyanate, methyldiethoxysilylethyl isocyanate, triethoxy-silylethyl isocyanate, ethyldiethoxysilylethyl isocyanate, methyldimethoxy-silyl-propyl isocyanate, trimethoxysilylpropyl isocyanate, ethyldimethoxy-silylpropyl isocyanate, methyldiethoxysilyl-propyl isocyanate, triethoxysilylpropyl isocyanate, ethyldiethoxysilylpropyl isocyanate, methyldimethoxysilyl-butyl isocyanate, trimethoxysilylbutyl isocyanate, diethylmethoxysilyl butyl isocyanate, ethyldimethoxysilylbutyl isocyanate, methyldiethoxysilyl-butyl isocyanate, triethoxysilylbutyl isocyanate, diethyl-ethoxysilylbutyl isocyanate, ethyldiethoxysilylbutyl isocyanate, methyl-dimethoxysilylpentyl isocyanate, trimethoxysilylpentyl isocyanate, ethyldimethoxysilylpentyl isocyanate, methyldiethoxy-silylpentyl isocyanate, triethoxysilylpentyl isocyanate, diethylethoxysilylpentyl isocyanate, ethyldiethoxysilylpentyl isocyanate, methyldimethoxysilyl-hexyl isocyanate, trimethoxysilylpentyl isocyanate, ethyldiethoxysilylpentyl isocyanate, methyldimethoxysilylhexyl isocyanate, trimethoxysilylhexyl isocyanate, ethyldimethoxysilylhexyl isocyanate, methyldiethoxysilylhexyl isocyanate, triethoxysilylehexyl isocyanate, or ethyldiethoxysilylhexyl isocyanate to substitute for Braun’s isocyanatomethyldimethoxy-methylsilane in Braun’s polymer mixture, which would read on wherein silyl modified organic polymer (a) is a polyether terminated with (R)m(Y1)3-m-Si-D-[NH-C(=O)]k- where each R is a hydrolysable group, each Y1 is an alkyl group containing from 1 to 2 carbons, m is 1, 2, or 3, D is a divalent C2-6 alkylene group, and k is 1 as claimed.
Braun does not teach that D is a divalent C2-6 alkylene group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Braun’s methyl-dimethoxysilylethyl isocyanate, trimethoxysilylethyl isocyanate, ethyl-dimethoxysilylethyl isocyanate, methyldiethoxysilylethyl isocyanate, triethoxy-silylethyl isocyanate, ethyldiethoxysilylethyl isocyanate, methyldimethoxy-silyl-propyl isocyanate, trimethoxysilylpropyl isocyanate, ethyldimethoxy-silylpropyl isocyanate, methyldiethoxysilyl-propyl isocyanate, triethoxysilylpropyl isocyanate, ethyldiethoxysilylpropyl isocyanate, methyldimethoxysilyl-butyl isocyanate, trimethoxysilylbutyl isocyanate, diethylmethoxysilyl butyl isocyanate, ethyldimethoxysilylbutyl isocyanate, methyldiethoxysilyl-butyl isocyanate, triethoxysilylbutyl isocyanate, diethyl-ethoxysilylbutyl isocyanate, ethyldiethoxysilylbutyl isocyanate, methyl-dimethoxysilylpentyl isocyanate, trimethoxysilylpentyl isocyanate, ethyldimethoxysilylpentyl isocyanate, methyldiethoxy-silylpentyl isocyanate, triethoxysilylpentyl isocyanate, diethylethoxysilylpentyl isocyanate, ethyldiethoxysilylpentyl isocyanate, methyldimethoxysilyl-hexyl isocyanate, trimethoxysilylpentyl isocyanate, ethyldiethoxysilylpentyl isocyanate, methyldimethoxysilylhexyl isocyanate, trimethoxysilylhexyl isocyanate, ethyldimethoxysilylhexyl isocyanate, methyldiethoxysilylhexyl isocyanate, triethoxysilylehexyl isocyanate, or ethyldiethoxysilylhexyl isocyanate to substitute for Braun’s isocyanatomethyldimethoxy-methylsilane in Braun’s polymer mixture. The proposed modification would read on wherein silyl modified organic polymer (a) is a polyether terminated with (R)m(Y1)3-m-Si-D-[NH-C(=O)]k- where each R is a hydrolysable group, each Y1 is an alkyl group containing from 1 to 2 carbons, m is 1, 2, or 3, D is a divalent C2-6 alkylene group, and k is 1 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because Braun teaches that the methyldimethoxysilylmethyl isocyanate is an isocyanate-containing compound (10:33-34), that the curable composition is obtainable by reaction of at least one isocyanate-reactive compound with at least one first isocyanate-containing silane compound and with at least one second isocyanate-containing compound, whereby the reaction product includes at least two polymeric compounds, polymer A and polymer B, each having at least one reactive silyl group (7:65-8:4), and that the isocyanate-containing compound is optionally (10:33) methyl-dimethoxysilylethyl isocyanate (10:38-39), trimethoxysilylethyl isocyanate (10:39-40), ethyl-dimethoxysilylethyl isocyanate (10:40), methyldiethoxysilylethyl isocyanate (10:40-41), triethoxy-silylethyl isocyanate (10:41), ethyldiethoxysilylethyl isocyanate (10:42), methyldimethoxy-silyl-propyl isocyanate (10:42-43), trimethoxysilylpropyl isocyanate (10:43), ethyldimethoxy-silylpropyl isocyanate (10:43-44), methyldiethoxysilyl-propyl isocyanate (10:44-45), triethoxysilylpropyl isocyanate (10:45), ethyldiethoxysilylpropyl isocyanate (10:46), methyldimethoxysilyl-butyl isocyanate (10:46-47), trimethoxysilylbutyl isocyanate (10:47), diethylmethoxysilyl butyl isocyanate (10:48), ethyldimethoxysilylbutyl isocyanate (10:49), methyldiethoxysilyl-butyl isocyanate (10:49-50), triethoxysilylbutyl isocyanate (10:50), diethyl-ethoxysilylbutyl isocyanate (10:50-51), ethyldiethoxysilylbutyl isocyanate (10:51-52), methyl-dimethoxysilylpentyl isocyanate (10:52), trimethoxysilylpentyl isocyanate (10:53), ethyldimethoxysilylpentyl isocyanate (10:54), methyldiethoxy-silylpentyl isocyanate (10:54-55), triethoxysilylpentyl isocyanate (10:55-56), diethylethoxysilylpentyl isocyanate (10:56), ethyldiethoxysilylpentyl isocyanate (10:57), methyldimethoxysilyl-hexyl isocyanate (10:57-58), trimethoxysilylpentyl isocyanate (10:58), ethyldiethoxysilylpentyl isocyanate (10:58-59), methyldimethoxysilylhexyl isocyanate (10:59-60), trimethoxysilylhexyl isocyanate (10:60), ethyldimethoxysilylhexyl isocyanate (10:60-61), methyldiethoxysilylhexyl isocyanate (10:61), triethoxysilylehexyl isocyanate (10:62), or ethyldiethoxysilylhexyl isocyanate (10:62-63). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 7, Braun teaches that the polymer mixture is prepared (32:14-30) by drying 140 g or 12 mmol of polypropylene glycol in vacuo at 80° C, adding 0.3 g of dibutyltin dilaurate under a nitrogen atmosphere at 80° C, adding 0.7 g or 7 mmol of n-butyl isocyanate to this, stirring for 1 hour, mixing this with 3.7 g or 21 mmol of isocyanatomethyldimethoxy-methylsilane, stirring for 1 hour more at 80° C, cooling and mixing the resulting prepolymer mixture with 3.0 g of N-trimethoxysilylmethyl-O-methylcarbamate, 5.3 g of a mixture of 70 wt % bis(1,2,2,6,6-pentamethyl-4-piperidyl) sebacate and 30 wt% methyl-1,2,2,6,6-penta-methyl-4-piperidyl sebacate, storing the product moisture-tight in a glass container under a nitrogen atmosphere before being processed further to the curable composition (29:15-30), that the methyldimethoxysilylmethyl isocyanate is an isocyanate-containing compound (10:33-34), and that the curable composition is obtainable by reaction of at least one isocyanate-reactive compound with at least one first isocyanate-containing silane compound and with at least one second isocyanate-containing compound, whereby the reaction product includes at least two polymeric compounds, polymer A and polymer B, each having at least one reactive silyl group (7:65-8:4), which reads on wherein k is 1. Braun teaches that the polymer A is a compound of general formula
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42
752
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Greyscale
, in which X1, X2, X3, X1’, X2’, X3’ are alkyl residues with 1 to 4 carbon atoms, or an OR1 residue, where R1 is an alkyl residue with 1 to 4 carbon atoms or an acyl residue with 1 to 4 carbon atoms, T and T’ independently of one another are a methylene, ethylene, propylene, or butylene residue, Z, Z’ independently of one another are a carbamate or an oxygen atom, [Y] is an organic basic structure (3:60-4:21), wherein at least one of the residues X1, X2, X3, X1’, X2’, or X3’ in the general formula represents a hydrolysable residue (4:22-25), wherein the organic basic structures (Y) (5:21-22) are polypropylene glycol (5:42-50), which suggests using an ethylene, propylene, or butylene residue to substitute for the methylene residue bonded to the silyl group in Braun’s polymer produced from Braun’s polymer mixture, and which suggests using an oxygen atom to substitute for the carbamate group in Braun’s polymer produced from Braun’s polymer mixture, which would read on wherein k is 0 as claimed.
