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 .
Claims 1-3 and 5-20 are pending as amended on April 13, 2026. Support for amended claim 1 is found original claim 4. Support for new claim 20 is found in [0052]. Claim 4 is cancelled. Claims 7-15 stand withdrawn from consideration.
The rejections of claim 1-3 and 5-19 were solely modified to reflect the incorporation of claim 4 into claim 1. The new grounds of rejection set forth below were necessitated by new claim 20. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Response to Arguments
Applicant’s arguments filed April 13, 2026 have been fully considered.
Applicant’s arguments, see page 6, with respect to the rejection(s) of claim(s) 1-3, 5-6, and 17 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Kawakami (US 7,759,425 B2) does not teach the specific carboxylic acid metal salts recited in amended claim 1. Therefore, the rejection has been withdrawn.
Applicant argues (page 7) that amended claim 1 is not obvious over Kawakami in view of Fujimoto (US 2013/0150530 A1) because one would not have had a reasonable expectation of success in substituting the tin octylate, tine naphthenate, or tin stearate of Kawakami for the tin neodecanoate of Fujimoto. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). See MPEP 2143.02.II. Applicant points to Fujimoto’s teachings about preventing vaporization and argues that one would not have had a reason to substitute the tin octylate, tine naphthenate, or tin stearate of Kawakami for the tin neodecanoate of Fujimoto to prevent evaporation during heating because Kawakami’s composition is an adhesive for thermoplastic resins and Fujimoto’s composition is a hot-melt adhesive. This argument is not persuasive because it does not articulate a reason why one would not have had a reasonable expectation of success. Applicant instead addresses a motivation for combining references that was not relied upon in the rejection. The prior art rejection relies on substituting the tin octylate, tin naphthenate, or tin stearate of Kawakami with the tin neodecanoate of Fujimoto using the motivation that Fujimoto teaches that using tin neodecanoate leads to a higher curing rate and higher adhesiveness (Fujimoto, [0084]). In this case, one would have had a reasonable expectation of successfully producing a curable composition because Fujimoto teaches tin neodecanoate as an advantageous alternative to tin octylate, tin naphthenate, or tin stearate for cross-linking silanol containing polymers (Fujimoto, [0042], [0077-0079], and [0084]).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 is indefinite because it depends from cancelled claim 4. For the purposes of examination, claim 16 is interpreted as being dependent on claim 1.
Claim Rejections - 35 USC § 103
Claims 1-3, 5-6, and 16-18 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) in view of Fujimoto (US 2013/0150530 A1).
Regarding claims 1 and 16, Kawakami teaches 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.
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 1.
Kawakami does not teach the carboxylic acid metal salts of claim 1.
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. The curable composition of Kawakami wherein the carboxylic acid metal salt is titanium neodecanoate reads on claim 1.
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 1 and 16.
Regarding claims 2-3, Kawakami teaches the curable composition of claim 1 and further teaches 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 teaches the curable composition of claim 1 and further teaches 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 teaches the curable composition of claim 1 and further teaches 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).
Regarding claim 18, Kawakami teaches the curable composition of claim 1. 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.
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) in view of Fujimoto (US 2013/0150530 A1) 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.
Claim 20 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) in view of Fujimoto (US 2013/0150530 A1) as applied to claim 1 above, and further in view of Matsuki (WO-2013042638-A1, English translation provided) and evidenced by Sanz (US 2022/0363900 A1) and Takahashi (JP-2019183090-A, English translation provided).
Kawakami teaches the curable composition of claim 1, as discussed above.
Kawakami teaches that the organic polymers have a Mn of 3,000-100,000 and that too low of a Mn increases hardness of the composition but too high of a Mn increases the viscosity too much such that workability is poor (Kawakami, col. 5, lines 48-58). One would therefore understand that increasing Mn increases viscosity and decreasing Mn increases hardness. Kawakami is silent as to suitable viscosities of the organic polymer components.
Kawakami exemplifies Kaneka MS 227 as the organic polymer (Kawakami, col. 17, lines 1-4). Kaneka MS 227 is a polyoxypropylene polymer with methyldimethoxysilyl groups (Kawakami, col. 17, lines 1-4), reading on an organic polymer containing reactive silicon groups represented by formula (1) where R1 is an alkyl group with 1 carbon atom (methyl), X is a hydrolyzable group (methoxy), and a is 2. This polymer has a viscosity of about 34,000 cP at 23 °C and a number-average molecular weight (Mn) of about 27,000 g/mol, as exemplified by Sanz (Sanz, [0061]).
Kawakami further teaches that the organic polymer can comprise two or more polymers (Kawakami, col. 7, lines 10-12). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any two organic polymers of Kawakami, including Kaneka MS 227 and another organic polymer. An organic polymer mixture comprising Kaneka MS 227 reads on an organic polymer comprising a high viscosity polymer where the high viscosity polymer has a viscosity of 34,000 cP at 23 °C.
Kawakami does not explicitly teach wherein the organic polymer comprises a low viscosity organic polymer.
However, Matsuki teaches an adhesive composition (Matsuki, [0004]) comprising an organic polymer with two or more crosslinkable hydrolyzable groups and a polyether compound having a crosslinkable hydrolyzable group at only one terminal (Matsuki, [0013]). The composition is excellent in workability (Matsuki, [0016]). Matsuki teaches that including a polyether compound having a crosslinkable hydrolyzable silyl group at only one end and a viscosity of 100-1,000 mPa*s decreases the viscosity of the composition without causing bleed out or causing the cured composition to be brittle (Matsuki, [0029-0030]). A range of 100-1,000 mPa*s converts to 100-1,000 cP. As specific examples of commercially available products, Matsuki teaches SAT-115 from Kaneka (Matsuki, [0029]). Kaneka SAT-115 satisfies the organic polymer structure of Kawakami and instant claim 1 (see [0051] of the instant specification). Kaneka SAT-115 has a Mn of about 5,000, as evidenced by Takahashi (Takahashi, [0074]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have combined the Kaneka MS 227 of Kawakami with the Kaneka SAT-115 of Matsuki in order to decrease the viscosity of the composition without causing bleed out or causing the cured composition to be brittle. One would have had a reasonable expectation of success because Kawakami teaches that the organic polymer can comprises two or more polymers and Kaneka SAT-115 satisfies the structural and Mn requirements of Kawakami’s organic polymer component. Kaneka SAT-115 reads on the claimed low viscosity organic polymer and has a viscosity within the claimed range of less than 5,000 cP at 23 °C (Matsuki teaches a viscosity within the range of 100-1,000 cP).
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.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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