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 .
Status of Claims/Other Matters
Examiner acknowledges the amendments made to the specification as well as amendments to claims 1, 3, 6, and 7. Claims 1-15 are pending.
The examiner has attempted to locate translations of the foreign references as discussed in the interview conducted on 5/6/2025, but was unable to locate any files that pertain to the translation of these references in the application documents. The examiner however has considered machine translations obtained from the JPO of the references in question.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The applicant has amended the specification to remove the typographical errors. The objection to the specification is therefore withdrawn.
Claim Objections
The applicant has amended claim 3 to remedy the typographical error. The objection to claim 3 is withdrawn.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, 7-8, 10-11, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yano (EP 3115419, Foreign Reference #3 in IDS dated 6/27/2023).
Regarding Claim 1,
Yano teaches a composition that is moisture curable (Paragraph 199) which contains an organic polymer with a reactive silyl group (Paragraph 10), an aliphatic dicarboxylic acid dimethyl ester (Paragraph 11) which Yano further enumerates to include dimethyl esters of glutaric acid and states that the most preferred options are 5 to 7 carbon acids (Paragraph 77) of which glutaric acid has 5 carbons, and a tin compound curing catalyst (Paragraph 11). Dimethyl adipate is used in Example 1 (Paragraph 209) in an amount of 20 parts by weight, meeting the requirement of the instant claim. With regard to the dimethyl glutamate comprising at least 75% of the C3 to C5 esters, the examples taught by Yano (Examples 1 to 3) only utilize a single compound of this type. It would logically follow that this would apply to any of the enumerated options listed, including dimethyl glutarate.
Regarding Claim 2,
Yano teaches that the polymer may be a polyolefin, polyester, polyamide, poly(meth)acrylate, or polyether (Paragraph 21) and can additionally be a polyurethane (Paragraph 57).
Regarding Claim 3,
Yano teaches that amino silanes may be used as adhesion promotors (Paragraph 143).
Regarding Claim 5,
Yano teaches in Example 1 (Paragraph 209) an amount of dimethyl adipate to be 6.5% by weight (calculated from the amounts listed in composition), meeting the requirement of the instant claim. Additionally, similar incorporation amounts are used in examples 2 (Paragraph 210) and 3 (Paragraph 211).
Regarding Claim 7,
Yano teaches the use of plasticizers (Paragraphs 95-96), fillers (Paragraph 119), stabilizers (Paragraph 132), pigment (Paragraph 194), thixotropic modifiers (Paragraph 123), and drying agents (Paragraph 196).
Regarding Claim 8,
Yano teaches the use of tin-based curing agents (Paragraph 107) as well as other metal catalysts that can also contain amine-based compounds (Paragraph 114).
Regarding Claim 10,
Yano teaches in Example 1 (Paragraph 209) a composition in which the polymer represents approximately 33% of the composition (calculated from the amounts listed in composition), meeting the requirement of the instant claim. Similarly, examples 2 (Paragraph 210) and 3 (Paragraph 211) also meet the requirement.
Regarding Claim 11,
Yano teaches that the composition may be used as a spray coating (Paragraph 200).
Regarding Claim 15,
Yano teaches that the composition may be used as a sealant for exterior materials, a coating composition, or as a spray sealant (Paragraph 201).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4, 6, 9, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yano (EP 3115419, Foreign Reference #3 in IDS dated 6/27/2023) as applied to claims 1-3, 7-8, and 10 above.
Regarding Claim 4,
Yano teaches a variety of silanes, including that is moisture curable (Paragraph 199) which contains an organic polymer with a reactive silyl group (Paragraph 10), however fails to teach the use of the specific silanes of the instant claim. Yano does teach the use of alkylalkoxysilanes such as propyltrimethoxysilane and reactive functional group-containing alkoxysilanes for the purpose of modifying the physical properties of the cured composition (Paragraph 172). Included in the grouping of reactive functional group-containing alkoxysilanes such as γ-aminopropyltrimethoxysilane and N-(β-aminoethyl)aminopropylmethyldimethoxysilane (Paragraph 172), demonstrating the use of both amines as well as substituted amines in the composition. Yano also teaches that these compounds modify the tensile properties and hardness of the cured product (Paragraph 171), providing motivation to the ordinarily skilled artisan to select specific species in order to obtain the desired hardness of the cured product. As such, it would have been obvious prior to the effective filing date of the instant application to have used an amino silane such as N-butyl-3-aminopropyltrimethoxysilane or octyl- or phenyl- trimethoxysilane for the purposes of modifying the hardness and tensile properties of the cured product.
