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 of Group I, claims 1-6 and 16-19 in the reply filed on 11/05/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-6, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawakami (US 7,759,425 B2, Cite. No. 1 on 5/5/2023 IDS).
Regarding claim 1, Kawakami discloses a curable composition (col. 1, lines 66-67), comprising: an organic polymer (polyoxyalkylene polymer, col. 1, line 67) containing reactive silicon groups represented by the following general formula (1) (col. 2, lines 1-4):
-Si(R13-a)Xa (1)
wherein R1 represents an alkyl group having 1 to 20 carbon atoms, an aryl group having 6 to 20 carbon atoms, or an aralkyl group having 7 to 20 carbon atoms (col. 2, lines 5-7),
wherein X represents a hydrolyzable group, wherein each X is the same or different when two or more X are present (col. 2, lines 11-13),
a is an integer from 1 to 3 (col. 2, line 14),
when a is 1, each R1 may be the same or different (when two R1’s are present, they may be the same or different, col. 2, lines 10-11), and
when a is 2 or 3, each X may be the same or different (when two or more Xs are present, they may be the same or different, col. 2, lines 11-13);
a chlorinated polyolefin polymer ((B) a polyolefin polymer, col. 2, line 14; component (B) may be a chlorinated polyolefin polymer, col. 2, lines 26-27); and
a silanol condensation catalyst that is a bivalent tin compound such as tin octylate, tin naphthenate, or tin stearate (col. 13, lines 8-27), reading on a carboxylic acid metal salt.
Regarding claims 2-3, Kawakami discloses the curable composition of claim 1 and further discloses wherein the organic polymer comprises a main chain of polyoxypropylene (col. 2, lines 16-17) (claim 2) and a group represented by the following general formula (3) (col. 2, lines 18-26):
—NR3C(=O)— (3)
wherein R3 represents a hydrogen atom, an alkyl group having 1 to 20 carbon atoms, an aryl group having 6 to 20 carbon atoms, or an aralkyl group having 7 to 20 carbon atoms (claim 3).
Regarding claims 5-6, Kawakami discloses the curable composition of claim 1 and further discloses that the composition comprises an additive (claim 5) that is a filler (Kawakami, col. 13, lines 8-11), a plasticizer (col. 2, lines 34-35), vinyltrimethoxysilane reading on a dehydration agent (col. 14, line 19 and col. 18, lines 19-20), a stabilizer (col. 15, lines 2-3), and combinations thereof (claim 6).
Regarding claim 17, Kawakami discloses the curable composition of claim 1 and further discloses wherein the chlorinated polyolefin polymer includes one of chlorinated polyethylene, chlorinated polypropylene, copolymers thereof, or a chlorinated polyolefin polymer modified with at least one of acrylic acid moieties (acryl), maleic acid, or maleic acid anhydride (maleic anhydride) (col. 7, lines 17-24).
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (US 7,759,425 B2, Cite. No. 1 on 5/5/2023 IDS) as applied to claim 1 above.
Kawakami teaches the curable composition of claim 1, as discussed above. Kawakami further teaches that the curable composition comprises 1-50 parts of component (B) and 1-50 parts of component (C) per 100 parts by weight of component (A) (col. 10, lines 22-27). Component (A) reads on the instant organic polymer, component (B) reads on the instantly claimed chlorinated polyolefin, and component (C) is a hydroxyl group-containing hydrogenated resin. Kawakami further teaches that the amount of silanol condensation catalyst (corresponding to carboxylate metal salt) is 1 to 10 parts by weight for 100 parts by weight of component (A) (col. 13, lines 50-53). Based on 100 parts by weight of component (A), the composition of Kawakami further comprises 0.5-10 parts adhesion promoting agent (col. 14, lines 30), 60-300 parts filler (col. 14, lines 43-45), 1-30 parts thixotropic agent (col. 14, lines 56-58), and 0.1-10 parts anti-aging agent (col. 15, lines 4-7).
The composition of Kawakami therefore comprises 100 parts of organic polymer, 1-50 parts of chlorinated polyolefin, 1-10 parts carboxylate metal salt, and 63-400 parts of additional components (1+0.5+60+1+0.1=62.6 and 50+10+300+30+10=400). Kawakami therefore teaches about 18-61% by weight of the organic polymer (100/(100+50+10+400)=0.178 and 100/(100+1+1+63)=0.606), 0.2-23% by weight of chlorinated polyolefin (1/(100+1+10+400)=0.002 and 50/(100+50+1+63)=0.234), and 0.2-6% by weight of carboxylate metal salt (1/(100+50+1+400)=0.0018 and 10/(100+1+10+63)=0.057).
A range of about 18%-61% by weight organic polymer falls within the claimed range of about 10% to about 70% by weight. A range of about 0.2%-23% by weight chlorinated polyolefin overlaps with the claimed range of about 0.5% to about 15% by weight. A range of about 0.2%-6% by weight catalyst (bivalent tin compounds) overlaps with the claimed range of the carboxylate metal salt is present in an amount of about 0.1 to about 5% by weight. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (US 7,759,425 B2, Cite. No. 1 on 5/5/2023 IDS) as applied to claim 1 above, and further in view of Fujimoto (US 2013/0150530 A1).
Kawakami teaches the curable composition of claim 1, as discussed above. Kawakami teaches that the silanol condensation catalyst is not particularly limited (Kawakami, col. 13, lines 12-13) and teaches examples that include tin octylate, tin naphthenate, and tin stearate (Kawakami, col. 13, lines 26-27). These examples are carboxylic acid metal salts, but do not read on those recited in claim 4.
