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
1. Claims 1, 3-8, 10-11, 13-19 are pending in the current application.
2. This application is a CON of PCT/EP2021/072590 08/13/2021 FOREIGN APPLICATIONS EP 20191681.4 08/19/2020.
Response to Amendments
3. Applicant’s election of group I in the reply filed on November 20, 2025 was acknowledged. The election was made with traverse and the examiner found the arguments unpersuasive. A species election was made of compounds under the heading C on page 5 where R1 is methoxy and R is methoxy, methyl, phenyl or vinyl (Examples 1-4). The compounds are those of Formula IA claim 2, where R6, R7, and R8 are H, m is 1, X is S, q is 0, R1 is methoxy, n is 2), R4 is alkyl, vinyl or phenyl. The claims are now drawn to a curable composition.
The rejections of claim 1-10, 20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn based on the amendments. The rejection of claims 2-3 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn based upon the amendments. The rejection of claim(s) 1-10, 20 under 35 U.S.C. 102(a)(1) as being anticipated by George US 2,640,833 is withdrawn based on the amendments. The rejection of claim(s) 1-10, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khananashvili is withdrawn based on the amendments. The rejection of claim(s) 1-10, 20 under 35 U.S.C. 102(a)(1) as being anticipated by CN 103374083 A is withdrawn based on the amendments.
The rejection of claims 1-10, 20 provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 1- 15 of copending Application No. 18/798,973 in view of Arkles is withdrawn based on the amendments.
The rejection of claims 4-6 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is maintained. Applicants’ representatives arguments of April 30, 2026 have been fully considered but are unpersuasive. The rejection of claims 1, 3-8, and 10 on the judicially-created basis that it contains an improper Markush grouping of alternatives is maintained. Applicants’ representatives arguments of April 30, 2026 have been fully considered but are unpersuasive.
New grounds of rejection appear below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 1, 3-8, and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims are now drawn to “a moisture curable composition comprising Formula I-A and “a vulcanization catalyst.” The specification contains no description of such compositions. The only mention of a vulcanization catalyst is on page 1 at [0003] “The use of alpha-silanes as cross-linking reagents in RTV formulations is advantageous since the amount of the vulcanization catalyst can be decreased thanks to the high reactivity of alpha-silanes.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
5. Claims 4-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 defines R4 as “a linear or branched, substituted or unsubstituted hydrocarbon group having 1 to 20 carbon atoms” however dependent claims, 4-6 define R4 as cyclic compounds including “C4 to C8 cycloalkyl”, “C6 to C20 aryl,” “C5 to C20 aryl” “C5 to C12 aryl”, phenyl or pyridinyl and groups. The terms ”linear or branched” refer only to alkyl or other noncyclic alkyl compounds and referring and cyclic structures do not fall under either of the descriptions linear or branched. The specification explains that this terminology applies to only alkyl or alkenyl groups as discussed on page 4 at paragraphs [0015] and [0016], respectively. Since claim 1 does not embrace cyclic structures, the dependent claims are in improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 lists R4 as a pyridinyl and according the special definition in the specification on page 4-5 at paragraph [0017] pyridinyl is an aryl group which means in the lexicographical paradigm of this application aryl also includes heteroaryl. Pyridine lacks antecedent basis and fails to limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
6. Claim(s) 1, 3-8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over George US 2,640,833 in view of Schindler US 7,091,298 B2.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(a) are summarized as follows:
A) Determining the scope and contents of the prior art.
B) Ascertaining the differences between the prior art and the claims at issue.
C) Resolving the level of ordinary skill in the pertinent art.
D) Considering objective evidence present in the application indicating obviousness or nonobviousness.