Braun does not teach a specific embodiment wherein k is 0. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Braun’s ethylene, propylene, or butylene residue to substitute for the methylene residue bonded to the silyl group in Braun’s polymer produced from Braun’s polymer mixture, and to use an oxygen atom to substitute for the carbamate group in Braun’s polymer produced from Braun’s polymer mixture. The proposed modification would read on wherein k is 0 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because Braun teaches that the polymer mixture is prepared (32:14-30) by drying 140 g or 12 mmol of polypropylene glycol in vacuo at 80° C, adding 0.3 g of dibutyltin dilaurate under a nitrogen atmosphere at 80° C, adding 0.7 g or 7 mmol of n-butyl isocyanate to this, stirring for 1 hour, mixing this with 3.7 g or 21 mmol of isocyanatomethyldimethoxy-methylsilane, stirring for 1 hour more at 80° C, cooling and mixing the resulting prepolymer mixture with 3.0 g of N-trimethoxysilylmethyl-O-methylcarbamate, 5.3 g of a mixture of 70 wt % bis(1,2,2,6,6-pentamethyl-4-piperidyl) sebacate and 30 wt% methyl-1,2,2,6,6-penta-methyl-4-piperidyl sebacate, storing the product moisture-tight in a glass container under a nitrogen atmosphere before being processed further to the curable composition (29:15-30), that the methyldimethoxysilylmethyl isocyanate is an isocyanate-containing compound (10:33-34), that the curable composition is obtainable by reaction of at least one isocyanate-reactive compound with at least one first isocyanate-containing silane compound and with at least one second isocyanate-containing compound, whereby the reaction product includes at least two polymeric compounds, polymer A and polymer B, each having at least one reactive silyl group (7:65-8:4), and that the polymer A is a compound of general formula
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42
752
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Greyscale
, in which X1, X2, X3, X1’, X2’, X3’ are alkyl residues with 1 to 4 carbon atoms, or an OR1 residue, where R1 is an alkyl residue with 1 to 4 carbon atoms or an acyl residue with 1 to 4 carbon atoms, T and T’ independently of one another are a methylene, ethylene, propylene, or butylene residue, Z, Z’ independently of one another are a carbamate or an oxygen atom, [Y] is an organic basic structure (3:60-4:21), wherein at least one of the residues X1, X2, X3, X1’, X2’, or X3’ in the general formula represents a hydrolysable residue (4:22-25), wherein the organic basic structures (Y) (5:21-22) are polypropylene glycol (5:42-50), which suggests using an ethylene, propylene, or butylene residue to substitute for the methylene residue bonded to the silyl group in Braun’s polymer produced from Braun’s polymer mixture, and which suggests using an oxygen atom to substitute for the carbamate group in Braun’s polymer produced from Braun’s polymer mixture. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 8, the Office recognizes that all of the claimed physical properties are not positively taught by Braun, namely that the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claim 1 is gunnable and/or self-levelling. However, Braun renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claims 1, 4, 6, and 7 as explained above. Furthermore, the specification of the instant application recites that the ingredients and their amounts are designed to provide a low modulus and high extension sealant, adhesive and/or coating composition [0067], that low modulus silicone sealant compositions are preferably "gunnable" i.e. they have a suitable extrusion capability i.e. a minimum extrusion rate of 10 ml/min as measured by ASTM C1183-04, alternatively 10 to 1000 mL/min, and alternatively 100 to 1000 mL/min [0067], that a sealant composition as hereinbefore described may be a gunnable sealant composition [0069], that in one alternative, a sealant composition as hereinbefore described may be a self- levelling highway sealant [0072], that a self-levelling sealant composition means it is "self-levelling" when extruded from a storage container into a horizontal joint [0083], and that is, the sealant will flow under the force of gravity sufficiently to provide intimate contact between the sealant and the sides of the joint space [0072]. Therefore, the claimed physical properties would naturally arise from the one-part condensation curable silyl modified polymer-based sealant composition that is rendered obvious by Braun. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 9, the Office recognizes that all of the claimed physical properties are not positively taught by Braun, namely that the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claim 1 is capable of being applied as a paste to a joint between two adjacent substrate surfaces where it can be worked, prior to curing, to provide a smooth surfaced mass which will remain in its allotted position until it has cured into an elastomeric body adherent to the adjacent substrate surfaces. However, Braun renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claims 1, 4, 6, and 7 as explained above. Furthermore, the specification of the instant application recites that gunnable means applied by means of pushing uncured sealant out of a sealant tube using a sealant gun [0007], that the ingredients and their amounts are designed to provide a low modulus and high extension sealant, adhesive and/or coating composition [0067], that low modulus silicone sealant compositions are preferably "gunnable" i.e. they have a suitable extrusion capability i.e. a minimum extrusion rate of 10 ml/min as measured by ASTM C1183-04, alternatively 10 to 1000 mL/min, and alternatively 100 to 1000 mL/min [0067], and that a sealant composition as hereinbefore described may be a gunnable sealant composition [0069]. Therefore, the claimed physical properties would naturally arise from the one-part condensation curable silyl modified polymer-based sealant composition that is rendered obvious by Braun. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Claims 1, 4, 8, 9, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (JP 2014-043519 A, machine translation in English used for citation).