However, Fujimoto teaches silanol condensation catalysts that are useful for crosslinking silyl group-containing polymers (Fujimoto, [0042]) and teaches their use in curable adhesive compositions (Fujimoto, [0011]). Fujimoto teaches metal carboxylates, including those taught by Kawakami. Divalent tin carboxylates where the carboxylic acid component is caprylic acid, naphthenic acid, or stearic acid (Fujimoto, [0077-0079]) correspond to tin octylate, tin naphthenate, and tin stearate. Fujimoto further teaches that the metal carboxylate is preferably one in which the carbon atom adjacent to the carbonyl group is a tertiary carbon, such as tin 2-ethylhexanoate, or a quaternary carbon, such as tin neodecanoate, because of a high curing rate (Fujimoto, [0084]). In addition, a metal carboxylate in which the carbon atom adjacent to the carbonyl group is a quaternary carbon provides higher adhesiveness when compared with other metal carboxylates (Fujimoto, [0084]). Fujimoto teaches that tin neodecanoate is preferred.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the tin octylate, tin naphthenate, or tin stearate of Kawakami with the tin neodecanoate of Fujimoto in order to achieve a higher curing rate and higher adhesiveness. This substitution reads on wherein the carboxylic acid metal salt is titanium neodecanoate (claim 4).
Fujimoto further teaches potassium neodecanoate (potassium carboxylates, Fujimoto, [0077] and specific examples of the carboxylic acid include… neodecanoic acid…, Fujimoto, [0078]). Fujimoto teaches that the metal component of the metal carboxylates can be tin, lead, potassium, calcium, barium, titanium, zirconium, hafnium, vanadium, manganese, iron, cobalt, nickel, and cerium because these metal carboxylates have high catalytic activities (Fujimoto, [0077]). Fujimoto further teaches that the metal carboxylate is preferably one in which the carbon atom adjacent to the carbonyl group is a tertiary carbon or a quaternary carbon because of a high curing rate (Fujimoto, [0084]). In addition, a metal carboxylate in which the carbon atom adjacent to the carbonyl group is a quaternary carbon provides higher adhesiveness when compared with other metal carboxylates (Fujimoto, [0084]). Neodecanoic acid is also preferred as the carboxylic acid component in view of availability, curability, and workability (Fujimoto, [0087]). Given the disclosure of Fujimoto, one of ordinary skill would have expected that that selecting neodecanoic acid as a carboxylic acid component would be beneficial for increasing curing rate, adhesiveness, and workability. One would have also expected that selecting potassium as the metal component would produce sufficiently high catalytic activity.
Given the disclosure of Fujimoto, one of ordinary skill in the art would have understood that potassium neodecanoate could be used as a catalyst in the curable composition and would be expected to have sufficient curing rate, adhesiveness, and workability. Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). MPEP § 2143, rationale (B). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the tin octylate, tin naphthenate, or tin stearate of Kawakami with the potassium neodecanoate of Fujimoto. One would have had a reasonable expectation of successfully producing a curable composition because Fujimoto teaches that potassium carboxylates have high catalytic activity and that neodecanoic acid is preferred as the carboxylic acid component for increasing curing rate, adhesiveness, and workability. The curable composition of Kawakami wherein the carboxylic acid metal salt is potassium neodecanoate reads on claims 4 and 16.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (US 7,759,425 B2, Cite. No. 1 on 5/5/2023 IDS) as applied to claim 1 above, and further in view of Ishida (JP 2019147925 A, English translation provided, Cite. No. 2 on 1/05/2024 IDS).
Kawakami teaches the curable composition of claim 1, as discussed above. Kawakami further teaches that the composition includes anti-aging agents such as antioxidants ultraviolet absorbents, and light stabilizers (Kawakami, col. 14, line 63 to col. 15, lines 4-7) and can include additives such as a storage stability improver (Kawakami, col. 15, lines 12-15). Kawakami further demonstrates the use of a dehydrating agent (A-171 vinyltrimethoxysilane in Kawakami Table 1). One of ordinary skill would expect adjusting the amounts of these components to contribute to the storage stability of the composition; however, Kawakami is silent as to the change in viscosity after storage at 50 °C for 4 weeks.
However, Ishida teaches storage stability metrics for silicone adhesives having hydrolyzable silyl groups (Ishida, [0002]). The viscosity of the composition of Ishida increases from 250,000 mPa*s to 350,000 mPa*s or less after storage at 50 °C and 80% relative humidity for 4 weeks (Ishida, [0014]). This corresponds to an up to 40% viscosity increase after storage at 50 °C for 4 weeks. Ishida teaches that the storage condition of 50 °C and 80% relative humidity for 4 weeks corresponds to a storage period of about 1.5-2 years at room temperature and further teaches that the adhesive has low viscosity even after long-term storage and is easy to handle during use (Ishida, [0014]). Given the disclosure of Ishida, one of ordinary skill would have recognized that a change in viscosity of less than 40% after 4 weeks storage at 50 °C is desirable as an indicator that the composition will be easy to handle after long-term storage.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to form a composition according to Kawakami having a change in viscosity of less than 40% after storage at 50 degrees Celsius for 4 weeks, as Fujimoto demonstrates this range as being suitable for similar compositions and desirable for ease of handling after long-term storage. This represents the use of a suitable range of change in viscosity after storage at 50 degrees Celsius for 4 weeks in a similar adhesive application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Conclusion
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766