A) Determining the scope and contents of the prior art:
The prior art of George discloses compounds of Formula I-A including but not limited to methyl(2-thienyl)dichlorosilane at col. 3 line 45; methyl di-(2-thienyl)chlorosilane at col. 3 lines 59-60; dimethyl(2-thienyl)chlorosilane at col 3. line 72, col. 4 lines 3-4; phenyl(2-thienyl)dichlorosilane at col. 4 line 9; methyl 2-thienyldiethoxysilane, col. 4 lines 29-31; phenyl 2-thienyldiethoxysilane col. 4 lines 33-35; dimethyl 2-thienyl-ethoxysilane col. 4 lines 59-61; and compounds at col. 5 lines 4-27: ethyl 2-thienyl dichlorosilane, ethyl 2-thienyldibromosilane, di propyl 2-thienylchlorosilane, diamyl 2-thienyl chlorosilane, didecyl 2-thienylbromosilane, phenyl 2-thienyldibromosilane, chlorophenyl 2-thienyl dichlorosilane, phenyl 2-(chlorothienyl) dichlorosilane, diphenyl 2-thienylchlorosilane, naphthyldi-(2-thienyl) chlorosilane, phenyl di- (2-thienyl)chlorosilane, benzyl 2-thienyldichlorosilane, tolyl-2-thienyldichlorosilane, vinyl 2-thienyldichlorosilane, allyl-2-thienyldichlorosilane, methyl 2-(methylthienyl)dibromosilane, ethyl-2-thienyldiethoxysilane, ethyl-2-thienyldibutoxysilane, dipropyl-2-thienylpropoxysilane, diamyl 2-thienylethoxysilane, didecyl 2-thienylbutoxysilane, phenyl 2-thienyldibutoxysilane, diphenyl 2-thienylhexoxysilane, naphthyl di-(2-thienyl)ethoxysilane, phenyl di-(2-thienyl)ethoxysilane, benzyl-2-thienyldiethoxysilane, tolyl 2-thienyldiethoxysilane, vinyl 2-thienyldiisobutoxysilane, and allyl 2-thienyldiethoxysilane . These compounds read on claim 1 Formula I-A and claim 1 where R1 is various hydrolysable groups including halogen (Br, Cl) and alkoxy (ethoxy, butoxy, propoxy, hexoxy), which is listed in claim 4, R4 is alkyl (methyl, ethyl, propyl, amyl, benzyl [substituted alkyl or aralkyl]), C5 to C20 aryl (phenyl, tolyl, benzyl, napththyl), C2 to C12 alkyenyl (vinyl, allyl) R6, R7 and R8 are H or methyl, X is S, q is 0, R5 is any definition since q is 0, n is 1 or 2, m is 1 or 2, k is 0 or 1, the sum of n, m and k being 4. The compounds are used in curable compositions, to make polysiloxanes as discussed at col. 1 lines 32 ff.:
The hydrolyzable thienyl-substituted silanes described above in the foregoing formulas may be employed for rendering materials water repellent which were originally water-non-repellent and may also be used as intermediates in the preparation of thienyl-substituted polysiloxanes.
“Rendering materials water repellent” would involve “end capping” any exposed residues on the surface of materials, meeting the limitation of claim 10.
According to Schindler Col. 1 lines 21 ff. “Organic polymers having terminal silane groups in the formulae (2) to (4) form of one-component materials curing with atmospheric humidity (RTV-1) are known and are widely used for the preparation of flexible sealants and adhesives.” “The component (B) silane which is selected from silanes of the general formula:” “Organofunctional silanes of the general formulae (2), (3) and ( 4) having methylene spacers can be used as component (B).” [col. 4 lines 42 ff] Various examples are given. Col. 5 lines 7 ff. explains that the compositions may have a catalyst, “The materials may contain, as component (C), a catalyst for curing. Preferably, all organometallic catalysts which are known to promote silane condensation can be used as component (C). These are in particular tin compounds and titanium compounds. Preferred tin compounds are dibutyltin dilaurate, dibutyltin diacetate and dibutyltin bisacetylacetonate. Preferred titanium compounds are alkyl titantates, such as tetraisoproyl titanate and tetrabutyl titanate…”
B) Ascertaining the differences between the prior art and the claims at issue.
The composition of the instant claims involves the use of a “vulcanization catalyst” in the prior art silanes. The could be seen as adding a catalyst to the compositions of George or using the silane of George in the compositions of Schindler.
