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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/13/2025 has been entered.
Status of Claims
Claims 1-5, 12, and 19 have been cancelled and claim 6 has been amended. Claims 6-9, 11, and 13-18 are pending.
Specification
The disclosure is objected to because of the following informalities: In paragraph 47, the applicant refers to various metals for catalyzing the moisture curing process, including iron cobalt. Based upon the examples provided in the following paragraph (paragraph 48), there appears to be a missing comma between iron and cobalt.
Appropriate correction is required.
Claim Objections
Claim 6 is objected to because of the following informalities: Claim 6 contains similar language to that found in the specification and there appears to be a missing comma between iron and cobalt on the basis of the information contained in the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6-9, 11, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura (JP2011-153192) in view of Correia (US 20090018260) as evidenced by Monteil (US 20170022325).
Regarding Claim 6,
Kawamura teaches a composition that contains a polymethacrylate that is comprised of butyl methacrylate, methyl methacrylate, and contains a hydrolysable silyl group (Paragraph 8). Butyl methacrylate can comprise from 25 to 90% by mass of the polymer, with methyl methacrylate comprising from 10 to 75% by mass (Paragraph 23), ranges which overlap with the ranges of the instant claim. One of ordinary skill in the art, motivated to obtain a polymer with a glass transition temperature in an acceptable range for use as a sealant, would alter the ratio of the monomers in the final polymer in order to obtain this goal. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Kawamura additionally teaches that the silyl-containing monomer can be an acrylate or methacrylate with the silyl group linked to the carbonyl through a chain of 1 to 6 carbons (Paragraph 18) with a specific example containing a 3 carbon linker mentioned. This silyl group can be alkoxy or hydroxy and in the case of alkoxy substitution, the number of carbons in the chain may be from 1 to 20 (Paragraph 18). In order to maintain flexibility in the crosslink that is formed between the silyl groups, one of ordinary skill in the art would recognize that the linking chain between the backbone and the silyl group would have an effect and as such, the ordinarily skilled artisan would adjust this length to obtain the desired flexibility. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the linker range because selection of the overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding the incorporation amount of the silyl-containing monomer, Kawamura provides in Example A-13 (Table 1) a polymer which contains 5% by weight of a silyl-containing monomer, meeting the requirement of the instant claim.
Kawamura also teaches that the polymer is made in a solution containing organic solvent, which may include methanol, ethanol, or isopropanol (Paragraph 75).
Regarding the use of filler, Kawamura teaches that inorganic filler may be used in amounts of 30 to 200 parts by mass (Paragraph 49). Regarding moisture scavengers, Kawamura teaches the use of 0.1 to 10 parts by mass dehydrating agents (Paragraph 66). Regarding curing catalyst, Kawamura teaches the use of between 0.1 and 10 parts by mass (Paragraph 34). These ranges overlap with the ranges of the instant claim. One of ordinary skill in the art would be motivated to adjust these ranges to fit the specific use case. The ordinarily skilled artisan would naturally use more or less curing catalyst depending upon the desired cure time, utilize more moisture scavenger to prolong shelf life, or add additional filler to adjust the viscosity or strength of the cured product. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the stated ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. Kawamura also teaches that the curing catalyst may be any compound that accelerates the curing process (Paragraph 29) and lists both metal compounds and amines as options. However, Kawamura does not specifically list options other than iron complexes. Correia teaches the use of a variety of metal containing catalysts including lead, iron, cobalt, antimony, manganese, bismuth, and zinc complexes (Paragraph 45). One of ordinary skill in the art would have been motivated to use compounds besides tin-based complexes due to toxicity and regulatory concerns, as evidenced by Monteil (Paragraph 15). Because these complexes are all suitable as moisture curing catalysts and because Kawamura teaches the use of any suitable compound for the purpose, it would have been obvious prior to the effective filing date of the instant application to have used any of the metal complexes as taught by Correia for use as a moisture curing catalyst in the composition as taught by Kawamura.
Regarding Claims 7 and 8,
Kawamura teaches the use of fillers such as fumed silica, calcium carbonate, and magnesium oxide (Paragraph 49).
Regarding Claim 9,
Kawamura teaches the use of polymeric plasticizers (Paragraph 60) as well as the use of a silylated oxyalkylene polymer (Paragraph 7). As such, Kawamura discloses the use of other organic compounds that may be added to the composition.
Regarding Claim 11,
Kawamura teaches the use of magnesium oxide and calcium carbonate (Paragraph 49). While not explicitly designated for the purposes of acid scavenging, it would necessarily follow that such compounds would fill this role regardless of the reason for incorporation.
Regarding Claims 13-16,
Kawamura teaches the use of vinyltrimethoxysilane, as well as a variety of amine-containing silanes, including γ-aminopropyltrimethoxysilane (Paragraph 65). While these agents are disclosed as dehydrating agents, because these silanes are commonly used for surface treatment for adhesion promotion, it would logically follow that their incorporation would serve the adhesion promotors as well.
Regarding Claim 17,
Kawamura teaches that the composition is moisture-curable (Paragraph 7).
Regarding Claim 18,
A material serving as a gasket is a function of its placement between two surfaces, and as such, if one were to take the moisture-curable composition of Kawamura and place it between two separate parts, it would functionally serve as a gasket, meeting the requirement of the instant claim.
Response to Arguments
Applicant's arguments filed 8/13/2025 have been fully considered to the extent to which they apply to the new grounds of rejection but they are not persuasive. While the applicant directs the argument towards the now cancelled claim 1, the applicant argues that specifying metal catalysts excluding tin and zirconium complexes as well as amine catalysts that Kawamura does not teach nor fairly suggest the use of alternatives. The examiner disagrees. Specifically, Kawamura states that any catalyst capable of catalyzing the moisture curing process may be used. As noted in Correia, a variety of other metal-based compounds are known to serve as moisture curing catalysts for silicon containing compositions, including many of those listed by the applicant. Additionally, as noted by Monteil related to claim 6 as well as by the applicant, there have been efforts in recent years to remove tin based compounds from such compositions due to toxicity and environmental concerns, serving as ample motivation for the ordinarily skilled artisan to have explored alternatives to the more common tin-based complexes. Because Kawamura explicitly states that any known catalyst may be used, Correia teaches additional metals that are useful as curing catalysts, and Monteil describes concerns around tin-based catalysts, it would have been obvious to the ordinarily skilled artisan to have substituted alternatives.
Conclusion
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.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765