Regarding claim 1, Watanabe teaches a room-temperature moisture-curable composition [0009], wherein the curable composition is a one pack type [0187], wherein the curable composition comprises an organic polymer containing 0.8 or more crosslinkable silicon groups on average in molecule and having a non-polysiloxane main chain [0010], wherein the organic polymer is one or more selected from the group consisting of a polyoxyalkylene polymer containing 0.8 or more crosslinkable silicon groups on average, a saturated hydrocarbon-based polymer containing 0.8 or more crosslinkable silicon groups on average, a (meth)acrylate ester polymer containing 0.8 or more crosslinkable silicon groups on average [0018], and polyester-based polymers [0041], wherein the crosslinkable silicon group contains a trimethoxysilyl group [0019], or is a group which has a hydroxyl group or a hydrolysable group bonded to a silicon atom, or is a group represented by the following general formula [0043]
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[0044], where in the above formula, R51 represents an alkyl group having 1 to 20 carbon atoms, X represents a hydroxyl group or a hydrolysable group, d represents 0, 1, 2,or 3, e represents 0, 1, or 2, p represents an integer of 0 to 19 and d + (sum of e) ≥ 1 is satisfied [0045], or is a group represented by the following general formula [0048]
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[0049], where in the formula, R51 and X are as defined above, and d is an integer of 1, 2, or 3 [0050], wherein R51 is methyl or ethyl [0051], or is a trialkoxysilyl group, such as a trimethoxysilyl group and a triethoxysilyl group, or a dialkoxysilyl group, such as a methyldimethoxysilyl group and a methyldioethoxysilyl group [0053], wherein the number of crosslinkable silicon groups contained in the organic polymer is 0.8 or more, preferably 1.1 to 5 on average in one molecule of the polymer [0057], which reads on a one-part condensation curable silyl modified polymer-based sealant composition comprising (a) a silyl modified organic polymer having 0.8 or more (R)m(Y1)3-m-Si- groups per molecule where each R is hydroxyl or a hydrolysable group, each Y1 is an alkyl group containing from 1 to 2 carbons, and m is 1, 2, or 3, which organic polymer is selected from polyethers, hydrocarbon polymers, acrylate polymers, and polyesters. Watanabe teaches that the curable composition further a filler [0030], which reads on the composition further comprising (b) a reinforcing filler as claimed. Watanabe teaches that the curable composition may contain, if necessary, substances such as a plasticizer [0172, 0183], which optionally reads on the composition further comprising (c) one or more plasticizers as claimed. Watanabe teaches that the curable composition further comprises at least one titanium catalyst selected from the group consisting of a titanium chelate represented by the following formula [0010]
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[0011] and a titanium chelate represented by the following formula [0010]
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[0013], where in the formula, n pieces of R1 are each independently a substituted or unsubstituted hydrocarbyl group having 1 to 20 carbons, 4-n pieces of R2 are each independently hydrogen or a substituted or unsubstituted hydrocarbyl group having 1 to 20 carbons, 4-n pieces of R3 and 4-n pieces of R4 are each independently a substituted or unsubstituted hydrocarbyl group having 1 to 20 carbons, m is 0 or 1, and n is 0, 1, 2, or 3 [0012], where in the formula, R5 is substituted or unsubstituted divalent hydrocarbyl group having 1 to 20 carbons, two R6 are each independently hydrogen or a substituted or unsubstituted hydrocarbyl group having 1 to 20 carbons, two R7 and two R8 are each independently a substituted or unsubstituted hydrocarbyl group having 1 to 20 carbons, and m is 0 or 1 [0014], which reads on the composition further comprising (d) a catalyst comprising (i) a titanate. Watanabe teaches that the curable composition further comprises one or more zinc-based catalysts selected from a zinc-based compound represented by the following formula [0010, 0101] Zn – (OCOR9) n [0015, 0102], where in the formula, n R9 are each a hydrocarbyl group having 1 to 20 carbons, and n is 1 or 2 [0015, 0102], which reads on the (d) catalyst further comprising (ii) a metal carboxylate salt selected from zinc (II) carboxylates. Watanabe teaches that the blending ratio of the titanium-based catalyst to the zinc-based catalyst is 1.0:0.1-1.0:10 in terms of mass ratio [0010, 0039, 0109], preferably 1.0:0.1-1.0:5.0, and more preferably 1.0:0.2-1.0:2.0 [0109], which reads on wherein the titanate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of less than or greater than 1:1.
Watanabe does not teach with sufficient specificity that the silyl modified organic polymer has at least two (R)m(Y1)3-m-Si- groups per molecule. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the number of Watanabe’s crosslinkable silicon groups on average in one molecule of Watanabe’s organic polymer to be 2 or more. The proposed modification would read on the silyl modified organic polymer has at least two (R)m(Y1)3-m-Si- groups per molecule as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing strength, elongation, curability, and/or rubber elastic behavior of Watanabe’s composition, and/or for minimizing elastic modulus of Watanabe’s composition because Watanabe teaches that in order to obtain a rubber-like cured product having a high strength, a high elongation, and a low elastic modulus, the number of crosslinkable silicon groups contained in the organic polymer is 0.8 or more, preferably 1.1 to 5 on average in one molecule of the polymer [0057], and that when the number of crosslinkable silicon groups contained in the molecule is less than 0.8 on average, the curability becomes insufficient, and it becomes difficult to exhibit good rubber elastic behavior [0057].
