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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 13-15, 17-18, 20, and 22-25, in the reply filed on 20 August 2025 is acknowledged.
Claims 26-27, 39-41, 43-44, 46, and 48 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 August 2025.
Claim Objections
Claims 15, 17-18, 20, and 22 are objected to because of the following informalities:
Claim 15, line 2: “the blocked aminosilane” should read “the at least one blocked amino-silane” in order to match the recitation in claim 1 of “at least one blocked amino-silane”.
Claim 17, line 2: “the adhesion promoter” should read “the at least one adhesion promoter” in order to match the recitation in claim 1 of “at least one adhesion promoter”.
Claim 18, line 2: “the adhesion promoter” should read “the at least one adhesion promoter” in order to match the recitation in claim 1 of “at least one adhesion promoter”.
Claim 20, line 2: “the adhesion promoter” should read “the at least one adhesion promoter” in order to match the recitation in claim 1 of “at least one adhesion promoter”.
Claim 22, line 2: “the adhesion promoter” should read “the at least one adhesion promoter” in order to match the recitation in claim 1 of “at least one adhesion promoter”.
Appropriate correction is required.
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 17-18, 20, and 25 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.
With respect to claim 17, the claim recites “the adhesion promoter is selected from compounds of the general formula (R1O)3-Si-R2X… where R1 is… X is… R3 is…” in lines 2-5. However, claim 17 fails to recite what R2 is. Claim 17 is indefinite because it is unclear what R2 encompasses.
With respect to claim 18, the claim recites the limitation "the adhesion promoter R1" in line 2. There is insufficient antecedent basis for this limitation in the claim. While claim 1 (which claim 18 depends from) recites “at least one adhesion promoter” in line 2, claim 1 does not recite “an adhesion promoter R1”. However, claim 17 recites “the adhesion promoter… R1” in lines 2-3; for this reason, it is suggested that Applicant amend claim 18 to depend from claim 17. For the purposes of examination, claim 18 has been interpreted as if it depends from claim 17.
With respect to claim 20, the claim recites the limitation "the adhesion promoter X" in line 2. There is insufficient antecedent basis for this limitation in the claim. While claim 1 (which claim 20 depends from) recites “at least one adhesion promoter” in line 2, claim 1 does not recite “an adhesion promoter X”. However, claim 17 recites “the adhesion promoter… X” in lines 2-4; for this reason, it is suggested that Applicant amend claim 20 to depend from claim 17. For the purposes of examination, claim 20 has been interpreted as if it depends from claim 17.
With respect to claim 25, the claim recites “the one or more polyisocyanate is TDI/HDI polyisocyanate” in lines 1-2. The claim is indefinite because it is unclear what “TDI/HDI polyisocyanate” means. Does it mean either TDI or HDI is an appropriate polyisocyanate? Or that a mixture of both TDI and HDI are required? Clarification is respectfully requested. For the purposes of examination, claim 25 has been interpreted as if it requires a mixture of TDI and HDI.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 13-15, 17-18, 20, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Tsubota et al. (JP 2006-001975 A, “Tsubota”). The disclosure of Tsubota is based off a machine translation of the reference included with the action mailed 01 July 2025.
With respect to claims 1, 17-18, and 20, Tsubota discloses a primer composition comprising one or more silane compounds selected from the group consisting of aminosilane compounds having the structure represented by general formula (3), a ketimine silane compound having a structure represented by general formula (4), a catalyst, and a solvent ([0015], [0017], [0086], [0093]). R3 is an alkylene group having 1-12 carbon atoms which may be branched; R4 and R5 are each an alkyl group having 1-8 carbon atoms which may be branched and may be the same or different; R6 is an alkylene group having 1-12 carbon atoms and may be branched; R7 is hydrogen, an alkyl group having 1-8 carbon atoms which may be branched, an aralkyl group having 7-18 carbon atoms which may be branched, or an aryl group having 6-18 carbon atoms; R8 and R9 are each monovalent organic groups having 1-12 carbon atoms which may be branched; R10 is a divalent organic group having 1-18 carbon atoms which may be branched, and n is an integer of 0-2 ([0017], [0061], [0066], [0077]). Thus, when n = 0, R4 is not present and OR5 is present 3 times; in general formula (4), R5 corresponds to the claimed R1, R2, and R3. R8 and R9 correspond to the claimed R5 and R6. R10 corresponds to the claimed R4. Thus, while there may be no explicit disclosure from Tsubota regarding the ketimine silane represented by general formula (4) being a blocked amino-silane, given that it is identical to that presently claimed, it is clear the ketimine silane represented by general formula (4) would necessarily inherently be a blocked amino-silane. The aminosilane represented by general formula (3) corresponds to the claimed adhesion promoter having the structure (R1O)3-Si-R2X, where the substituent R5 being a C1-2 alkyl group in the compound represented by general formula (3) corresponds to the claimed R1 being methyl or ethyl of the adhesion promoter (n = 0, so R4 is not present), R6 in the compound represented by general formula (3) corresponds to the claimed R2 in the adhesion promoter, and HN-R7 in the compound represented by general formula (3) corresponds to the claimed X being a group functionalized with an amino group. Thus, while there may be no explicit disclosure from Tsubota regarding the compound represented by general formula (3) being an adhesion promoter, given that it is identical to that presently claimed, it is clear the compound represented by general formula (3) would necessarily inherently be an adhesion promoter.
