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 .
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-18 are 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 10 recites the limitation "the period of time" and “the end of storage” in lines 22-23. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "wherein filling" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "wherein filling" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Pub. No. 2023/0357502 to Stanjek et al.
The applied reference has a common inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
As to claims 10-16, Stanjek discloses a method for producing a crosslinkable composition by mixing 100 parts by weight of alkoxysilyl terminated polymers represented by the following (022-0026):
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2 to 70 parts by weight of rheological modifiers that are preferably polyamide waxes (0151-0153) and at least 1 part by weight of silanes represented by the following formula:
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Wherein the process including mixing the components at room temperature and storing at 20°C for 14 days (0235, 0247).
As to claims 17-18, Stanjek discloses a viscosity at the time of filling is at most 700 mPas (0064, 0213).
Claim Rejections - 35 USC § 103
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.
Claims 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2008/0269405 to Okamoto et al. in view of U.S. Patent Pub. No. 2021/0115311 to Mennecke et al.
As to claims 10-15, Okamoto discloses a curable one-component composition comprising 100 parts by weight of a silylated polyurethane containing the following structure (0057:
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Obtained by reacting:
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With the following:
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And at least 0.1 to 20 parts by weight based on 100 parts of the polymer of a thixotropic agent selected from polyamide waxes, metal soaps, or castor oil derivative (0176). Okamoto discloses mixing the components at room temperature and air-tightly storing the mixed composition into cartridges to obtain a storage stable composition (0194, 0199, 0210).
The time of storage is not clearly disclosed.
However, Mennecke within the same field of endeavor discloses a curable composition comprising a polymer containing reactive silane groups and thixotropic agents and describes the mixed polymer components as storage stable. Mennecke discloses storage stable refers to a composition when it can be stored at room temperature in a suitable container, typically at least 3 months up to 6 months or more, without any change in its application or use properties (0027). Accordingly, at the time of filing it would have been obvious to a person of ordinary skill in the art that similar composition stored in the same manner (air tight cartridges) would still maintain suitable viscosity at room temperature even after prolonged storage. This is supported by Mennecke.
As to claim 16, Okamoto discloses the addition of 0.1 to 20 parts by weight of an aminosilane coupling agent such as aminopropyltrimethoxysilane (See Examples, 0147).
As to claims 17-18, with regard to the viscosity, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients, processes for preparing, and the same processes for storing. Therefore, the claimed effects and physical properties, i.e. viscosity values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763