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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Decato (WO 2008005293, Foreign Patent Document 2 from IDS dated 2/27/2023).
Regarding Claims 1, 3, 12, and 13,
Decato teaches a composition for use as a one-part sealant (Paragraph 4) which uses a tin based catalyst (Paragraph 36), crosslinking compounds such as dimethyldimethoxysilane and di(tert-butoxy) diacetoxysilane (Paragraph 26), and adhesion promotors (Paragraph 40) along with a siloxane of the following structure:
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in which R13 can be an alkoxy group (Paragraph 8). Decato teaches that the structure of formula III is formed first, followed by addition of filler (including fumed silica or calcium carbonate (Paragraphs 38 and 39), which are listed in the applicant’s specification to be reinforcing fillers), adhesion promoter, and catalyst with all steps being conducted under dynamic vacuum, with cooling when necessary (Paragraph 53). Decato also teaches that alcohol scavengers may be used (Paragraph 44). While Decato does not teach a specific time point at which the alcohol scavenger is added, because Decato teaches their use, it would have been obvious to have added them at any point in the process. See MPEP 2144.04.IV.C. With regard to the amount of alcohol scavenger, while Decato does not teach a specific amount, Decato does teach the use of a variety of other additives in amounts of 1 to 3% by weight (Tables 1, 3, and 5). Additionally, as the alcohol scavenger is used to improve shelf stability, the amount added would be adjusted in order to obtain the desired length of time required, which would render the amount to be a result-effective variable. As such, it would have been obvious prior to the filing date of the instant application to have used any amount of alcohol scavenger.
With regard to the temperature, Decato specifies a preferred temperature for the initial reaction of 50 to 75 °C (Paragraph 49) and states later in the procedure that cooling may be applied, if necessary (Paragraph 53). As such, it would logically follow that the temperature would be in the range as specified for subsequent steps. Additionally, as the goal of the step is to remove alcohol, one of ordinary skill in the art would recognize that the removal of the alcohol would be related to both the vacuum pressure and the temperature of the mixture since the boiling point of the alcohol would be affected by the pressure inside the mixer. As such, this would render the temperature to be a result effective variable.
Regarding Claim 2,
While Decato does not explicitly teach that the filler is hydrophobically treated in situ, because Decato teaches the mixture of the filler in the presence of the alkoxy end-capped siloxane as well as with adhesion promoters while under vacuum (Paragraph 53), this process reads upon functionalizing the surface of the filler with hydrophobic groups in situ as required by the instant claim.
Regarding Claim 4,
Decato teaches the use of dynamic vacuum as described above in regard to claim 1, but does not explicitly teach the vacuum pressure. However the range of the instant claim is broad (0.54 to 0.003 MPa). Additionally, as the vacuum is used to remove alcohols generated from the process, it would logically follow that the vacuum pressure would be set to remove nearly all of the alcohol without removal of other potentially volatile additives. As such, the vacuum pressure would be a result-effective variable, as it would be set based upon the removal of the undesired alcohol without other deleterious effects.
Regarding Claims 5 and 10,
Decato teaches that the composition is mixed under dynamic vacuum, but does not explicitly state that the mixing is conducted in a twin-screw extruder. However, one of ordinary skill in the art would recognize that a twin-screw extruder is a common method of generating polymer compositions and that the functions performed by the twin-screw extruder are the same as those described by Decato. Therefore, it would have been obvious prior to the effective filing date of the instant application to have used a twin-screw extruder to mix and react the composition.
With regard to packaging after mixing, it would logically follow that as the composition is a single component mixture intended for use in automotive and construction applications that the point of manufacture and point of use would be different, and as such, the composition would need to be packaged in order to be shipped to the point of use. It would also logically follow that this step would be conducted after the reacting/mixing steps. As such, it would have been obvious prior to the effective filing date of the instant application to have packaged the composition following mixing.
Regarding Claim 6,
Decato teaches the formation of the end-capped polysiloxane using a catalyst prior to mixing with other ingredients (Paragraph 53).
Regarding Claim 7,
Decato teaches the use of amine based catalysts including guanidines and amidines such as DBU (Paragraph 36) in amounts most preferably between 0.05 and 0.5% by weight, meeting the requirement of the instant claim.
Regarding Claim 8,
Decato does not explicitly state that the polyalkoxysilane is provided in excess. However, based upon the number of repeat units for the hydroxyl terminated siloxane (10-2000, Paragraph 30) and the amounts used in Example 1 (Table 1), if a polymer of 1000 repeat units were used, there would be approximately 1 mmol of hydroxyl groups to react. As the silane used (vinyl tris(methyl ethyl keoxamino) silane is used at 3% by weight with a molecular weight of 313.47, approximately 9 mmol of silane is present. Because Decato teaches the use of alkoxysilanes (Paragraph 20), if used in similar amounts, it would meet the requirements of the instant claim.
Regarding Claim 9,
Decato teaches the use of all of the required components of the composition, however does not teach a second addition of end-capped polysiloxane prior to the removal of alcohol under vacuum. However, as the end-capped polysiloxane is already taught to be part of the composition, adding it more than one portion and in any order would have been obvious prior to the effective filing date of the instant application. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP 2144.04.IV.C.
Regarding Claim 11,
Decato teaches the use of alcohol scavengers, but does not specifically teach the use of silazanes. However, as silazanes are used to remove OH containing compounds from alkoxy functionalized silicone compositions, it would have been obvious prior to the effective filing date of the instant application to have used a silazane for that purpose.
Regarding Claims 14 and 18-19,
While Decato teaches that the composition is useful for construction applications, Decato does not teach that the composition is gunnable. However, as the applicant defines this to mean that the composition has an extrusion rate of 10-1000 mL/min, this would be a property of the composition. Because the composition of Decato meets the requirements as outlined in regard to claim 1, it would logically follow that it would also have a similar extrusion rate. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claim 15,
Decato teaches that the composition can be applied to a substrate used as an airbag to seal the stitching (Paragraph 51) and that the stitching takes place after the application and exposure to moisture (Paragraph 51). This application process would read upon application to adjacent surfaces. Additionally, as Decato also states that similar compositions are useful as sealants and conformal coatings (Paragraph 2), it would logically follow that such compositions are capable of being worked to provide a smooth surface prior to curing as required by the instant claim.
Regarding Claim 16,
Decato teaches that the cured composition has high elongation and good resistance to tearing (Paragraph 59), which would read upon the formation of a silicone elastomer.
Regarding Claim 17,
Decato teaches that the composition is useful in construction applications (Paragraph 2) as well as in for airbag coatings (Paragraph 3), which reads upon automotive applications.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dziark (US 4,417,042) teaches the use of silazanes as scavengers for hydroxyl containing compounds.
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