DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendments filed July 3, 2023 have been entered. Claims 1-2, 5-7, and 9-22 remain pending in the application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 5-7, 9-14, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Davio et al (US 2011/0198779 A1) in view of Sakamoto et al (US 2006/0074183 A1).
Regarding Claims 1-2, 5, and 16-17: Davio teaches a one-part (para. 0092) room temperature vulcanisable (para. 0091) silicone composition comprising an organopolysiloxane which reads on the general structures of instant claims 1, 2, and 16 (para. 0021-0022 and 0025), wherein the viscosity of the polymer is at most 20,000,000 mPa·s (para. 0028). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use organopolysiloxane with an overlapping viscosity and would have been motivated to use one with a viscosity on the low end of the range for better workability.
Davio further teaches silanes with 2 or 3 functional groups and combinations thereof (para. 0044), which reads on components (c) and (f) of instant claim 1, and are included at a total of 2-10 wt% (para. 0049). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use di- and tri- functional silanes in overlapping amounts and would have been motivated to do so since Davio teaches these amounts are suitable for achieving an appropriate degree of crosslinking, in the case of tri-functional silanes, and reducing the modulus of the composition, in the case of di-functional silanes (para. 0086).
Davio further teaches a hydrophobically treated reinforcing filler (para. 0078), adhesion promoters (para. 0083), titanate or zirconate catalysts (para. 0061), and metal salts of carboxylic acids, such as ethylhexanoates of iron and zinc (para. 0061), wherein the carboxylic acid salts may act as co-catalysts with the titanate or zirconate catalyst (para. 0081).
Davio teaches that the filler is present at 5-500 parts per 100 parts of the organopolysiloxane and an extender (para. 0079). However, Davio is silent to the content of organopolysiloxane, so the content of filler based on the total weight of the composition is unknown. Davio is also silent to the amount of the adhesion promoter.
Sakamoto teaches a silicone composition comprising 100 parts of a reactive organopolysiloxane that reads on the structure of instant claim 1 (para. 0016), 1-20 parts of a silane with 2 or more hydrolyzable groups (para. 0037), 20-50 parts of a non-reactive diorganopolysiloxane (para. 0043), 0.1-10 parts of a catalyst (para. 0045), and 5-100 parts of a hydrophobically treated filler (para. 0047). Based on calculations, this corresponds to approximately 36-79% of the reactive organopolysiloxane, 0.3-13% of the silanes, and 3-45% of the filler. These overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use overlapping amounts of the organopolysiloxane, silanes and filler and would have been motivated to do so since Sakamoto teaches that the disclosed amount of silanes offers a balance between sufficient crosslinking without making an overly hard composition (para. 0037) and that the amount of filler is determined based on its intended purpose (para. 0047). In the instant case, a filler content on the higher end of the disclosed range would be preferred for a desirable degree of reinforcement. The amount of the reactive organopolysiloxane is determined based on the amounts of the other components; therefore, the amount included is based on the desired contributions of properties from the other components.
Sakamoto further teaches an example of a composition where an adhesion promoter is included at 0.78 wt% of the composition (para. 0052, 1 part gamma-glycidoxypropyltriethoxysilane per 128 parts of the rest of the composition). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the adhesion promoter in that amount because Sakamoto teaches that such an amount is sufficient to achieve the desired adhesion properties.
Sakamoto also teaches that the viscosity of the reactive organopolysiloxane is from 500-100,000 mPa·s (para. 0029), which is teaches the claimed range at a higher degree of specificity. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an organopolysiloxane with an overlapping viscosity and would have been motivated to do so since Sakamoto teaches this viscosity is acceptable to achieve good processability without sacrificing physical and mechanical strength (para. 0029).
Sakamoto and Davio are analogous art because they are directed toward the same field of endeavor, namely room temperature vulcanizable silicone compositions.
Regarding Claim 6: Davio teaches that the titanate/zirconate and the metal carboxylate salt can be used as co-catalysts. When using combinations of ingredients with similar purposes, such as combinations of catalysts, experimentation to find the optimal ratio to achieve desired curing kinetics/properties would be obvious to one of ordinary skill in the art. See MPEP 2144.05(II).
Regarding Claim 7: Not disclosed is the composition being gunnable and/or self-levelling. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. gunnability and self-levelling, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided 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.