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In light of the overlap between the claimed primer composition and that taught by Tsubota, it would have been obvious to one of ordinary skill in the art to use a primer composition that is both taught by Tsubota and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 13, Tsubota discloses R4 and R5 are each alkyl groups having 1-8 carbon atoms; n is an integer of 0-2 ([0017], [0077]); thus, when n = 0, R4 is not present and OR5 is present three times, encompassing the claimed R1 being OC2H5 and the claimed R2 and R3 being OCH3, OC2H5, and OC3H7. R10 is a divalent organic group having 1-18 carbon atoms including alkylene group ([0017], [0077]), encompassing the claimed R4. R8 and R9 are each monovalent organic groups having 1-12 carbon atoms which may be branched including alkyl group ([0017], [0077]), encompassing the claimed R5 and R6.
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With respect to claim 14, Tsubota discloses R4 and R5 are each alkyl groups having 1-8 carbon atoms; n is an integer of 0-2 ([0017], [0077]); thus, when n = 0, R4 is not present and OR5 is present three times, encompassing the claimed R2 and R3 being independently selected from OCH3 and OC2H5. R10 is a divalent organic group having 1-18 carbon atoms v ([0017], [0077]), encompassing the claimed R4 when the claimed n is 3. R8 and R9 are each monovalent organic groups having 1-12 carbon atoms which may be branched including alkyl group ([0017], [0077]), encompassing the claimed R5 when the claimed p is 4 and the claimed R6 when the claimed q is 4.
With respect to claim 15, Tsubota discloses R4 and R5 are each alkyl groups having 1-8 carbon atoms; n is an integer of 0-2 ([0017], [0077]); thus, when n = 0, R4 is not present and OR5 is present three times; when R5 is an alkyl group having 2 carbon atoms, then it corresponds to the claimed triethoxysilane substituent. R10 is a divalent organic group having 1-18 carbon atoms ([0017], [0077]); thus, when R10 is a 3-carbon organic group, it corresponds to the claimed propyl group. R8 and R9 are each monovalent organic groups having 1-12 carbon atoms which may be branched ([0017], [0077]); thus, when R9 is 3-carbon branched organic group having a methyl group on the second carbon atom and R8 is a 1-carbon unbranched organic group, this corresponds to the claimed 1,3-methylbutylidene group (the carbon double bonded to the nitrogen provides the fourth carbon for the butylidene group). Thus, Tsubota’s compound represented by general formula (4) encompasses the claimed 3-(1,3-dimethylbutylidene)aminopropyltriethoxysilane.
With respect to claims 23-25, Tsubota discloses the composition further includes polyisocyanates ([0028]) including mixtures of aromatic and aliphatic polyisocyanates ([0030]). The aromatic polyisocyanates include TDI ([0031]); the aliphatic polyisocyanates include HDI ([0032]). Therefore, the polyisocyanates are a blend of TDI and HDI. While there may be no explicit disclosure from Tsubota regarding the polyisocyanates being cross-linkers, given that they are identical to those presently claimed, it is clear the polyisocyanates of Tsubota would necessarily inherently be cross-linkers.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Tsubota et al. (2006-001975 A, “Tsubota”) as applied to claim 1 above and further in view of Wang et al. (US 6,008,305, “Wang”) and the evidence provided by PubChem. The disclosure of Tsubota is based off a machine translation of the reference included with the action mailed 01 July 2025.
With respect to claim 22, while Tsubota discloses the use of an adhesion promoter as set forth in the above rejection of claim 1, Tsubota does not disclose wherein the adhesion promoter comprises a reaction product of HDI-biuret and 3-mercaptopropyltrimethoxysilane.
Wang teaches a primer composition for improving the bonding of adhesives to substrates (Col. 1, lines 5-10). The composition contains an adhesion promoter (Col. 2, lines 49-51). The adhesion promoter is the reaction product of a multifunctional isocyanate (Col. 5, lines 35-37) including HDI biuret (Col. 5, lines 54 and 66-67); the co-reactant is an organosilane including mercapto-alkoxysilane (Col. 6, lines 3-7) including γ-mercaptopropyltrimethoxysilane (Col. 6, lines 18-20). As evidenced by PubChem, γ-mercaptopropyltrimethoxysilane is a synonym for 3-mercaptopropyltrimethoxysilane (PubChem, page 6, “2.4 Synonyms”, “2.4.1 MeSH Entry Terms”). The adhesion promoter improves the adhesion between a substrate and an adhesive (Col. 5, lines 46-48).
Tsubota and Wang are analogous inventions in the field of primer compositions containing silane-based adhesion promoters.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Tsubota to contain the γ-mercaptopropyltrimethoxysilane (i.e., 3-mercaptopropyltrimethoxysilane) as taught by Wang in order to provide a primer composition capable of providing improved adhesion between a substrate and an adhesive (Wang, Col. 5, lines 46-48).
Conclusion
The prior art made of record but not relied upon is considered pertinent to Applicant’s disclosure.
Zhu et al. (US 2019/0119539 A1) discloses a primer composition containing an aminohydrocarbyl alkoxy silane ([0005]). The composition contains an epoxyhydrocarbyl alkoxy silane having the structure shown below ([0024]), where z is 0, y is 3, x is 1, and R3 is a C1-4 alkyl group ([0026]). This structure has a glycidyl group. The epoxyhydrocarbyl alkoxy silane improves the adhesion of a coating having isocyanate functional groups to a substrate ([0024]).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787