DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/21/26 has been entered.
Claim Rejections - 35 USC § 103
The rejection below is maintained from the previous office action, as applicants’ arguments are not persuasive of unobviousness.
Claims 1 - 8 and 10 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ziche et al. 8,357,755, in view of Wakabayashi et al. 2007/0203297.
Ziche et al. teach a crosslinkable organosilicon composition.
For claimed component a) see the polymer (A) found in line 52 of column 2. The
terminal group of formula (I) corresponds to the claimed general formula (I). See the specific formulas found on column 3, line 53, to column 4, line 5, which show preferred groups of formula (I). Note that lines 59 to 66 show various silanes meeting claimed (I) in which the N atom is attached to a methyl group and an alkylene group, as well as attachment to the polymer itself.
For claimed component c) see the catalyst found in column 5, lines 50 to 61. This teaches multiple metal alkoxides.
For claimed component d) see column 7, lines 20 to 62, which teaches polymers having an acid number of from 40 to 230. The working examples use polymers having an acid number of 130 and 70-90 which fall directly within the claimed range.
Finally column 9, line 25, teaches alkyl aromatics as useful solvents. These are aprotic organic solvents.
As such Ziche et al. teach each of claimed a), c), d) and e). This differs from that claimed in that it does not teach claimed b). Note, though, that the teachings in Ziche et al. are inclusive of all known and useful condensation catalysts (column 5, lines 48 and 49).
Wakabayashi et al. teach, as a condensation catalyst (c2) metal carboxylates having a quaternary carbon adjacent to the carbonyl group. See paragraph 109. This improves curability and adhesiveness. See paragraphs 104 and 105. Examples of the metal carboxylates are found in paragraph 115 to 118 and include potassium versatate (or potassium neodecanoic, as found in claims 4 and 20).
Wakabayashi et al. also teach that these catalysts can be used in combination with other metal carboxylate catalysts. See paragraph 130. This combination increases catalytic activity, curability and other properties.
From this one having ordinary skill in the art would have found it obvious to add the metal carboxylate (c2) in Wakabayashi et al. to the composition of Ziche et al. such that there is a combination of the claimed catalysts b) and c) therein, in an effort to take advantage of the properties and benefits thereof as taught by Wakabayashi et al., noted supra. In this manner claims 1, 4 and 20 are rendered obvious
For claims 2 and 16 to 18, again see the end groups shown in column 3, lines 59 to 66, which show formulas meeting this claim.
For claims 3 and 19, see column 5, lines 43 to 46. The preferred range of 20 to 40 wt% falls within the claimed range.
For claims 5 and 8, note that adjusting the amount of catalyst in the combined composition noted supra would have been well within the skill of the ordinary artisan, in an effort to optimize properties while not using an excess of catalyst. This is true particularly in view of the fact that Wakabayashi et al. teach adding two different catalysts.
For claims 6 and 7, note that paragraph 130 in Wakabayashi et al. teach each of these catalysts.
For claim 10, note that no pigment or colorant is required such that the obvious composition noted above would be expected to be a clearcoat. Note that the claimed compositions are the same (with the exception of one catalyst) as that in Ziche et al. such that the appearance of the compositions would be expected to be the same.
For claim 11, note that of the required components in Ziche et al., none is a crosslinking agent or a tin containing compound such that these limitations are met. On the other hand, see column 5, line 66 to column 6, line 4, which teaches this tin amount.
For claims 12 to 15, see column 10, line 16, which teaches using the composition as a coating. Note that multilayered coatings are extremely common and well known, in an effort to ensure optimal coverage and thickness and smoothness of the resulting layers.
Response to Arguments
Applicants argue that the claims recite a unique combination of five elements (a) to (e) that, in combination, result in surprising and unforeseeable results. Applicants have not provided any evidence, particularly evidence that is commensurate in scope with the claims, to support this position. It is impermissible to extrapolate from the results obtained with a limited combination of components to expect the same unexpected results for broader combinations of components. Likewise, a limited showing of criticality is insufficient to support a broadly claimed range.
Regarding the example with an acid number of less than 10 mg KOH/g, this does
not provide any critical distinction or unobviousness for a range of 60 to 200 mg KOH/g. It is unclear why applicants think such a showing could establish unobviousness over the prior art, particularly when the prior art uses polymers having an acid number well within the claimed range.
Allowable Subject Matter
Claim 21 is 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. This claim requires a polymer that requires at least 4 specific monomer units in addition to meeting the acid number requirement in claim 1. Such a specific combination is neither taught nor suggested by the prior art and the Examiner has no basis to include such a polymer into the composition of Ziche et al. The teachings in this reference are specific to a polymer that is not prepared from any of the monomers (i) to (iii).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
9/17/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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