C) Resolving the level of ordinary skill in the pertinent art and D) Considering objective evidence present in the application indicating obviousness or nonobviousness: The compounds of the instant claims are known in the art, sans “vulcanization catalyst”. The specification does not define said catalysts or compositions but makes reference to “[t]he use of alpha-silanes as cross-linking reagents in RTV formulations” having “vulcanization catalyst.” One such RTV formulation with the silanes is described in Schindler where various known vulcanization catalysts were known to “contain, as component (C), a catalyst for curing” which are “organometallic catalysts which are known to promote silane condensation can be used as component (C).” It would be obvious to add a catalysts to the silane composition of George to promote silane condensation. Alternatively substituting the silane of George in the RTV formulation of Schindler is obvious.
7. Claim(s) 1, 3-8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khananashvili in view of Schindler US 7,091,298 B2.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(a) are summarized as follows:
A) Determining the scope and contents of the prior art:
The prior art of Khananashvili discloses compounds of Formula I-A including but not limited to the compounds of formula RR’SiCl2, and RR’Si(OCOCH3)2 of Formula (I), (III) and (III) on page 197, which read Formula I-A and claim 1 where R1 is various hydrolysable groups including halogen (Cl) and acetoxy, which is listed in claim 4, R4 is alkyl (methyl), C5 to C20 aryl (phenyl), R6, R7 and R8 are H or methyl, X is S, q is 0, R5 is any definition since q is 0, n is 2, m is 1 or 2, k is 0 or 1 the sum of n, m and k being 4. These compounds were part of a curable composition, “Methylthienyldihydroxysilane and a,w-dihydroxymethylthienylsiloxanes were obtained by hydrolysis reaction of methylthienyldichlorosilane and a,w-dichlororomethylthienylsiloxanes at low temperatures in the presence of an acceptor of HCl- aniline.” [Page 197 2nd to last paragraph] Other condensations are described on page 199, “ Thienyl-containing organocyclosiloxanes with different organic radicals at the silicon atom were obtained by the method of heterofunctional condensation.” The condensations are hydrolytic as discussed on page 200, “Thus, hydrolytic condensation of methylthienyldiacetoxysilans was conducted at different temperatures…” and page 203, “Hyrolytic[sic] condensation of thienylmethyldichlorosilanes and diacetoxysilanes yielded, correspondingly, a,w-dihydroxymethylthienylsiloxanes and thienylmethylcyclosiloxanes. By the method of heterofunctional condensation of methylthienyldichlorosilane (or siloxane) with dihydroxyorganosiloxanes, six- and eight-membered organocyclosiloxanes, with one or two methylthienylsiloxy rings in the cycle, have been synthesized.”
B) Ascertaining the differences between the prior art and the claims at issue.
The composition of the instant claims involves the use of a “vulcanization catalyst” in the prior art silanes of Khananashvili. The could be seen as adding a catalyst to the compositions of Khananashvili or using the silane of Khananashvili in the compositions of Schindler.
C) Resolving the level of ordinary skill in the pertinent art and D) Considering objective evidence present in the application indicating obviousness or nonobviousness: The compounds of the instant claims are known in the art, sans “vulcanization catalyst”. The specification does not define said catalysts or compositions but makes reference to “[t]he use of alpha-silanes as cross-linking reagents in RTV formulations” having “vulcanization catalyst.” One such RTV formulation with the silanes is described in Schindler where various known vulcanization catalysts were known to “contain, as component (C), a catalyst for curing” which are “organometallic catalysts which are known to promote silane condensation can be used as component (C).” It would be obvious to add a catalysts to the silane composition of Khananashvili to promote silane condensation. Alternatively substituting the silane of Khananashvili in the RTV formulation of Schindler is obvious.
