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 .
Election/Restrictions
Newly submitted claim 15 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The originally presented claims are related to claim 15 as product and process of use. The inventions are distinct as the product as claimed can be used in materially different processes of using that product. See MPEP § 806.05(h).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 15 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 and 10-14 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by Mizuno et al. (WO 2012/057281).
In the abstract, claims and Example 41, Mizuno et al. teach a curable composition comprising:
an organic polymer, having number-average molecular weight preferably from 3000 to 30,000, including an average of 0.8 or more crosslinkable (hydrolyzable) silicon groups in a molecule (the present A), and
a catalyst is obtained by mixing
5.0 to 20 parts a silane compound (the present D), based on 100 parts of the crosslinkable (hydrolyzable) silicon groups containing organic polymer, obtained by reacting
an epoxysilane compound (the present E) represented by their formula (1),
an aminosilane compound represented by their formula (2), and
one or more titanium catalysts selected from the group consisting of titanium chelates represented by formula (3) and titanium chelates represented by formula (4), at a mixing ratio of 0.1 to 30 moles of the silane compound to 1 mole of the titanium catalyst, and
aging the mixture at a reaction temperature of 30-100°C.
Mizuno et al. teach that the curable composition further contains 0.1 to 20 parts, based on 100 parts of the crosslinkable (hydrolyzable) silicon groups containing organic polymer, of a silane compound (the present C) represented by formula (12) and exemplified by decyltrimethoxysilane; and 1 to 200 parts, based on 100 parts of the crosslinkable (hydrolyzable) silicon groups containing organic polymer, of a filler such as amorphous silica (the present B), having a grain diameter of 0.01-300 μm.
While Mizuno et al. do not expressly teach that a coating formed from the claimed curable composition applied and cured on a concrete substrate is waterproofing, the cured coating from the curable composition on a concrete surface is not the product presently being claimed. The recited property of waterproofing is not a property of the claimed curable composition, but rather a product of a final product from using the curable composition to coat and cure on a concrete surface. Thus, this recited waterproofing property of the final product formed from the claimed intermediate curable composition is not given patentable weight as it is not actually a property of the claimed curable composition.
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 9 are rejected under 35 U.S.C. 102(b) as anticipated by or, in the alternative, 35 U.S.C. 103(a) as being unpatentable over Mizuno et al.
While Mizuno et al. do not expressly teach the disclosed the waterproofing properties of the product form the composition, it is reasonable that the composition of Mizuno et al. would possess the presently claimed waterproofing properties since the composition of Mizuno et al. is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Claim(s) 1-7 and 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stanjek et al. (USPN 20130029037) in view Ando et al. (USPN 20150125684) or Murayama (JP 2015-508419).
In the ¶’s 16-19, 43, the Claims and Examples, Stanjek et al. teaches a moisture-curable coating composition comprising
a hydrolysable silane-terminated polymers (P) having a terminal group represented by general formula (I) (the present A) having an average molecular weight preferably from 2,000 to 25,000,
a reactive plasticizer (RW) represented by general formula (II), that is a silane compound having an alkyl group R5 having preferably at least 8 carbon atoms (the present C),
5-50 mass% of a filler that is preferably silica (the present B),
an adhesion promoter (H) such as epoxysilane(the present E), and
a curing catalyst (K);
wherein Stanjek et al. teach that the hydrolysable silane-terminated polymers silane-terminated polymer is selected from polyester, polyether, polyalkylene and polyacrylate.
Stanjek et al. teaches the composition to be useful for sealing building materials such as concrete and wood against water penetration inside and outside the building or on the roof and avoiding material damage over time.
Stanjek et al. differ from the claimed invention in that the compound resulting from partial condensation of silyl groups of an aminosilane (the present D), is not disclosed. However, both Ando et al. and Murayama teach that such curing compositions with hydrolysable silane-terminated polymers in sealing material, coating material, or adhesives for building structures, incorporate compounds resulting from partial condensation of silyl groups, for the purpose of lower water absorption, waterproof durability, and adhesive durability, etc.
In ¶ 15, Ando et al. teaches a waterproof coating material comprising 100 parts by weight of at least one of a polyoxyalkylene polymer containing hydrolyzable silyl groups; and preferably 0.1 to 10 parts by weight, more preferably 0.2 to 5 parts by weight, of at least one compound obtained by partial condensation of silyl groups of an aminosilane alone or of a combination of an aminosilane and another alkoxysilane compound.
