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
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 9/11/2025.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/11/2025. In particular, claim 1 has been amended to limit (B) so that it comprises a component (B3) selected from an alkoxysilyl group-containing isocyanurate compound, an alkoxysilyl group-containing carbasilatrane compound, and an alkoxysilyl group-containing fumaric acid ester compound—none of which has a fluorine atom. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1, 2, 5-7, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tarumi (US 6,218,499) in view of Yoshia (US 4,980,396).
With respect to claims 1 and 5, Tarumi discloses a curable rubber composition comprising (A) a fluorinated organic silicon compound including a divalent fluorinated polyether group and silyl groups terminated with hydroxyl, (B) an organic silicon compound as a crosslinking agent, and (C) a condensation accelerator (abstract)—wherein (B) has at least two Si—OY groups where Y is a monovalent organic group (col. 7, lines 57-67). Tarumi discloses that a reinforcing filler such as fumed silica is added (col. 10, lines 31-32) and exemplifies compositions comprising a fumed silica treated on its surface trimethylsilyl (col. 12, lines 63-64).
Tarumi fails to disclose that the crosslinking agent (B) includes an alkoxysilyl group-containing isocyanurate compound.
Yoshida discloses a rubber coating composition comprising organo-polysiloxane having a perfluoroalkyl group, a silica, an isocyanurate-type organosilicon compound having formula
PNG
media_image1.png
142
302
media_image1.png
Greyscale
(abstract). Yoshida teaches that the isocyanurate-type organosilicon compound serves to improve the adhesion of the coating composition (col. 3, lines 27-31).
Given that both Tarumi and Yoshida are drawn to curable fluorinated organosilicon compounds which are cured with alkoxysilyl compounds, it would have been obvious to one of ordinary skill in the art to utilize the alkoxylsilyl-containing isocyanurate compound taught by Yoshida as part of the crosslinking agent taught by Tarumi.
With respect to claims 2 and 13, the fluorinated organic silicon compound has formula Z—R1—Rf—R1—Z, wherein R4 is a divalent fluorinated polyester, R1 is a substituted or unsubstiuted divalent hydrocarbon group which may include oxygen, nitrogen, silicon, and sulfur atoms which may contain an amide or sulfonamide bond, and Z can be
PNG
media_image2.png
110
118
media_image2.png
Greyscale
, wherein R2 and R3 are independently monovalent organic groups (col. 21, lines 30-64). Rf is of formula Rf is –CF-2O—, —CF2CF2O—, —CF2CF2CF2O—, or –C(CF3)FCF2O—, and q = 1-200 (col. 22, lines 50-65). Illustrative example of Rf includes
PNG
media_image3.png
390
494
media_image3.png
Greyscale
(col. 4, lines 26-41).
With respect to claim 6 and 14, the organic silicon compound (B) as a crosslinking agent has formula (YO)eSiR54-e, wherein Y and R5 are monovalent organic groups, and e = 2 or 3 (col. 21, line 65 to col. 22, line 48).
With respect to claims 7 and 15, Tarumi teaches that tackifiers such as β-(3,4-epoxycyclohexyl)ethyltrimethoxysilane, γ-glycidoxypropyltriethoxysilane, γ-aminopropyltriethoxysilane, inter alia (col. 10, lines 38-47), which read on claim formula (B2).
While not exemplified, Tarumi teaches that these compounds are suitable additives.
Therefore, it would have been obvious to one of ordinary skill in the art to utilize the claimed compound of formula (B2). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Allowable Subject Matter
Claims 3, 4, 12, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Tarumi fails to fairly disclose or suggest, alone or in combination with Yoshida, a curable composition comprising a perfluorinated(poly)ether group-containing silane having R3 that is an alkyl or alkoxy. Tarumi teaches at that R3 in claimed formula includes a hydrogen, i.e., terminated with OH. Tarumi actually uses the claimed perfluorinated(poly)ether group-containing silane in its comparative example and therefore teaches away from claimed silane.
Response to Arguments
Applicant's arguments filed 9/11/2025 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
vn