8. Claim(s) 1, 3-8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 103374083 A in view of Schindler US 7,091,298 B2.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(a) are summarized as follows:
A) Determining the scope and contents of the prior art:
CN ‘803 discloses anticipatory compounds including but not limited to the elected species at page 15 of the translation at [0082] phenyl thiophenedimethoxysilane, of Formula I-A claim 2, where R6, R7, and R8 are H, m is 1, X is S, q is 0, R1 is methoxy, n is 2, k is 1, R4 is phenyl. The compound was made into a curable composition with propylene at paragraph [0085] and [0091] page 15-16. Other compounds are also disclosed which are of Formula I-A including n-propyl thiophenedimethoxysilane (page 10 [0048]), n-butyl thiophenedimethoxysilane (page 14 [0071]), which also read on the claims as above except where R4 is alkyl (n-propyl, n-buytl).
B) Ascertaining the differences between the prior art and the claims at issue.
The composition of the instant claims involves the use of a “vulcanization catalyst” in the prior art silanes of CN ‘803. The could be seen as adding a catalyst to the compositions of CN ‘803 or using the silane of CN ‘803 in the compositions of Schindler.
C) Resolving the level of ordinary skill in the pertinent art and D) Considering objective evidence present in the application indicating obviousness or nonobviousness: The compounds of the instant claims are known in the art, sans “vulcanization catalyst”. The specification does not define said catalysts or compositions but makes reference to “[t]he use of alpha-silanes as cross-linking reagents in RTV formulations” having “vulcanization catalyst.” One such RTV formulation with the silanes is described in Schindler where various known vulcanization catalysts were known to “contain, as component (C), a catalyst for curing” which are “organometallic catalysts which are known to promote silane condensation can be used as component (C).” It would be obvious to add a catalysts to the silane composition of CN ‘803 to promote silane condensation. Alternatively substituting the silane of CN ‘803 in the RTV formulation of Schindler is obvious.
Rejections Under the Judicially Created Doctrine of Improper Markush Grouping
9. Claims 1, 3-8, and 10 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons: Formula I has a large number of variables and X may be any atom. R1 is defined functionally as a hydrolysable group. This structure is insubstantial to the disclosure of the compounds in the specification. According to the specification the compounds are silanes used to modify polymers.
The specification discloses only 4 compounds. These compounds are homogenous. The compounds all have a thiophene ring, at least two methoxy groups, and three simple hydrocarbon groups attached to the silicon atom (phenyl, vinyl and methyl). The claims are drawn to non-cyclic compounds and compounds where X is any heteroatom, not just S. The rings embraced by the X structure in claim 2 Formula I-A would include not just S but also N, P, Fe, As, and a large number of diverse elements. The arsoles claimed where X is As, have not been prepared. “The field of functional materials also suffered from the decline of organoarsenic chemistry. Heteroles, five-membered heterocyclopentadiene, have increasingly attracted attention in such fields. However, investigations of “arsoles” from the view-point of materials science remain to be performed, although some arsole derivatives were synthesized up to the 1960s.[4–8] If studies on pnictogen-type heteroles are performed by experimental means, pyrrole,[9–13] phosphole,[14–17] stibole,[18, 19] and bismole[20–22] derivatives are prepared, but their arsenic analogues tend to be excluded.” Imoto “The Dawn of Functional Organoarsenic Chemistry” Chem. Eur. J. 2019, 25, 1883 – 1894. “There is potential interest in arsole derivatives, as shown above, but the absence of practical synthetic methods has restricted further progress.” Assuming some could be prepared there is no expectation that such diverse compounds would have the same or similar properties. It is well known that molecular structure is correlated with physical properties and in particular in heterocyclic chemistry the change from one ring to another often results in dramatic changes in properties. Pozharskii et. al. Heterocycles in Life and Society Wiley, 1997, pgs. 1-6: "It is rumored that the Russian scientist Beketov once compared heterocyclic molecules to jewelry rings studded with precious stones. Several carbon atoms thus make up the setting of the molecular ring, while the role of the jewel is played by an atom of another element, a heteroatom. In general, it is the heteroatom which imparts to a heterocycle its distinctive and sometimes striking properties..." Remarkably the claims are broader since they also include X in any non-ring, as well and thousands of other entirely unsupported prophetic recitations. All of the compounds, have a very specific structure absent from the instant claims. In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
Conclusion
10. 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 DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/ Primary Examiner, Art Unit 1621
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