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 .
DETAILED ACTION
Response to Amendment
Applicant's amendments filed on 04/07/2026 have been entered. Claims 1-4, 6-12 and 20-28 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn
Claim Objections
Claim 1, Formula (II) is not clearly presented.
Claim 1 is objected to because “R117” should read “R11”. Appropriate correction is required.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4, 6-12 and 20-28 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 and 16-21 of copending Application No. 18/040827. Although the conflicting claims are not identical, they are not patentably distinct from each other because copending application claims an silicone formulation comprising a hydroxy-terminated polydiorganosiloxane with chemical formula reading upon instantly claimed formula (II) (see Claim 5), crosslinkers being ketoximino-based silanes with chemical formula reading upon formula (I) (see Claim 1), and other components such as catalyst and filler; and the formulation also has identical skinning time, cracking time, and intended use for sealants, grouting compounds or adhesive. Thus the claimed subject matter as in copending application has all the technical features as recited in the instant claims 1-12 and 20-28. Therefore, it would have been obvious that the instantly claimed invention is unpatentable over the co-pending application No. 18/040827.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4, 7-12, 20-21 and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Mathew et al (US 5359108, of record, ‘108 hereafter) in view of Hass et al (US 6,413,354, ‘354 hereafter).
Regarding claims 1-4, ‘108 discloses a silicone formulation comprising a hydroxy-terminated polydiorganosiloxane (Examples 1-9); a first crosslinker being methyl (tris(methyl amyl ketoximino) silane (Example 9) satisfying presently claimed formula (I), wherein a is 0, b is 1, c is 3, R2 is methyl being a monovalent hydrocarbon having 1 carbon atom, R3 is a hydrogen, R4 is a methyl; and a second silane crosslinker being tetrafunctional alkoxy-ketoxime silane (such as tetrakis(methyl isobutyl ketoximino) silane as in Example 9), but does not specifically name a silane satisfying chemical formula (II) as in claim 1. However, in the same field of endeavor, ‘354 discloses a silicone formulation comprising a hydroxy-terminated polydiorganosiloxane (C2/L7-L20, C3/L9-L25), a crosslinking agent being methyl trimethyloxysilane, vinyl trimethyloxysilane, methyl triethyloxysilane or the like, satisfying presently claimed formula II, or/and a tetrafunctional alkoxy-ketoxime silane to provide sufficient crosslinking for the silicone resin (C4/L7-L30). In view of ‘345’s recognition that methyl trimethyloxysilane, vinyl trimethyloxysilane and tetrafunctional alkoxy-ketoxime silane are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute tetrafunctional alkoxy-ketoxime silane with methyl trimethyloxy silane or vinyl trimethyloxysilane, thereby arriving at the presently claimed invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See MPEP 2144.06". ‘345 also discloses that the silicone formulation further include an organometal catalyst (C4/L31-L44, 0.1 wt% as in Examples ) and a filler with amount such as 10 wt% as needed (C3/L60-C4/L6, Example 3), satisfying present claims 2, 9, 21 and 24-25.
Regarding claims 7 and 8, modified ‘108 teaches all the limitations of claim 1, ‘108 also discloses that the weight ratio of second crosslinker to the first crosslinked is 3 (Example 8), and the mixture of hydroxyl terminated polysiloxane with the crosslinker would render the polysiloxane being partially end-capped with the crosslinker during mixing step (See Examples 1-9).
Regarding claims 10 and 26-28, ‘108 teaches all the limitations of claim 1, but ‘108 does not expressly set forth the silicone formulation has skinning time or/and early cracking time as presently claimed. However, ‘108 discloses a silicone formulation having hydroxy-terminated polydiorganosiloxane and two crosslinkers being substantially identical to the silicone formulation as presently claimed, it is reasonable to expect that the silicone formulation of ‘108 has the same characteristics as that of the presently claimed silicone formulation, including the skinning time and early cracking time as claimed, in absence of an objective showing to the contrary (See MPEP 2112).
Regarding claim 11, ‘108 also discloses a cured silicone (Examples 1-9, C6/L5-C8/L2).
Regarding claims 12 and 20, ‘108 also discloses that the silicone formulation can be used as a sealant or an adhesive, wherein the method of using it naturally comprising steps of providing silicon formulation and applying silicon on a substrate ([C6/L65-C8/L2).
Allowable Subject Matter
Claims 6 and 22-23 would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims. The reason for the allowance is that prior art of record does not specifically disclose, teach or fairly suggest a composition as recited in the present claim1, wherein the formula II satisfying present claim 6 or claims 22-23.
Response to Arguments
Applicant's arguments filed on 04/07/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
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 RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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