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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-11 and 13-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Applicant has amended each of independent claims 10 and 15 to stipulate that the claimed composition/process excludes/does not involve a condensation catalyst. At the same time, they say that there can be incorporated a catalyst (D) which, while referred to in the Specification as an endcapping catalyst on page 8 is, itself, a condensation catalyst insofar as the mechanism by which endcapping occurs is condensation. Moreover, amine-functional alkoxysilanes, such as those embraced within the description of component (B)/formula (I) are also condensation catalysts. Therefore, the subject matter of claims 10 and 15 is in conflict and it is not even clear what compounds are to be excluded.
Applicant is advised that the Examiner had given strong consideration to formulating a new matter rejection also, particularly insofar as nowhere in the original disclosure does Applicant even reference a condensation catalyst. Instead, there is allusion to endcapping- and crosslinking catalysts, (both types of which are widely recognized as condensation catalysts where “condensation” refers to the type of reaction it promotes and “endcapping” and “crosslinking” are indicative of the particular role of said catalyst). It was ultimately decided that the Examiner would weigh Applicants’ response to the 112(b) issue before possibly formulating a 112(a) rejection.
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.
Claims 10-11 and 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Larson et al, U.S. Patent Application Publication No. 2015/0141686 for the reasons outlined previously and because, although the Examples did incorporate a condensation catalyst, paragraph [0022] clearly states that a catalyst is not necessary when the silane reactant (B) is an α-silane, which the Examiner had earlier deemed an obvious replacement for the amino-substituted alkoxysilanes of the examples.
Concerning new claims 22 and 24, the subject matter of these claims in no way is further limiting of the composition nor the process. Indeed, all these claims do is define a role played by component (C) unless the Examiner is to infer that the alcohol(s) employed in the practice of the invention to Larson somehow fail to do the same for the prior art component correlated with claimed component (B). The current record certainly doesn’t establish that the alcohols taught by Larson would be excluded by this description.
As for new claims 23 and 25, it is reiterated here that no catalyst is needed when prior art component (B) is one of the α-silanes outlined in [0016].
As for claims 22 and 24, as the Examiner has already established, the amino-functional silanes mentioned by Larson are autocatalytic and, hence, no catalyst is necessary.
N,N-di-n-butylaminomethyltriethoxysilane is within the description of the formula defining a first suitable genus of amine-functional alkoxysilanes in [0015] thus rendering obvious claim 26
Regarding claims 30 and 31, methanol and ethanol are among the prior art hydroxyl-functional compounds (E) contemplated in [0027] and [0029] indicates that those with a boiling point below 110° C are especially favored, of which ethanol and methanol are two.
Response to Arguments
There is an implication in Applicants’ remarks that the Examples of the instant disclosure document an unexpected ability of the alcohol component to “control the inherent high reactivity of (B)” as manifested in lower viscosities. However, this is precisely the function said to be fulfilled by the hydroxyl-functional compound in the Larson disclosure. See [0031]. Therefore, the effects gleaned from Applicants’ data would hardly seem to be unpredictable.
Allowable Subject Matter
Claims 27-29 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.
Paragraphs [0015-0016] offer s fairly comprehensive description of suitable aminoalkoxysilanes including ones with heterocyclic rings but those mentioned in claims 27-29 were not obvious from that description.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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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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February 3, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765