Regarding Claim 9: Davio teaches that the composition will cure to an elastomeric body (para. 0013).
Regarding Claim 10: Not disclosed is a modulus of ≤ 0.4 MPa at 100% elongation. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a low modulus, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided 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.
Although Davio teaches examples of sealants with slightly higher modulus values than the claimed value (Table 1, 0.5 and 0.63 MPa), Davio also teaches a means of further reducing the modulus by introducing difunctional silanes (para. 0086), which are a claimed component in the instant invention. One of ordinary skill in the art at the time of filing would be motivated to try adding difunctional silanes to reduce the modulus to the claimed range and would have had a reasonable expectation of success in doing so.
Regarding Claim 11: Davio identifies staining as a problem to be solved (para. 0006) and uses highly compatible extenders to solve the problem (para. 0012), which would render the composition non-staining.
Regarding Claim 12: Davio teaches a process of making a one-part RTV composition, comprising mixing the ingredients together (para. 0092).
Regarding Claim 13: Davio teaches a sealant comprising the composition of claim 1, as set forth above (para. 0020), which is useful in construction fields (para. 0094, building structures).
Regarding Claim 14: Davio teaches a method of filling a space between two substrates, comprising providing the composition of claim 1, applying it to the space between substrates, and allowing the composition to cure (para. 0095).
Regarding Claims 18-19: Davio teaches tetra tertiary butyl titanate (para. 0063, tertiary butyl – tetrabutyltitanate) and ethylhexanoic acid zinc salt (para. 0061). Although Davio does not teach the specific ratio in which they are used, when using combinations of ingredients with similar purposes, such as combinations of catalysts, experimentation to find the optimal ratio to achieve desired curing kinetics/properties would be obvious to one of ordinary skill in the art. See MPEP 2144.05(II).
Regarding Claims 20-21: Davio teaches diisopropoxy-bisethylacetatotitanate (para. 0065, diisopropoxytitanium bis(ethylacetoacetate)) and ethylhexanoic acid zinc salt (para. 0061). Although Davio does not teach the specific ratio in which they are used, when using combinations of ingredients with similar purposes, such as combinations of catalysts, experimentation to find the optimal ratio to achieve desired curing kinetics/properties would be obvious to one of ordinary skill in the art. See MPEP 2144.05(II).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Davio in view of Sakamoto as applied to claim 14 above, and further in view of Dinkar et al (US 2014/0343202 A1).
Davio in view of Sakamoto teaches the method of claim 14, as set forth above. However, Davio is silent to the composition being applied through extrusion or a sealant gun.
Dinkar teaches a room temperature vulcanizable silicone sealant composition (para. 0010) which is applied to surfaces by extrusion through a nozzle (para. 0032, 0109). Dinkar and Davio are analogous art because they are directed toward the same field of endeavor, namely RTV silicone sealants.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the composition of Davio to a space between substrates using extrusion or a sealant gun because it is a common application method and produces less mess than applying with a knife or a spreader. Furthermore, Dinkar teaches a similar composition applied by extrusion, so Davio’s composition would also be suitable to be applied through extrusion.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Davio et al (US 2011/0198779 A1) in view of Sakamoto et al (US 2006/0074183 A1).
Davio teaches a one-part (para. 0092) room temperature vulcanisable (para. 0091) silicone composition comprising an organopolysiloxane which reads on the general structures of instant claims 1, 2, and 16 (para. 0021-0022 and 0025), wherein the viscosity of the polymer is at most 20,000,000 mPa·s (para. 0028). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use organopolysiloxane with an overlapping viscosity and would have been motivated to use one with a viscosity on the low end of the range for better workability.
Davio further teaches silanes with 2 or 3 functional groups and combinations thereof (para. 0044), which reads on components (c) and (f) of instant claim 1, and are included at a total of 2-10 wt% (para. 0049). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use di- and tri- functional silanes in overlapping amounts and would have been motivated to do so since Davio teaches these amounts are suitable for achieving an appropriate degree of crosslinking, in the case of tri-functional silanes, and reducing the modulus of the composition, in the case of di-functional silanes (para. 0086).
Davio further teaches a hydrophobically treated reinforcing filler (para. 0078), adhesion promoters (para. 0083), titanate or zirconate catalysts (para. 0061), and metal salts of carboxylic acids, such as ethylhexanoates of iron and zinc (para. 0061), wherein the carboxylic acid salts may act as co-catalysts with the titanate or zirconate catalyst (para. 0081).
