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 .
Response to Amendment
The amendment filed 29 December 2025 has been entered. Claims 2-6, and 8-15 are currently pending in the application. Claims 12-15 are withdrawn. The rejections of record from the office action dated 02 October 2025 not repeated herein have been withdrawn.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Bizhong et al. (WO 2018/052646 A1).
Regarding claims 2-6 and 8-11, Bizhong discloses a composition comprising an NCO functional prepolymer formed using a polyol such as PEG, carbinol terminated polyorganosiloxane such as PDMS and an isocyanate such as IPDI, wherein the organopolysiloxane may contain two or more carbinol groups (claims 1-5, [0002], [0008]-[0010], [0057]-[0058], [0125], Example 7 Table 5), wherein the composition comprises a molar ratio of isocyanate groups to active hydroxl of 1.001 to 1,000,000, also Example 7 shows an excess of NCO groups to OH groups (i.e. stoichiometric excess of isocyanate functional groups in component (C) over the total amount of isocyanate reactive groups of components (A) and (B))([0065] Table 5) wherein the composition may comprise an additional polyol (i.e. isocyanate reactive component) [0125]-[0128] and may comprise fillers ([0077]). It would have been obvious to one of ordinary skill in the art to use any components disclosed and thereby arrive at the claimed invention. Given that Bizhong discloses that the solvent is optional and the composition may comprise 0% solvent ([0062]-[0065]), it is the examiner’s position that the composition is not a dispersion.
Regarding claims 2-4, it would appear that the carbinol groups may be the same and terminal or pendant ([0057]) and would meet the limitations of claims 2-4.
Regarding claim 5, an NCO content of 12.3 wt% is exemplified and would therefore be obvious to use ([0044]) and it would appear that the backbone of the polyorganosiloxane would comprise a silicone moiety.
Regarding claim 6, it would appear that the polyorganosiloxane has a formula that meets the general formula of claim 6. Further, the isocyanate may be polymeric MDI ([0043], [0054]) and may be formed in the presence of a catalyst and filler ([0066], [0077]).
Regarding claim 9, it is the examiner’s opinion that the additional polyol could be considered a second component and therefore the composition could be considered a two component system.
Regarding claim 10, the additional polyol may be PEG (i.e. polyol; number average functionality 2; polyether)([0125]-[0128]).
Regarding claim 11, given that the composition may comprise a filler ([0077]), it is the examiner’s position that the composition comprises a filler. Additionally, it is noted that the composition may comprise a chain extender ([0049], [0061]).
Response to Arguments
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive.
Applicant argues that Bizhong does not disclose a composition that is not a dispersion.
Applicant’s argument is unpersuasive because given that Bizhong discloses that the solvent is optional and the composition may comprise 0% solvent ([0062]-[0065]), it is the examiner’s position that the composition is not a dispersion.
Applicant argues that Bizhong does not disclose an isocyanate functional prepolymer that is formed under reaction conditions providing a stoichiometric excess of isocyanate-functional groups relative to the total amount of isocyanate reactive groups.
Applicant’s argument is unpersuasive because the composition comprises a molar ratio of isocyanate groups to active hydroxl or other reactive groups of 1.001 to 1,000,000, also Example 7 shows an excess of NCO groups to OH groups (i.e. stoichiometric excess of isocyanate functional groups in component (C) over the total amount of isocyanate reactive groups of components (A) and (B))([0065] Table 5).
Applicant argues that the examples of Bizhong use solvent.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant argues that Bizhong does not teach selecting conditions to generate an isocyanate-functional prepolymer in the claimed non-dispersion composition and the broad molar ratio disclosed does not amount to a teaching of the claimed prepolymer.
Given that Bizhong teaches (A), (B) and (C) as claimed, as well as an isocyanate reactive component and a stoichiometric excess of isocyanate groups as claimed and given that no solvent is required, it is the examiner’s position that they would react in the same manner, including forming a prepolymer as presently claimed.
Applicant argues that Bizhong relies on copolymer materials processed in solvent-rich and moisture tolerant environments and this is incompatible with preserving free isocyanate functionality.
It is noted that solvent is not required. Further, given that the instant claim is directed to an intermediate product and given that Bizhong teaches (A), (B) and (C) as claimed, as well as an isocyanate reactive component and a stoichiometric excess of isocyanate groups as claimed and given that no solvent is required, it is the examiner’s position that they would react in the same manner, including forming a prepolymer as presently claimed during the process as an intermediate product.
Applicant argues impermissible hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that instant Examples 1-9 show unexpected results of compositions that remain flowable prior to cure and subsequently polymerize to form continuous polyurethane coatings and provide uniform and mechanically robust coatings and have high cohesive strength, cohesive failure and strong anchorage while retaining flexibility and integrity following thermal cure.
Applicant’s argument is unpersuasive because the data presented in Examples 1-9 is not commensurate in scope with the instant claims. Examples 1-9 are directed to compositions comprising 24.65-40.69 % polymeric MDI, 47-28-73.82% homopolymer diol, 1.36-13.72% bis-hydroxyethoxypropyl dimethicone, 0.05% stannous octoate in 2-ethylhexanoic acid, 3-6% treated or untreated fumed silica and 0.06-0.63% benzoyl chloride. While instant claim 8 is broadly directed to a composition comprising an isocyanate functional prepolymer comprising the reaction product of a polyol and an organopolysiloxane having at least two carbinol functional groups per molecule and a polyisocyante in any amount, an isocyanate reactive component in any amount and any filler in any amount.
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 JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
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, Aaron Austin can be reached at (571) 272-8935. 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.
/JAMES C YAGER/Primary Examiner, Art Unit 1782