In the abstract, Murayama teach curable composition of the present invention contains a polyalkylene oxide having hydrolyzable silyl groups, with an aminosilane compound that is a hydrolysis-condensation product of an alkyl alkoxysilane and an amino alkoxysilane, wherein the aminosilane compound is exemplified at 6% by mass of the curable composition.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to incorporate the condensation product of an alkyl alkoxysilane in hydrolyzable silyl group containing polyoxyalkylene polymer curable composition of Stanjek et al., in order to obtain the advantages taught by Ando et al. or Murayama, motivated by a reasonable expectation of success.
Claim(s) 1-7 and 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (USPN 20120251832) in view Ando et al. (USPN 20150125684) or Murayama (JP 2015-508419).
In ¶’s 5 to 14, Huang et al. teaches a moisture-curable resin composition, moisture-curable sealing agent, adhesive, and coating agent containing:
at least one moisture-curable polymer having at least one hydrolyzable silane-terminated polyether (the present A), having number-average molecular weight preferably from 500 to 25,000;
5 to 35%, based on the one moisture-curable polymer, of at least one hydrocarbyl alkoxysilane represented by general formula (II) (the present C);
catalysts for catalyzing the reaction between polymer under curing conditions;
10 to 250%, based on the one moisture-curable polymer, of silica, which may be used as the thixotropic agent and the filler (the present B) (See ¶’s 127 and 128); and
silane adhesion promoter exemplified by epoxysilanes (See ¶ 119-122).
Huang et al. differ from the claimed invention in that the partial condensation product of aminosilane alone, or aminosilane and other alkoxysilane compounds, is not disclosed. While Huang et al. teach the curable resin composition to contain an aminosilane, it doesn’t identify it as a condensate. However, both Ando et al. and Murayama teach that such curing compositions with hydrolysable silane-terminated polymers in sealing material, coating material, or adhesives for building structures, incorporate compounds resulting from partial condensation of silyl groups, for the purpose of lower water absorption, waterproof durability, and adhesive durability, etc.
In ¶ 15, Ando et al. teaches a waterproof coating material comprising 100 parts by weight of at least one of a polyoxyalkylene polymer containing hydrolyzable silyl groups; and preferably 0.1 to 10 parts by weight, more preferably 0.2 to 5 parts by weight, of at least one compound obtained by partial condensation of silyl groups of an aminosilane alone or of a combination of an aminosilane and another alkoxysilane compound.
In the abstract and description, Murayama teach curable compositions consistent with the present invention containing a polyalkylene oxide having hydrolyzable silyl groups, with an aminosilane compound that is a hydrolysis-condensation product of an alkyl alkoxysilane and an amino alkoxysilane, wherein the aminosilane compound is exemplified at 6% by mass of the curable composition.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to incorporate the condensation product of an alkyl alkoxysilane in hydrolyzable silyl group containing polyoxyalkylene polymer curable composition of Huang et al., in order to obtain the advantages taught by Ando et al. or Murayama, motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments and declaration filed 10/10/2025 have been fully considered but they are not persuasive.
Regarding the argument that Mizuno et al. do not teach the composition resulting in waterproofing properties of a coating, this argument is not persuasive because the recited waterproofing properties of the final product formed from the claimed intermediate curable composition is not given patentable weight as it is not actually a property of the claimed curable composition, but rather of a final product therefrom.
In response to applicant's argument that the prior art don’t teach waterproofing properties, both Ando et al. and Murayama teach curing compositions, such as Stanjek et al. and Huang et al., comprising hydrolysable silane-terminated polymers in coating materials with compounds obtained by partial condensation of silyl groups of an aminosilane, having lower water absorption, waterproof durability, and adhesive durability, etc. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to incorporate the condensation product of an alkyl alkoxysilane in hydrolyzable silyl group containing polyoxyalkylene polymer curable composition of Stanjek et al. or Huang et al., in order to obtain the advantages taught by Ando et al. or Murayama, motivated by a reasonable expectation of success.
Further, even if in fact the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art, this cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant’s declaration regarding unexpected results is thus not persuasive.
Regarding the content range of compound (D), as stated above, Ando et al. teaches 0.1 to 10 parts by weight, more preferably 0.2 to 5 parts by weight, of the compound obtained by partial condensation of silyl groups of an aminosilane alone or of a combination of an aminosilane and another alkoxysilane compound, and Murayama teach wherein the aminosilane compound is exemplified at 6% by mass of the curable composition.
Thus, contrary to applicants arguments, the claimed content range of compound (D) is taught by both Ando et al. and Murayama.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE