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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments made to claims 1-4 and 7, as well as the cancellation of claim 6 and the addition of claims 8 and 9. Claims 1-5 and 7-9 are pending.
Specification
Applicant has amended the abstract to meet the requirements. As a result, the objection to the specification is withdrawn.
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 1-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hosoda (JP 2006-001975, Foreign reference 2 from IDS dated 9/16/2022) in view of Panadiker (US 20160137674).
Regarding Claims 1-4 and 8-9,
Hosoda teaches an organopolysiloxane of the following structure:
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in which R4 and R5 are carbon chains containing 1 to 8 carbons, n can be 0 to 2, and R8 and R9 are optionally branched chains of 1 to 8 carbons or may be aromatic rings (Paragraph 77). R10 may be between 1 and 18 carbons, with a preferred embodiment containing between 2 and 6 (Paragraph 77). While Hosoda teaches imine containing organosiloxanes, Hosoda fails to teach the specific structures of the instant claims. However, Panadiker teaches siloxanes of the following structure:
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in which any R group may equal alkyl, aryl, alkoxy, or X-Z (Paragraphs 17-22) in which X is an alkyl chain of 2 to 12 carbons and may contain oxygen (Paragraph 23) and in which Z can equal a ketimine of the following structure (Paragraph 24):
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where R7 is hydrogen, alkyl, and aryl amongst other options (Paragraph 25) and R8 is alkyl, aryl, or substituted versions thereof (Paragraph 26). In the above formula, j may be from 0 to 150 (Paragraph 19), m from 0 to 150 (Paragraph 20), and l from 0 to 150 (Paragraph 21). One of ordinary skill in the art, recognizing that the imine-containing siloxane of Hosoda contains reactive groups, would seek to incorporate this functionality into a larger polyorganosiloxane in order to simplify the composition. As such, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to have utilized the imine-containing polysiloxane of Panadiker in the composition taught by Hosoda to obtain the predictable result of a curable composition with a reasonable expectation of success.
Finally, Hosoda teaches that the alkoxy groups are preferably ethoxy or methoxy groups (Paragraph 47), meeting the requirements of the instant claims.
Regarding Claim 5,
Hosoda in view of Panadiker teaches a composition that contains the ketimine-containing compound as well as a polyisocyanate (Paragraph 15).
Regarding Claim 7,
Hosoda teaches that the composition contains an alkoxysilane that is formed through a condensation reaction (Paragraphs 48-49) involving trialkoxy and dialkoxy silanes and can optionally include tetraalkoxysilanes (Paragraph 49) and is conducted in the presence of water (Paragraph 51). Hosoda also teaches the use of a ketimine-containing trialkoxysilane (Paragraphs 75-78). Finally, Hosoda notes that the makeup of the siloxane is not particularly limited (Paragraph 48). As Hosoda teaches the use of both siloxanes as well as the ketimine-containing siloxane in the same composition, it would have been obvious to have combined the functions of these two components into a single component, as it has been held that integrating two components for the same purposes is a prima facie case of obviousness. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). See MPEP 2144.04.IV.B.
With regard to the formation of the imine, Panadiker demonstrates that imines are typically generated through a condensation reaction of a carbonyl compound and an amine (Examples 7 and 8, Paragraphs 291 and 292). Because the reaction is a condensation, it therefore generates water, which if not removed, would logically be present in the mixture. It would necessarily follow that this water would then be able to catalyze the condensation reaction of other siloxanes present in the mixture. As such, one of ordinary skill in the art, recognizing that a byproduct of the first reaction is required for conducting the second reaction in the sequence, would naturally attempt to combine the two steps into a single reaction mixture to simplify the process and avoid an isolation step. It would therefore have been obvious prior to the effective filing date of the instant application to have combined the imine formation reaction and the condensation of the organopolysiloxane compound.
Response to Arguments
Applicant's arguments filed 8/26/2025 have been fully considered but they are not persuasive for the following reasons.
On page 8, the applicant argues that Hosoda in view of Panadiker does not teach the unexpected results seen by the applicant. The examiner disagrees. In fact, Hosoda mentions in both the abstract and in paragraph 10 that the organosiloxane composition provides excellent storage stability and notes the suppression in whitening when exposed to water under severe conditions, which Hosoda later notes to be immersion in water at 50 °C for 7 days (Paragraph 104). These two disclosures speak towards at least two of the applicant’s unexpected results. Panadiker also notes that the organosiloxanes have improved retention properties as well as beneficial characteristics (Abstract). As such, it would not appear to be unexpected that the compositions of the instant application would exhibit improved storage stability and heat resistance, as these qualities had already been noted in similar compositions previously and were in fact listed by Hosoda as specifically being the aims for the invention disclosed.
While the applicant has amended the claims to remove the rejection for anticipation, the changes do not remove the obviousness position of the previous office action which now applies to all claims and further, through the teachings of Hosoda and Panadiker, point towards the applicant’s properties being expected on the basis of these properties being noted previously, specifically by Hosoda.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hatakeyama (JP 2002-146284) teaches organopolysiloxane containing an imine bond of a similar type (Abstract, Paragraph 4) to those of the instant application.
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.
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/A.J.B./ Examiner, Art Unit 1765
/JOHN M COONEY/ Primary Examiner, Art Unit 1765