Davio identifies staining as a problem to be solved (para. 0006) and uses highly compatible extenders to solve the problem (para. 0012), which would render the composition non-staining.
Davio teaches that the filler is present at 5-500 parts per 100 parts of the organopolysiloxane and an extender (para. 0079). However, Davio is silent to the content of organopolysiloxane, so the content of filler based on the total weight of the composition is unknown. Davio is also silent to the amount of the adhesion promoter.
Sakamoto teaches a silicone composition comprising 100 parts of a reactive organopolysiloxane that reads on the structure of instant claim 1 (para. 0016), 1-20 parts of a silane with 2 or more hydrolyzable groups (para. 0037), 20-50 parts of a non-reactive diorganopolysiloxane (para. 0043), 0.1-10 parts of a catalyst (para. 0045), and 5-100 parts of a hydrophobically treated filler (para. 0047). Based on calculations, this corresponds to approximately 36-79% of the reactive organopolysiloxane, 0.3-13% of the silanes, and 3-45% of the filler. These overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use overlapping amounts of the organopolysiloxane, silanes and filler and would have been motivated to do so since Sakamoto teaches that the disclosed amount of silanes offers a balance between sufficient crosslinking without making an overly hard composition (para. 0037) and that the amount of filler is determined based on its intended purpose (para. 0047). In the instant case, a filler content on the higher end of the disclosed range would be preferred for a desirable degree of reinforcement. The amount of the reactive organopolysiloxane is determined based on the amounts of the other components; therefore, the amount included is based on the desired contributions of properties from the other components.
Sakamoto further teaches an example of a composition where an adhesion promoter is included at 0.78 wt% of the composition (para. 0052, 1 part gamma-glycidoxypropyltriethoxysilane per 128 parts of the rest of the composition). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the adhesion promoter in that amount because Sakamoto teaches that such an amount is sufficient to achieve the desired adhesion properties.
Sakamoto also teaches that the viscosity of the reactive organopolysiloxane is from 500-100,000 mPa·s (para. 0029), which is teaches the claimed range at a higher degree of specificity. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an organopolysiloxane with an overlapping viscosity and would have been motivated to do so since Sakamoto teaches this viscosity is acceptable to achieve good processability without sacrificing physical and mechanical strength (para. 0029).
Sakamoto and Davio are analogous art because they are directed toward the same field of endeavor, namely room temperature vulcanizable silicone compositions.
Not disclosed is a modulus of ≤ 0.4 MPa at 100% elongation. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a low modulus, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided 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.
Although Davio teaches examples of sealants with slightly higher modulus values than the claimed value (Table 1, 0.5 and 0.63 MPa), Davio also teaches a means of further reducing the modulus by introducing difunctional silanes (para. 0086), which are a claimed component in the instant invention. One of ordinary skill in the art at the time of filing would be motivated to try adding difunctional silanes to reduce the modulus to the claimed range and would have had a reasonable expectation of success in doing so.
Response to Arguments
Applicant's arguments filed July 3, 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, applicant argues that the bleeding out of the antifouling agent of Sakamoto would render Davio, which seeks to prevent bleed-out of an extender, inoperable. Examiner disagrees. First, the extender of Davio and the antifouling agent of Sakamoto are not analogous to each other. Second, the combination of references used in the office action does not rely on either the extender or the antifouling agent. Rather, the combination is directed toward the amounts of various ingredients to utilize, as Davio is not specific. One of ordinary skill in the art would find the teachings of Sakamoto as a good starting point for that purpose.
In response to applicant’s argument regarding the selection of the catalyst, disclosed examples and preferred embodiments do not teach away from the broader disclosure. MPEP 2123. Regarding the claimed ratios of the titanate and the metal carboxylate, routine optimization of the amounts of ingredients does not render an invention non-obvious.
In response to applicant’s argument regarding unexpected results, applicant has not shown that the lowered modulus is indeed unexpected. The results indicate that the modulus follows a general trend of becoming lower with an increased amount of the metal carboxylate salt. Absent any evidence that the use of the metal carboxylate salt alone would not result in a low modulus, these results cannot be considered unexpected.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nie et al (US 2021/0238417 A1) teaches a polysiloxane composition.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767