Watanabe does not teach a specific embodiment of the composition further comprising (c) one or more plasticizers. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Watanabe’s plasticizer to modify Watanabe’s curable composition. The proposed modification would read on the composition further comprising (c) one or more plasticizers as claimed. One of ordinary skill in the art would have been motivated to do so because Watanabe teaches that the curable composition may contain, if necessary, substances such as a plasticizer [0172], and that the plasticizer is added for the purpose of enhancing the elongation property after curing or making it possible to lower the modulus [0183].
Watanabe does not teach with sufficient specificity that the titanate and/or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of 1:4 to 4:1. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the blending ratio of Watanabe’s titanium-based catalyst to Watanabe’s zinc-based catalyst to be 1:4 to 4:1 in terms of molar ratio. The proposed modification would read on the titanate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of 1:4 to 4:1 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an ability of Watanabe’s titanium catalyst and zinc catalyst to catalyze curing of Watanabe’s curable composition because Watanabe teaches that the blending ratio of the titanium-based catalyst to the zinc-based catalyst is 1.0:0.1-1.0:10 in terms of mass ratio [0010, 0039, 0109], preferably 1.0:0.1-1.0:5.0, and more preferably 1.0:0.2-1.0:2.0 [0109], and that in the curable composition, the titanium catalyst and the zinc catalyst are used as curing catalysts [0110], which means that the blending ratio of Watanabe’s titanium-based catalyst to Watanabe’s zinc-based catalyst in terms of molar ratio would have affected an ability of Watanabe’s titanium catalyst and zinc catalyst to catalyze curing of Watanabe’s curable composition.
Regarding claims 4 and 16, Watanabe teaches that the curable composition further comprises one or more zinc-based catalysts selected from a zinc-based compound represented by the following formula [0010, 0101] Zn – (OCOR9) n [0015, 0102], where in the formula, n R9 are each a hydrocarbyl group having 1 to 20 carbons, and n is 1 or 2 [0015, 0102], and that specific examples of the Zn compound represented by the above formula includes Zn 2-ethylhexanoic acid, Zn neodecanoates, and Zn stearates [0105], which optionally reads on wherein the metal carboxylate salt (ii) is selected from zinc ethylhexanoate, zinc stearate, and zinc neadecanoate as claimed.
Watanabe does not teach a specific embodiment wherein the metal carboxylate salt (ii) is selected from the claimed group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to selected Watanabe’s Zn 2-ethylhexanoic acid, Zn neodecanoates, or Zn stearates as Watanabe’s one or more zinc-based catalysts. The proposed modification would read on the metal carboxylate salt (ii) is selected from zinc ethylhexanoate, zinc stearate, and zinc neadecanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of zinc-based catalyst that is suitable for Watanabe’s curable composition or because it would have been obvious to try with a reasonable expectation of success because Watanabe teaches that the curable composition further comprises one or more zinc-based catalysts selected from a zinc-based compound represented by the following formula [0010, 0101] Zn – (OCOR9) n [0015, 0102], where in the formula, n R9 are each a hydrocarbyl group having 1 to 20 carbons, and n is 1 or 2 [0015, 0102], and that specific examples of the Zn compound represented by the above formula includes Zn 2-ethylhexanoic acid, Zn neodecanoates, and Zn stearates [0105]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 8, the Office recognizes that all of the claimed physical properties are not positively taught by Watanabe, namely that the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claim 1 is gunnable and/or self-levelling. However, Watanabe renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claims 1, 4, and 16 as explained above. Furthermore, the specification of the instant application recites that the ingredients and their amounts are designed to provide a low modulus and high extension sealant, adhesive and/or coating composition [0067], that low modulus silicone sealant compositions are preferably "gunnable" i.e. they have a suitable extrusion capability i.e. a minimum extrusion rate of 10 ml/min as measured by ASTM C1183-04, alternatively 10 to 1000 mL/min, and alternatively 100 to 1000 mL/min [0067], that a sealant composition as hereinbefore described may be a gunnable sealant composition [0069], that in one alternative, a sealant composition as hereinbefore described may be a self- levelling highway sealant [0072], that a self-levelling sealant composition means it is "self-levelling" when extruded from a storage container into a horizontal joint [0083], and that is, the sealant will flow under the force of gravity sufficiently to provide intimate contact between the sealant and the sides of the joint space [0072]. Therefore, the claimed physical properties would naturally arise from the one-part condensation curable silyl modified polymer-based sealant composition that is rendered obvious by Watanabe. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 9, the Office recognizes that all of the claimed physical properties are not positively taught by Watanabe, namely that the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claim 1 is capable of being applied as a paste to a joint between two adjacent substrate surfaces where it can be worked, prior to curing, to provide a smooth surfaced mass which will remain in its allotted position until it has cured into an elastomeric body adherent to the adjacent substrate surfaces. However, Watanabe renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the one-part condensation curable silyl modified polymer-based sealant composition in accordance with claims 1, 4, and 16 as explained above. Furthermore, the specification of the instant application recites that gunnable means applied by means of pushing uncured sealant out of a sealant tube using a sealant gun [0007], that the ingredients and their amounts are designed to provide a low modulus and high extension sealant, adhesive and/or coating composition [0067], that low modulus silicone sealant compositions are preferably "gunnable" i.e. they have a suitable extrusion capability i.e. a minimum extrusion rate of 10 ml/min as measured by ASTM C1183-04, alternatively 10 to 1000 mL/min, and alternatively 100 to 1000 mL/min [0067], and that a sealant composition as hereinbefore described may be a gunnable sealant composition [0069]. Therefore, the claimed physical properties would naturally arise from the one-part condensation curable silyl modified polymer-based sealant composition that is rendered obvious by Watanabe. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 17, Watanabe teaches that the curable composition further comprises one or more zinc-based catalysts selected from a zinc-based compound represented by the following formula [0010, 0101] Zn – (OCOR9) n [0015, 0102], where in the formula, n R9 are each a hydrocarbyl group having 1 to 20 carbons, and n is 1 or 2 [0015, 0102], and that specific examples of the Zn compound represented by the above formula includes Zn 2-ethylhexanoic acid [0105], which optionally reads on wherein the metal carboxylate salt (ii) is zinc ethylhexanoate as claimed.
Watanabe does not teach a specific embodiment wherein the metal carboxylate salt (ii) is zinc ethylhexanoate. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to selected Watanabe’s Zn 2-ethylhexanoic acid as Watanabe’s one or more zinc-based catalysts. The proposed modification would read on the metal carboxylate salt (ii) is zinc ethylhexanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of zinc-based catalyst that is suitable for Watanabe’s curable composition or because it would have been obvious to try with a reasonable expectation of success because Watanabe teaches that the curable composition further comprises one or more zinc-based catalysts selected from a zinc-based compound represented by the following formula [0010, 0101] Zn – (OCOR9) n [0015, 0102], where in the formula, n R9 are each a hydrocarbyl group having 1 to 20 carbons, and n is 1 or 2 [0015, 0102], and that specific examples of the Zn compound represented by the above formula includes Zn 2-ethylhexanoic acid [0105]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Response to Arguments
Applicant's arguments filed 10/08/2025 have been fully considered but they are not persuasive. In response to the applicant’s argument that the Examiner has not established a proper case of prima facie obviousness because Braun fails to provide sufficient specificity to arrive at Applicant’s claimed invention and that this is especially true for Applicant’s claimed molar ratio as it relates to the specific catalysts claimed (p. 6), before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a mixture of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and Braun’s bismuth tris-2-ethylhexanoate to substitute for Braun’s dibutyltin dilaurate in Braun’s polymer mixture in Braun’s curable composition, and to optimize the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate to be from 0.25 moles to 4 moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate. The proposed modification would read on the one-part condensation curable silyl modified polymer-based sealant composition further comprising (d) a catalyst comprising (i) a titanate or zirconate and (ii) a metal carboxylate salt selected from the group consisting of bismuth (III) carboxylates, wherein the titanate or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of 1:4 to 4:1 as claimed, wherein the metal carboxylate salt (ii) is selected from bismuth ethylhexanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying acceleration of silanol condensation in Braun’s curable composition, for modifying control of the curing rate of Braun’s curable composition, and for optimizing an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition because Braun teaches that the curable composition comprises a polymer mixture (32:14-30), that the polymer mixture is prepared (32:14-30) using dibutyltin dilaurate (29:15-30), that the dibutyltin dilaurate (19:56) is a suitable catalyst (19:54) to promote crosslinking and/or control the curing rate (19:39-40), that the catalyst optionally comprises a catalyst known for accelerated silanol condensation (19:59-63) that is isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate (19:64-67), that the catalyst optionally comprises a catalyst to control the curing rate of the curable composition (20:15-16) that is bismuth tris-2-ethylhexanoate (20:24-25), that the catalyst may be used alone or as a mixture of two or more of the catalysts (20:8-11), that mixtures of one or more catalysts from one or more of the aforementioned groups may preferably also be used as catalysts (20:48-51), and that the preparation may contain up to 5 wt % of such catalysts in the total amount (26:13-15), which means that the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate in moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate would have affected an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition.
Applicant’s arguments, see p. 6, filed 10/08/2025, with respect to new claims 16 and 17 are responded to by the new grounds of rejection that is set forth in this Office action.
