DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on April 17, 2026 is acknowledged.
Claims 11-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 17, 2026.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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.
Claim 5 is 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.
Regarding claim 5: Claim 5 recites the limitation "wherein Z is…and R4 is…" in the first line. There is insufficient antecedent basis for this limitation in the claim. It is suggested to make claim 5 depend on claim 4 instead of claim 1.
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.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Durand et al. (US 2014/0018467).
Regarding claims 1-7: Durand et al. teaches an agglomerated material/reacted gel (abstract) that comprises an inorganic filler (para. 80), an organic resin/polymer plasticizer (para. 90). The product is a cured composition (para. 68), meaning the organic resin is hardened. Durand et al. also teaches a compound such as a diorganodiacetoxysilane where the organic groups can be tertiary butyl (para. 72), which overlaps the claimed definition of silane A, and 3-methacryloyloxypropyl trimethoxysilane (para. 115), which reads on the claimed definition of silane B. Since the composition is cured (para. 68), silane A and silane B would react together. While other possible silanes that do not read on silane A and silane B are listed as possibilities, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select di-tert-butoxy-diacetoxysilane and 3-methacryloyloxypropyl trimethoxysilane and would have been motivated to do so since Durand et al. teaches these embodiments are appropriate selections to achieve the disclosed invention.
Regarding claim 8: Durand et al. teaches silane A/the adhesion promoter in an amount of 0.01-50 weight parts based on the weight of the composition, and silane B/acetoxysilane in an amount of 0.5-15 parts by weight per 100 parts by weight of ingredient (B) (para. 72). Since ingredient (B) can be up to 99% of the composition (para. 66), the weight ratio of silane A:silane B is (0.01-50):(0.495-14.85), which overlaps the claimed range. The silane B amounts are 99% of the disclosed 0.5-15 parts silane B.
Regarding claim 9: Durand et al. teaches a polyester resin made with phthalic acid (para. 90), which is unsaturated.
Regarding claim 10: Durand et al. teaches the filler in an amount of 1-60% of the composition (para. 93), which therefore overlaps with the claimed range of the crystalline silica less than or equal to 50%.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
Prosecution Insights