Regarding Claim 6,
Yano teaches that the preferred amount of adhesion promoter (which lists a variety of silanes such as vinyltrimethoxysilane in Paragraph 149) to be 1 to 7 parts by weight relative to the polymer (Paragraph 154). Based upon the polymer comprising approximately one third of the weight of the composition (Example 1), this range translates to 0.3-2.3 parts by weight of the total composition, which overlaps with the range of 0.5 to 2.5% by weight of the instant claim. In order to ensure adequate adhesion to the substrate, one of ordinary skill in the art would adjust the level of adhesion promoter in the composition to obtain the desired level of interaction between the polymer components and the substrate. As such, it would have been obvious to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 9,
Yano teaches that the ratio between the dimethyl ester and other plasticizers is most preferably between 85:15 and 35:65 (Paragraph 93), which overlaps with the range of greater than or equal to 50%. Yano teaches that the amount of the dimethyl ester can have effects on weathering resistance (Paragraph 94), with higher amounts reducing this resistance. However, if the use case does not necessitate this characteristic, a higher percentage could thus be used. As such, the ordinarily skilled artisan could thus adjust the ratio according to the amount of resistance required. It would therefore have been obvious to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 12 and 13,
Yano teaches that the composition may be used as an adhesive or spray coating (Paragraphs 200 and 201), however does not teach the process by which a damaged item would be repaired using the composition. However, one of ordinary skill in the art would recognize that in order to repair a painted or lacquered item, first the loose material would need to be removed, followed by structural repair of the item, and finally, recoating with paint and/or lacquer. In this case, because the curable composition is moisture curable, it would additionally require a curing step involving moisture. As such, it would have been obvious to have performed the described steps in the listed order. Additionally, one of ordinary skill in the art would no doubt be aware that paint may be applied in a variety of fashions, including through spraying, rendering this operation to be obvious.
Regarding Claim 14,
Yano teaches the composition is useful for sealing automotive parts (Paragraph 200) and may be used to repair cracks (Paragraph 201). Yano does not teach specifically that the composition is used to repair damaged automotive parts that are painted. However, as Yano has disclosed the use of the composition for the purposes of sealing automotive parts and to repair cracks, it would logically follow that the composition could thus be used to repair cracks to automotive parts. Yano also discloses that the composition adheres to a wide variety of substrates (Paragraph 202). As such, it would logically follow that paint would adhere to the cured composition as well. Therefore, it would have been obvious to have used the composition for the purposes of automotive part repair in which the part will subsequently be painted.
Other References Considered
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Peeters (EP 3246364) teaches compositions containing reactive silyl group-containing polymers (Paragraph 8) with diethyl esters of dicarboxylic acids (Paragraph 20) and using silanes such as long chain amino silanes and long chain alkylsilanes (Paragraph 137).
Yano (US 20160376420) teaches a moisture curable composition containing silyl-functionalized polymers with dimethyl esters of dicarboxylic acids for use as sealants and adhesives (Paragraphs 12-15).
Kramer (US 20170320997) teaches a silyl-group functionalized polymer using metal or nitrogen based catalysts (Paragraph 108) that can be used as an adhesive or sealant (Paragraph 108) and using N-alkyl substituted amino silanes (Paragraph 124).
Response to Arguments
Applicant's arguments filed 7/16/2025 have been fully considered but they are not persuasive for the following reasons.
On pages 8 and 9, the applicant argues that Yano does not exemplify dimethyl glutarate and therefore fails to anticipate the requirements of claim 1. The examiner disagrees. As noted in the rejection, Yano states a preference for methyl esters of aliphatic diacids of 5 to 7 carbons in Paragraph 77, a group which includes glutaric acid and adipic acid. While the applicant is correct that Yano exemplifies adipic acid, this does not obviate the anticipation of the stated preference for the use of the three options available on the basis of the statement preferring esters of 5 to 7 carbon diacids and more pointedly, the enumeration specifically of dimethyl glutarate. The references must be considered in their totality, and in spite of Yano exemplifying only dimethyl adipate, this does not negate the fact that dimethyl glutarate is taught as a preferred option for the aliphatic diester component.
On page 9, the applicant states that Yano does not discuss the use of the composition with an overcoating layer. However, as the composition of Yano discloses the components used by the applicant in amounts that overlap with those of the applicant, it would stand to reason that the composition would have the property of good performance when being coated. And as the dimethyl glutarate is stated by the client to be responsible for the unexpected results, particularly when used as the sole or majority aliphatic diester component and that Yano explicitly lists dimethyl glutarate as a preferred component and only utilizes this compound type singly in the examples, unexpected results would not apply as this composition is anticipated.
On page 10, the applicant argues that dimethyl glutarate is not listed as preferred over other diesters. However, the cited paragraph 77 in both the rejection and in the response clearly indicated that dimethyl glutarate would in fact be preferred, as it is not only explicitly enumerated, but also through indicating the most preferred options are 5 to 7 carbon diacids, which would afford only three preferred options. While the applicant states that there is no teaching that would lead the ordinarily skilled artisan to expect improved properties through the use of dimethyl glutarate, this would not be required as the composition itself of the instant application is taught by Yano. In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference. In re Schoenwald, 964 F.2d 1122, 1124, 22 USPQ2d 1671, 1673 (Fed. Cir. 1992).
In total, the applicant’s arguments center on the importance of the dimethyl glutarate and that Yano does not effectively teach its use. However, as dimethyl glutarate is explicitly stated and additionally listed as one of three preferred options by Yano, the examiner disagrees. Despite the fact that Yano utilizes the adipate ester in the examples, this does not effectively teach away from the use of glutarate, nor does it negate its preferred status as disclosed by Yano, and as such, the unexpected findings as argued by the applicant would not apply. Therefore, the rejection is maintained.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765