In response to the applicant’s argument that Applicant’s inventive examples show that, even if the content of catalyst is within the general wt.% range disclosed by Braun, the technical effect cannot be achieved without including Applicant’s claimed combination of components (i) and (ii) within the specified molar ratio range (p. 6), the applicant appears to be arguing unexpected results. The applicant’s arguments of unexpected results are not persuasive because the applicant’s results in the specification of the instant application are not commensurate in scope with the claimed invention because claim 1 does not limit the amounts of the components (a), (b), (c), and (d) in the composition, does not limit the species of reinforcing filler, does not limit the species of plasticizers, limits the polymer to having at least two groups of a formula, limit the polymer to being selected from a group of organic polymers, limits the catalyst to comprising components (i) and (ii), limits (i) to being a titanate and/or zirconate, limits (ii) to being a metal carboxylate salt selected from zinc (II) carboxylates and bismuth (III) carboxylates, limits the molar ratio of (i) and (ii) to being 1:4 to 4:1, and does not exclude the composition from further comprising other ingredients. In contrast, the results in the specification of the instant application comprise a very narrow range of amounts of the components (a), (b), (c), and (d) in the composition, comprise three species of the filler, comprise one species of the plasticizer, comprise two species of the polymer, comprise one species of titanate, do not comprise a zirconate, comprise one species of zinc carboxylate and/or one species of bismuth carboxylate, have a molar ratio of (i) and (ii) that is 2:1, and comprise five ingredients that are not recited in claim 1 specification p. 22, 24). The applicant did not show that the results of the examples in the specification of the instant application would occur over the entire scope of claim 1 regardless of the amounts of the components (a), (b), (c), and (d) in the composition, regardless of the species of reinforcing filler, regardless of the species of plasticizers, regardless of the groups in the polymer, regardless of the species of organic polymer, regardless of whether component (i) is a titanate and/or zirconate, regardless of whether the metal carboxylate salt is a zinc (II) carboxylate or a bismuth (III) carboxylate, for any molar ratio of (i) and (ii) within 1:4 to 4:1, and regardless of whether the composition further comprises other ingredients. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d))." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP 716.02(d)). The applicant did not compare a sufficient number of examples so that one of ordinary skill in the art could determine a trend in the exemplified data that would allow the artisan to reasonably extend the probative value thereof over the entire scope of claim 1. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof (MPEP 716.02(d)(I)). The applicant did compare a sufficient number of results within the scope of claim 1 with a sufficient number of results outside the scope of claim 1, and the applicant did not shown the criticality of the claimed molar ratio of 1:4 to 4:1. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d)(II)).
In response to the applicant’s argument that Braun does not disclose or recognize such specific combination as a result-effective variable, and that in the absence of such recognition, the “obvious to try” rationale, for example, is not a proper basis for an obviousness determination (p. 6), before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a mixture of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and Braun’s bismuth tris-2-ethylhexanoate to substitute for Braun’s dibutyltin dilaurate in Braun’s polymer mixture in Braun’s curable composition, and to optimize the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate to be from 0.25 moles to 4 moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate. The proposed modification would read on the one-part condensation curable silyl modified polymer-based sealant composition further comprising (d) a catalyst comprising (i) a titanate or zirconate and (ii) a metal carboxylate salt selected from the group consisting of bismuth (III) carboxylates, wherein the titanate or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of 1:4 to 4:1 as claimed, wherein the metal carboxylate salt (ii) is selected from bismuth ethylhexanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying acceleration of silanol condensation in Braun’s curable composition, for modifying control of the curing rate of Braun’s curable composition, and for optimizing an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition because Braun teaches that the curable composition comprises a polymer mixture (32:14-30), that the polymer mixture is prepared (32:14-30) using dibutyltin dilaurate (29:15-30), that the dibutyltin dilaurate (19:56) is a suitable catalyst (19:54) to promote crosslinking and/or control the curing rate (19:39-40), that the catalyst optionally comprises a catalyst known for accelerated silanol condensation (19:59-63) that is isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate (19:64-67), that the catalyst optionally comprises a catalyst to control the curing rate of the curable composition (20:15-16) that is bismuth tris-2-ethylhexanoate (20:24-25), that the catalyst may be used alone or as a mixture of two or more of the catalysts (20:8-11), that mixtures of one or more catalysts from one or more of the aforementioned groups may preferably also be used as catalysts (20:48-51), and that the preparation may contain up to 5 wt % of such catalysts in the total amount (26:13-15), which means that the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate in moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate would have affected an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition.
In response to the applicant’s argument that not only would one of skill in the art have no objective reason to modify Braun as suggested by the Examiner, but even the asserted modification fails to arrive at the claimed invention (p. 7), before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a mixture of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and Braun’s bismuth tris-2-ethylhexanoate to substitute for Braun’s dibutyltin dilaurate in Braun’s polymer mixture in Braun’s curable composition, and to optimize the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate to be from 0.25 moles to 4 moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate. The proposed modification would read on the one-part condensation curable silyl modified polymer-based sealant composition further comprising (d) a catalyst comprising (i) a titanate or zirconate and (ii) a metal carboxylate salt selected from the group consisting of bismuth (III) carboxylates, wherein the titanate or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of 1:4 to 4:1 as claimed, wherein the metal carboxylate salt (ii) is selected from bismuth ethylhexanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying acceleration of silanol condensation in Braun’s curable composition, for modifying control of the curing rate of Braun’s curable composition, and for optimizing an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition because Braun teaches that the curable composition comprises a polymer mixture (32:14-30), that the polymer mixture is prepared (32:14-30) using dibutyltin dilaurate (29:15-30), that the dibutyltin dilaurate (19:56) is a suitable catalyst (19:54) to promote crosslinking and/or control the curing rate (19:39-40), that the catalyst optionally comprises a catalyst known for accelerated silanol condensation (19:59-63) that is isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate (19:64-67), that the catalyst optionally comprises a catalyst to control the curing rate of the curable composition (20:15-16) that is bismuth tris-2-ethylhexanoate (20:24-25), that the catalyst may be used alone or as a mixture of two or more of the catalysts (20:8-11), that mixtures of one or more catalysts from one or more of the aforementioned groups may preferably also be used as catalysts (20:48-51), and that the preparation may contain up to 5 wt % of such catalysts in the total amount (26:13-15), which means that the amount of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and the amount of Braun’s bismuth tris-2-ethylhexanoate in moles of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate per 1 mole of Braun’s bismuth tris-2-ethylhexanoate would have affected an extent of acceleration of silanol condensation and an extent of control of the curing rate of Braun’s curable composition.
