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 .
Status of Claims
The examiner acknowledges the amendment to claim 10 and the cancellation of claim 14. Claims 10-13 and 15-18 are pending.
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 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:
PNG
media_image1.png
126
372
media_image1.png
Greyscale
and uses a silane crosslinking agent (Abstract) which may be of the following structure:
PNG
media_image2.png
50
296
media_image2.png
Greyscale
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, while Von Malotki doesn’t explicitly teach a compound equivalent to B2, the compound B2 as disclosed in the applicant’s specification may be similar to that of compound A. As Von Malotki teaches that more than one siloxane of this type may be incorporated (Paragraph 21) and that the viscosity of these compounds is permitted to be as low as 10 mPa ·s (Paragraph 31), a compound like B2 is permitted to be used.
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 12/5/2025 have been fully considered but they are not persuasive for the following reasons.
On page 5, the applicant argues that Von Malotki does not teach the combination of the instant claims, specifically that Von Malotki does not teach a siloxane with 380 to 2000 repeat units. The examiner disagrees. Von Malotki teaches siloxanes that meet all other requirements of the instant claims, and it logically follows that by disclosing siloxanes with viscosities within the range of those used by the applicant that the siloxanes utilized by Von Malotki would meet the repeat unit requirement, even if the exact number is not disclosed. Further, while the applicant states that viscosity is determined by more than just the length of the polymer, with which the examiner agrees, Von Malotki states a preference for linear siloxanes (Paragraph 31), which also matches the compounds used by the applicant in the examples and which in combination with meeting the other limitations, would result in Von Malotki teaching polymers that would by necessity meet the repeat unit requirement.
On page 6, the applicant points to unexpected results and further argues that Von Malotki does not recognize the problem which the applicant is addressing. While the examiner agrees that Von Malotki does not explicitly address the applicant’s problem, this is not required for a finding of obviousness. Further, the applicant’s argument is directed to a lack of soiling on natural stone, a requirement that does not appear as a limitation in the claims. Further, Von Malotki does not use low molecular weight additives and additionally, notes that it is preferred to not use plasticizer (Paragraph 12), which the applicant points to as the solution to the soiling issue with natural stone. Thus, the composition of Von Malotki would have solved the applicant’s issue in spite of not mentioning this outcome. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). See MPEP 2112.I.
As such, the previous rejection is upheld.
Other References Considered
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Prasse (US 20180194902) teaches a process of preparing alkoxy-containing polysiloxane similar to those of the instant application as well as moisture-curable compositions containing them.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765