DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 13, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on May 13, 2026 has been fully considered. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 1, 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu et al (US 2007/0254166) in view of Baba et al (US 6,300,384).
5. Qiu et al discloses a free-radically curable composition comprising:
A) a fluoroalkyl silicone compound having a plurality of ethylenically unsaturated groups, specifically (meth)acryloyl groups ([0027], [0035]-[0038], [0055]);
B) various diacrylate or triacrylate monomers ([0019], as to instant claim 4);
C) free-radical initiators ([0064]);
D) silica ([0069], as to instant claim 6),
wherein the composition is used to coat various substrates ([0075]) by foam application ([0086]).
The composition further comprises a mono (meth)acryloyl compound having a functional group of the following formula ([0062], [0085]):
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Wherein Y is preferably hydrolysable silane (such as trialkoxysilane) ([0062], as to instant claim 5), to improve adhesion to substrates ([0085]).
6. Though the composition of Qiu et al is cited as being applied by foam application, Qiu et al is silent with respect to the composition comprising a chemical blowing/foaming agent.
7. However, Baba et al discloses a silicone composition comprising:
a) an organopolysiloxane having ethylenically unsaturated groups (col. 2, lines 20-27);
b) an organic peroxide curing agent (col. 2, lines 30-31; col. 3, lines 55-60);
c) silica (col. 2, lines 62-col. 3, line 5) and
d) 0.1-10 phr of a thermally decomposable blowing agent including sodium bicarbonate, azo compounds, nitroso compounds (col. 3, lines 30-55).
8. Since both Qiu et al and Baba et al are related to compositions based on ethylenically unsaturated silicone compounds, silica and free-radical initiators, and thereby belong to the same field of endeavor, wherein the composition of Qiu et al is cited as being applied by foam applications but is not explicitly specified as further comprising a chemical blowing/foaming agent, and Baba et al recites such compositions comprising chemical blowing agents to form such compositions in expanded/sponge/foamable form, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Baba et al and Qiu et al, and include, or obvious to try to include, at least partially and at least in a minor amount, the chemical blowing agents into the composition of Qiu et al, so to ensure it is suitable to be applied by foam application and comprises, at least partially, voids, given such is desired, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
9. Claims 1, 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Asai et al (US 6,103,317) only, or alternatively in further view of Qiu et al (US 2007/0254166) and Tanaka (US 4,495,227).
10. Asai et al discloses a composition for coating comprising:
A) a mixture of mono- and multi-functional radiation polymerizable monomers (col. 6, lines 25-28), wherein:
- the multi-functional monomer with radiation-polymerizable functionality includes silicone acrylates (col. 4, lines 40-41; col. 3, lines 60-62); and
- the mono-functional radiation curable monomers include (meth)acrylates (col. 5, lines 9-40, as to instant claim 4) and acryloxysilane (col. 5, lines 40-45, as to instant claim 5);
B) a free-radical photoinitiator (col. 3, lines 62-63; col. 5, lines 45-50) and
C) a blowing agent including azo compounds (col. 4, lines 3-5; col. 6, lines 55-62),
wherein the composition further comprises fillers such as fumed silica (col. 7, lines 65-66, as to instant claim 6).
The composition is used as water-blocking coating composition (col. 1, lines 5-10).
11. Based on the teachings of Asai et al, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of silicone acrylates as the multi-functional monomers; (meth)acrylates and acryloxysilane as the mono-functional monomers and the azo blowing agent as the chemical blowing agent to form the coating composition of Asai et al, since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
12. Given the silicone acrylate monomers are multi-functional, therefore, said silicone acrylate monomers will intrinsically and necessarily have more than one acrylate, i.e. free-radical reactive, groups as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
13. In the alternative, though Asai et al does not explicitly recite the multi-functional silicone acrylate monomers comprising more than one free-radical reactive group,
Qiu et al discloses a free-radically curable composition, used for making coatings ([0001]), comprising:
A) a fluoroalkyl silicone compound having a plurality of ethylenically unsaturated groups, specifically (meth)acryloyl groups ([0027], [0035]-[0038], [0055]);
B) various diacrylate or triacrylate monomers ([0019], as to instant claim 4);
C) free-radical initiators ([0064]);
D) silica ([0069], as to instant claim 6),
Wherein the composition is used to coat various substrates ([0075]) by foam application ([0086]).
The composition further comprises a mono (meth)acryloyl compound having a functional group of the following formula ([0062], [0085]):
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Wherein Y is preferably hydrolysable silane (such as trialkoxysilane) ([0062], as to instant claim 5), to improve adhesion to substrates ([0085]).
Thus, Qiu et al explicitly teaches the curable silicone compounds used for making coatings as having plurality of ethylenically unsaturated groups, specifically (meth)acryloyl groups.
14. Since both Asai et al and Qiu et al are related to silicone acrylate-based curable compositions used for making coatings, and thereby belong to the same field of endeavor, wherein Qiu et al explicitly teaches the curable silicone compounds used for making coatings as having plurality of ethylenically unsaturated groups, specifically (meth)acryloyl groups, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Asai et al and Qiu et al , and to use, or obvious to try to use, at least partially, the silicone acrylate monomer having multiple (meth)acryloyl groups, as taught by Qiu et al, as the silicone acrylate multi-functional monomer in the composition of Asai et al, so to ensure a complete and/or desired level of curing of said silicone acrylate-based composition, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
15. Though Asai et al does not explicitly teach the amount of used azo-based blowing agent component C), it would have been obvious to a one of ordinary skill in the art that, depending on the desired level of foaming/expansion of the composition, the blowing agent may be used in a very minor amount, such as low as 0.5%wt, or a major amount, such as more than 0.5%wt.
16. In the alternative, though Asai et al does not explicitly teach the amount of used blowing agent,
Tanaka discloses foamable curable ethylenically-unsaturated silicone-containing composition for making water-repellent coatings (Abstract), wherein the blowing agent includes azo-compounds (col. 3, lines 49-55) and is specified as being used in amount of 1-200 pbw per 100 pbw of the curable silicone composition (col. 1, line 64-col. 2, line 2).
17. Given the azo-based blowing agents are taught in the art as being used in the curable silicone compositiosn in amount of more than 1 phr, and as much as 200 phr, as shown by Tanaka, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Asai et al and Tanaka, and to use the azo-based blowing agents in the composition of Asai et al in amount of at least 1 phr, as taught by Tanaka, as well, since such amount of used azo-based blowing agent in said coating compositions is taught in art and it would be obvious to choose said material in such amount based on its suitability and desired level of expansion, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Response to Arguments
18. Applicant's arguments filed on April 13, 2026 have been addressed in Advisory Action mailed on April 21, 2026. No more arguments have been filed since April 13, 2026.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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