In response to the applicant’s argument that the claimed invention is not predictable based on a modification of Braun (p. 7), one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification of Braun because Braun teaches that the catalyst optionally comprises (19:59-63) isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate (19:64-67), that the catalyst optionally comprises (20:15-16) bismuth tris-2-ethylhexanoate (20:24-25), that the catalyst may be used alone or as a mixture of two or more of the catalysts (20:8-11), that mixtures of one or more catalysts from one or more of the aforementioned groups may preferably also be used as catalysts (20:48-51), and that the preparation may contain up to 5 wt % of such catalysts in the total amount (26:13-15), which suggests using a mixture of Braun’s isopropyl triisostearoyl titanate, isopropyl tris(dioctylpyrophosphate) titanate, bis(dioctylpyrophosphate) oxyacetate titanate, tetrabutyl zirconate, or tetraisobutyl zirconate and Braun’s bismuth tris-2-ethylhexanoate to substitute for Braun’s dibutyltin dilaurate in Braun’s polymer mixture in Braun’s curable composition, which suggests the one-part condensation curable silyl modified polymer-based sealant composition further comprising (d) a catalyst comprising (i) a titanate or zirconate and (ii) a metal carboxylate salt selected from bismuth (III) carboxylates, wherein the titanate or zirconate (i) and the metal carboxylate salt (ii) of catalyst (d) is provided in a molar ratio of greater than 0:1 and less than 1:0, which encompasses a molar ratio of 1:4 to 4:1.
In response to the applicant’s argument that hindsight reasoning is not permitted (p. 7), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The Office’s judgement on obviousness in the instant application takes into account only the teachings of Braun and knowledge which was within the level of ordinary skill before the effective filing date of the claimed invention.
In response to the applicant’s argument that Applicant’s claimed invention is also associated with new and unexpected results based on examples 4 and 5 and comparative examples 1, 2, and 3 (p. 7-8), the applicant’s arguments of unexpected results are not persuasive because examples 4 and 5 are not commensurate in scope with the claimed invention because claim 1 does not limit the amounts of the components (a), (b), (c), and (d) in the composition, does not limit the species of reinforcing filler, does not limit the species of plasticizers, limits the polymer to having at least two groups of a formula, limit the polymer to being selected from a group of organic polymers, limits the catalyst to comprising components (i) and (ii), limits (i) to being a titanate and/or zirconate, limits (ii) to being a metal carboxylate salt selected from zinc (II) carboxylates and bismuth (III) carboxylates, limits the molar ratio of (i) and (ii) to being 1:4 to 4:1, and does not exclude the composition from further comprising other ingredients. In contrast, examples 4 and 5 comprise a very narrow range of amounts of the components (a), (b), (c), and (d) in the composition, comprise three species of the filler, comprise one species of the plasticizer, comprise two species of the polymer, comprise one species of titanate, do not comprise a zirconate, comprise one species of zinc carboxylate and/or one species of bismuth carboxylate, have a molar ratio of (i) and (ii) that is 2:1, and comprise five ingredients that are not recited in claim 1 specification p. 22, 24). The applicant did not show that the results of examples 4 and 5 would occur over the entire scope of claim 1 regardless of the amounts of the components (a), (b), (c), and (d) in the composition, regardless of the species of reinforcing filler, regardless of the species of plasticizers, regardless of the groups in the polymer, regardless of the species of organic polymer, regardless of whether component (i) is a titanate and/or zirconate, regardless of whether the metal carboxylate salt is a zinc (II) carboxylate or a bismuth (III) carboxylate, for any molar ratio of (i) and (ii) within 1:4 to 4:1, and regardless of whether the composition further comprises other ingredients. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d))." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP 716.02(d)). The applicant did not compare a sufficient number of examples so that one of ordinary skill in the art could determine a trend in the exemplified data that would allow the artisan to reasonably extend the probative value thereof over the entire scope of claim 1. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof (MPEP 716.02(d)(I)). The applicant did compare a sufficient number of results within the scope of claim 1 with a sufficient number of results outside the scope of claim 1, and the applicant did not shown the criticality of the claimed molar ratio of 1:4 to 4:1. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d)(II)).
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
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/DAVID T KARST/ Primary Examiner, Art Unit 1767
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