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 amendments to claims 2, 4-6, 8, and 17-21. Claims 1-11 and 16-21 are pending.
Claim Rejections - 35 USC § 112
Claims 2, 4-6, 8, and 17-21 have been amended. As a result, the 112(b) rejections for claims 2, 4-6, 8-11, and 16-21 are withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 and 16-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-12 of copending Application No. 18/040,828 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the reference application and the instant application are directed towards silicone formulations in which the crosslinker is at least partially reacted with the base polyorganosiloxane polymer and the crosslinker is required to have at least one ketoxime substituent which is derived from 5-methyl-3-heptanone. Additionally, both the reference application and the instant application require identical amounts of filler, catalyst, and are intended for use as sealants, grouting compounds, or adhesives. Finally, both the reference application and the instant application require the use of a second crosslinking compound that differs from the first and may be a different ketoxime containing silane.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ahmed (US 20170044400).
Regarding Claims 1, 3-4, and 16-17,
Ahmed teaches a silicone coating composition (Abstract) which includes a hydroxyl group-terminated polydiorganosiloxane (Paragraph 68-71) which includes a ketoximino-containing silane (Paragraph 73) which can be of the following formula:
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where R3 is a C1 to C8 alkyl (Paragraph 99) and R4a and R4b can independently be C1 to C8 alkyl groups (Paragraph 100). In the above structure, no alkoxy group is present, equivalent to a=0 of the instant claims, three ketoximino groups are present on the silicon atom, equivalent to c=3 of the instant claims and 1 alkyl group is also present, equivalent to b=1 of the instant claims. The total of these groups as taught by Ahmed equal 4, meeting the requirement of a+b+c=4 of the instant claims. While Ahmed does not explicitly teach that the ketoxime substituent be derived from 5-methyl-3-heptanone, Ahmed does teach that the substituents on either side of the oxime can be C1 to C8 alkyl groups, which includes ethyl and 2-methylbutane substituents as required by the instant claims as both groups are comprised of fewer than 8 carbons and because Ahmed defines alkyl to include straight or branched carbon chains (Paragraph 53). One of ordinary skill in the art would recognize that higher molecular weight compounds are less volatile and as such, would be motivated to increase the size of the ketoxime substituent to lower the amount volatile compound that can be released during the curing process. As such, it would have been obvious prior to the effective filing date of the instant application to have used larger ketoxime substituents on the crosslinker, including the 5-methyl-3-heptanone ketoxime of the instant claims.
Regarding Claim 2,
Ahmed teaches that 0.01 to 2% by weight organometallic catalyst can be used (Paragraph 88), meeting the requirements of the instant claim.
Regarding Claims 5, 18, and 19,
Ahmed teaches that the composition contains at least one crosslinking agent of the formula (Paragraph 73) discussed above in regard to claim 1. Because of this, Ahmed discloses the use of more than one crosslinking agent containing a ketoxime substituent, which would meet the claim requirements of the instant claims as additional crosslinking agents of this type meet the requirements of the instant claims. Additionally, as Ahmed discloses compounds where there are three ketoxime substituents (equivalent to d=3 of the instant claims) and one alkyl group (equivalent to e=1 of the instant claims), by definition the crosslinkers taught by Ahmed also meet the requirements of d, e, and d+e of the instant claims.
Regarding Claims 6 and 20-21,
Ahmed teaches that the amount of crosslinker in the composition should be between 1 and 15% by weight (Paragraph 73), which overlaps with the range of the instant claim (2-8% by weight). One of ordinary skill in the art, motivated to obtain a cured composition with a desired level of strength and elasticity would alter the amount of crosslinking component in the composition in order to achieve this. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because selection of the overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the ratio of the first to second crosslinking component, as both crosslinking components are utilized for the same purpose and because Ahmed discloses the use of multiple crosslinking compounds (Paragraph 73), it would have been obvious prior to the effective filing date of the instant application to have used two crosslinking compounds in any ratio within the amount taught by Ahmed (1 to 15% by weight, Paragraph 73). See MPEP 2144.06.I.
Regarding Claim 7,
Ahmed teaches that the composition is mixed to provide a homogeneous mixture (Paragraphs 153-157). While Ahmed does not explicitly state that there is some reaction between the polydiorganosiloxane that contains hydroxyl groups and the crosslinking agents, the steps described by Ahmed are similar to those as described in the applicant’s specification. The applicant does not have a separate reaction step, so therefore the reaction to partially endcap the polymer would presumably occur during the mixing process. As such, it would logically follow that the same partial reaction would occur in the processing steps as disclosed by Ahmed as the components are similar in nature. Therefore, it would have been obvious prior to the effective filing date of the instant application for some partial endcapping of the polysiloxane to occur during the mixing.
Regarding Claim 8,
Ahmed teaches that the composition may contain a variety of fillers, including silica (Paragraph 72), diatomaceous earth (Paragraph 89), fly ash, titanium dioxide, zinc and zirconium oxides (Paragraph 121) and quartz (Paragraph 123) and may be in amounts of 5 to 60% by weight (Paragraph 121). This range is contained within the range of the instant claim (1 to 60% by weight).
Regarding Claim 9,
While Ahmed is silent on the skinning and early cracking ending times, because the composition may contain the same components as those described in the instant application, it would logically follow that the composition of Ahmed would have the same properties as those required by the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claim 10,
Ahmed teaches that the composition is cured to provide a coating (Paragraph 159), meeting the requirements of the instant claim.
Regarding Claim 11,
Ahmed teaches that the composition may be applied using any suitable means such as spraying, brushing, or rollering (Paragraph 158), which reads upon a method of using. Additionally, Ahmed teaches that the coating is useful for waterproofing a substrate, which reads on a sealant, therefore meeting the requirements of the instant claim.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive for the following reasons.
On page 10, the applicant requests that the rejection for double patenting be held in abeyance. MPEP 804.I.B.1 states “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.” As such, the rejection for nonstatutory double patenting is deemed proper and thus maintained.
On page 10, the applicant argues that the selection of the specific ketoxime is not rendered obvious by Ahmed and further on page 11 argues that reduction in volatility of the released compound during the curing process is not sufficient motivation. With regard to the motivation, the rationale used by the examiner is not required to be identical to that of the applicant. See MPEP 2144.IV. Further, US 5,359,108 (Mathew) submitted by applicant in IDS dated 2/7/2023 notes in Column 2 Lines 30-34 that vapor emissions from the sealant are issues that are both costly and time consuming. The ordinarily skilled artisan would therefore have motivation to reduce such emissions, including from the reaction of the ketoxime during the curing process. Mathew also notes other issues in reference to the use of lower molecular weight ketoximes and teaches that larger ketoximes can overcome such issues and discloses limitations on the ketoxime that would similarly encompass those of the instant application. While Ahmed does indeed not disclose the exact ketoxime as used by the applicant, the disclosure by Ahmed does note the use of alkyl groups of 1-8 carbons, which would include the ketoxime structure of the instant claims.
Finally, on page 11, the applicant notes the improvement to properties such as skinning and early cracking time. The examiner notes that while these properties may indeed be advantageous, they do not appear as limitations in the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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.
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/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765