DETAILED ACTION
Response to Arguments
Applicant’s arguments have been considered. In view of the amendment to the claims and the arguments, the previous office action has been rejected. In view of this an updated review of the prior art was conducted, which unearthed a new prior art reference that is pertinent to the instant claims. Please see the following new grounds of rejection below.
Claim Interpretation
For claim interpretation purposes the note that the claimed process is directed to a process consisting of the clamed process step in which the catalyst is consisting of a quinidine as claimed. This limits the claims such that no additionally steps or catalysts may be present.
Claim Rejections - 35 USC § 103
Claims 1, 3 to 5, 7 to 9 and 17 to 20 are rejected under 35 U.S.C. 103 as being unpatentable over Prasse et al. 2018/0194902.
Prasse et al. teach a process of end capping silanol terminated polysiloxanes with
polyalkoxy silane in the presence of a cyclic guanidine catalyst. See paragraph 3 which specifically mentions end capping, paragraphs 9 to 11 which generally teaches the reaction, paragraph 32 which teaches silanol terminated a polydiorganosiloxane and paragraph 46 which teaches polyalkoxysilanes. In addition to this please see paragraph 64, catalyst C1, which is preferably a 1,5,7-triazabicyclo[4.4.0]dec-5-ene. This meets both the catalyst in claim 1 as well as a specific catalyst found in claim 3.
This differs from that in claim 1 in that it does specifically teach an amount as claimed and it contain the additional step of treating the resulting terminated siloxane with a phosphorus compound (C3). See for instance paragraph 72.
With regard to the first difference, see paragraph 71 which teaches a range of guanidine catalyst that overlaps to a significant extent with that claimed. Give the fact that Prasse et al. indicate that any value within this range is useful, one having ordinary skill in the art would have found an amount within the claimed range to have been obvious and well within routine experimentation and/or optimization.
With regard to the second difference, see paragraph 119 which teaches that the polymerization can be stopped after the first step and the second place can take place at another location. Such a location change would involve a complete stop of the pro-cess in the first step, and result in an isolated final intermediate product. This renders obvious a process that “consists of” the single step found in instant claim 1.
On the other hand, the elimination of a step and its function has been held to be obvious if the function is not desired. See MPEP 2144.04 II, A. In the teachings of Prasse et al. the comparative examples show various physical properties that are effected by the use of the compound (C3). If the skilled artisan were not concerned about these properties, or desired physical properties that are within the breath of the comparative examples, the skilled artisan would have found the elimination of such an additional step and component to have been obvious.
In this manner the totality of the limitations in claim 1 are rendered obvious.
For claim 3, note that supra regarding paragraph 64 and the limited catalyst selection of claim 3.
For claim 4, note that static mixers are an extremely common and well-known device for continuous mixing of material such that the skilled artisan would have found the use of such a common mixture to have been obvious in the reaction of Prasse et al.
For claim 5, the teachings in Prasse et al. are completely silent regarding the removal of any excess starting material such that it follows that this if not a required step in the process of Prasse et al.
On the other hand, note that supra regarding the obviousness of ending the process in Prasse et al. without any further treatment such that this rationale also renders obvious this claimed process step obvious.
For claim 8 see paragraph 113 which teaches a temperature range that embraces the totality of the claimed range such that one having ordinary skill in the art would have found the selection of a temperature within the claimed range to have been obvious.
For claim 8 note that storage stability it a benefit of the process of Prasse et al. such that the skilled artisan would have been motivated to optimize conditions for the most beneficial storage stability. In addition, if the resulting product of the first step in Prasse et al. can be moved prior to the second step treatment, it follows that storage stability must be optimized. In this manner the skilled artisan would have found such storage requirements to have been obvious and well within routine experimentation for one having ordinary skill in the art.
For claim 9 note adjusting the amount of polyalkoxysilane in the process of Prasse et al. would have been obvious to the skilled artisan. Having the knowledge that the product made by the process of Prasse et al. undergoes subsequent crosslinking during a curing mechanism, the skilled artisan would have found it obvious to include an extra amount of silane such that the residual can be used in subsequent reactions.
For claim 17, again see the amounts in paragraph 108 which embrace the claim-ed range such that the skilled artisan would have expected an amount within the such a range to have been useful and predictable.
For claim 18 see the various silanes found in paragraph 46 which meet this requirement.
For claim 19 again note that supra regarding the obviousness of eliminating a process step as it applies.
For claim 20 note that no such catalyst is taught by Prasse et al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
7/13/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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