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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/29/2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 10-13 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Von Malotki (US 20170002201).
Regarding Claims 10-13,
Von Malotki teaches a polysiloxane composition (Abstract) in which the following structure is utilized as the polydiorganosiloxane:
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and uses a silane crosslinking agent (Abstract) which may be of the following structure:
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and which is curable by condensation crosslinking (Abstract). Von Malotki also teaches that the R1 and R2 groups (equivalent to R of the instant claims) may be 1 to 12 carbon chains that may be linear, branched, aliphatic, or aromatic (Paragraph 28) and may contain heteroatoms (Paragraph 28). Von Malotki additionally teaches that R3 (equivalent to R1 of the instant claims) may be of the same type as R1 and R2, but is preferably methyl or phenyl (Paragraph 34) and that R4 (equivalent to R2 of the instant claims) is preferred to be methoxy or ethoxy (Paragraph 35), meeting the requirements of claim 10 and teaches that p (equivalent to a of the instant claims) is 0-2 (Paragraph 30). Von Malotki also teaches that this compound has an m value that affords a viscosity that is preferably 5,000 to 120,000 mPa ·s (Paragraph 31) at 23 degrees which like 25 degrees denotes room temperature, which overlaps with the range of the instant claim (>= 6,000). One of ordinary skill in the art would be motivated to adjust the viscosity to meet the needs of the desired application and as such, it would have been obvious to have chosen a compound with a viscosity meeting this requirement. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Von Malotki teaches that the crosslinker compound shown above (equivalent to B1 of the instant claims) has two or more hydrolysable groups (R7 in the structure shown above), but generally contains three or more (Paragraph 41). Von Malotki discloses a variety of methoxy and ethoxy containing examples of this compound with R6 (equivalent to R3 of the instant claims) being alkyl groups of 1 to 12 carbons with optional heteroatoms (Paragraph 46), and specifically lists compounds including tetraethoxysilane and phenyltriethoxysilane (Paragraph 53) and that the incorporation level is preferably 1 to 10% by weight of the overall composition (Paragraph 57). As Von Malotki states that the polysiloxane is preferably 15 to 70% by weight of the total composition (Paragraph 40), this range overlaps with the range of claim 13. One of ordinary skill in the art would no doubt be aware that increasing crosslinking density results in a stronger and less flexible cured product and would be motivated to alter the amount of the crosslinking compound to obtain the desired characteristics in the final cured product. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. With regard to the molecular weight of the compound, Von Malotki discloses several crosslinkers with molecular weights of greater than 195, including those listed above.
Additionally, Von Malotki teaches the use of one or more crosslinkers (Paragraph 41) which includes compounds such as hexamethoxysiloxane, octaethoxytrisiloxane, and siloxanes formed from the hydrolysis and condensation of two or more silanes (Paragraph 55), which meet the requirements of compound B2. Von Malotki further notes that one of ordinary skill in the art would be aware of the possible formation of oligomeric siloxanes when using partially hydrolyzed silanes (Paragraph 54), which would further read upon compounds that meet the requirements of compound B2. While Von Malotki does not specify the viscosity of these compounds, it would logically follow that small oligomers, including di- and trisiloxanes would have low viscosity values that would meet the requirement.
Finally, an amount of less than 0.1% by weight would include an amount of zero. While Von Malotki is silent on the amount of compounds with molecular weights below 195 Da, none of the examples, either inventive or comparative (Table 1) disclosed by Von Malotki contain compounds of this molecular weight and further, Von Malotki teaches nonpolymeric additives to the composition towards higher molecular weight options as preferrable (Paragraph 55 for crosslinkers, Paragraph 89 for adhesion promotors), and as such, it would logically follow that by not introducing compounds with molecular weights of 195 or less, the amount would meet the requirement of the instant claim.
Regarding Claims 15 and 16,
Von Malotki discloses the overall composition, including compounds of the type required of B2 as discussed above in regard to claim 10. Von Malotki also teaches that a variety of additives may be used, including fillers (Paragraph 59), catalysts which read upon curing accelerators of the instant claims (Paragraph 75), optionally adhesion promoters (Paragraph 89), and optionally plasticizers (Paragraph 81), and Von Malotki states that in one preferred embodiment, the formulation is substantially plasticizer free (Paragraph 88), meeting the requirement of claim 16.
Regarding Claim 17,
Von Malotki teaches the composition is mixed from the constituents (Paragraph 114) with each component weighed (Paragraph 113). It would necessarily follow that if the components are weighed, that they are mixed individually, meeting the requirement of the instant claim.
Regarding Claim 18,
Von Malotki teaches that the composition is useful as an adhesive and sealant (Paragraph 103). As both adhesives and sealants need to be applied to a substrate, it would logically follow that this application would require spreading of the composition, which reads upon shaping and that the cured composition would thus be an article, meeting the requirement of the instant claim.
Response to Arguments
Applicant's arguments filed 7/29/2026 have been fully considered but they are not persuasive for the following reasons.
On page 5, the applicant argues that because compound B2 is no longer optional that Von Malotki does not teach the required components. The applicant also argues that the examiner points to Von Malotki not explicitly teaching compound B2. The examiner points out that Von Malotki does not explicitly teach these compounds primarily on the basis of the viscosity requirement. However, the viscosity is an inherent property to a compound and as noted in the rejection, Von Malotki teaches compounds that fit the structural definition of compound B2 including di- and trisiloxanes as well as oligomers of silanes that would logically meet the viscosity requirement on the basis of their low molecular weights.
On page 6, the applicant argues that the ordinarily skilled artisan would not be motivated to have included a low molecular weight, low viscosity component, however Von Malotki teaches the use of siloxanes with viscosities as low as 10 but more preferably 100 mPa (Paragraph 37). While the applicant argues that the reduced soiling observed is an unexpected result, Von Malotki teaches the composition as useful in construction (Abstract) and where it can contain similar components in similar amounts. In combination, the composition of Von Malotki would meet the requirements of the instant claims, and it would logically follow, would also have possessed the limited soiling as well.
As a result, the rejection is maintained.
Conclusion
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
