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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3, 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Cannas (US20160152760, herein Cannas), in the view of Zeng (US20230022605, herein Zeng).
Regarding Claims 1-2, 7, Cannas teaches “composition based on polymers containing silane groups, which allows a low hazard classification, has good storability and cures rapidly by means of moisture.” [0009] comprising: “polyoxyalkylene radical or a radical of a polyoxyalkylated compound” [0049] and “Polyether STP-1 Containing Alkoxysilane Groups” [0168], which is “SAX725” [0125], which reads upon the structure of polyoxyalkylene having a hydrolyzable silyl group at both terminals.
Cannas teaches “Zn(neodecanoate)2 (zinc(II) bis-neodecanoate) and Zn(acac)2 (zinc(II) bis(acetylacetonate)) catalysts” [0173] which is zinc based catalyst, wherein, “ with Zn as central atom” [0044]. Cannas teaches the “Zn(acac)2 amount as 3.3 mmol of metal atoms per 100 g of Polyether STP-2 Containing Alkoxysilane Groups” [P10; Table 2], wherein the 3.3 mmol Zinc metal is 3.3 mmolx65g/mol=0.21 g, therefore, the Zn(acac)2 mass is 0.87 g. Hence, the B/A ratio is 0.87/100=0.87% lies in the claimed range.
Cannas teaches: “3-aminopropyltrimethoxysilane” [0108] reads upon component (C) is a compound having one hydrolyzable silyl group and one amino group in one molecule, in the concentration of 3.0 parts by weight [0172], lies in the claimed range.
Cannas teaches “vinyltrimethoxysilane” [0172] as (E) component, which is a compound having one vinyl group and one hydrolyzable silyl group, in the concentration of 0.5 part by weight, lies in the claimed range. Before the effective filing date of the claimed invention, it would have been obvious for a person of ordinary skill in the art to have utilized the amount of 0.5 part by weight, with a reasonable expectation of success, and would have been motivated to do as Cannas discloses that such amounts are suitable for the invention.
Cannas teaches “filler” [0127] as component (D), and “plasticizer” [0127] as component (F), but does not teach their ranges. However, Zeng teaches fillers (b) are present in the composition in an amount of from 5 to 65% by weight of the composition [0085]; and Plasticizer (c) is present in an amount of from 5 to 40% by weight of the composition [0086], both overlap the claimed ranges. Cannas and Zeng are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of silyl modified organic polymer and zinc salt catalyst based moisture curable resin composition. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the fillers (b) are present in the composition in an amount of from 5 to 65% by weight of the composition [0085]; and Plasticizer (c) is present in an amount of from 5 to 40% by weight of the composition [0086] into the composition formation. The motivation to do so would be that to achieve the desired property of maximum adhesion of the sealant to the joint surface to take place [0108] as taught by Zeng.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 3, Cannas teaches Cannas teaches: “N-(2-aminoethyl)-3-aminopropyltrimethoxysilane” [0108] reads upon component (C) is a compound having one hydrolyzable silyl group and two amino groups in one molecule.
Regarding Claims 8-9, Cannas and Zeng teach the moisture curable resin composition as set forth in claim 1, which is capable of performing the functionality as sealing agent or an adhesive for an aluminum material, is the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [MPEP 2144.07]
Regarding Claim 10, Cannas teaches “composition can be cured” [0022].
Regarding Claim 11, Cannas teaches the filler or reinforcer are calcium carbonate such as ground or precipitated calcium carbonates optionally coated with stearates [0130], which indicates the surface treatment is optional.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Cannas (US20160152760, herein Cannas), and Zeng (US20230022605, herein Zeng) as applied in claim 1, in the view of Hiroshi (EP1607460, herein Hiroshi).
Regarding Claim 12, Cannas and Zeng collectively teach the moisture curable resin composition as set forth above in claim 1, Cannas teaches “vinyltrimethoxysilane” [0172], Cannas does not explicitly teach the specific compound of methyltrimethoxysilane, however, Hiroshi teaches dehydrating agent; methyltrimethoxysilane [0038]; Hiroshi further teaches dehydrating agent; vinyltrimethoxysilane [0038]. Because both the “vinyltrimethoxysilane” [0172] as taught by Cannas and the methyltrimethoxysilane [0038] taught by Hiroshi are known in the art to be useful for plasticizer for moisture curable resin composition, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the methyltrimethoxysilane [0038] as taught by Hiroshi, and would have been motivated to do so because both compounds individually are known to be effective dehydrating agent for moisture curable resin composition. (see MPEP 2144.06).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Cannas (US20160152760, herein Cannas), and Zeng (US20230022605, herein Zeng) as applied in claim 1, in the view of Okamoto (US20090281253, herein Okamoto).
Regarding Claim 13, Cannas and Zeng collectively teach the moisture curable resin composition as set forth above in claim 1, Cannas teaches plasticizer; sulfonic esters [0129], Cannas does not explicitly teach the specific compound of phenyl alkylsulfonate, however, Okamoto teaches specific examples of the aliphatic sulfonic acid phenyl ester, Mesamoll (products of Bayer) [0162], reads on the phenyl alkylsulfonate. Cannas and Okamoto are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of silyl modified organic polymer and zinc salt catalyst-based moisture curable resin composition. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the aliphatic sulfonic acid phenyl ester, Mesamoll (products of Bayer) [0162] into the composition formation. The motivation to do so would be that to achieve the desired property of excellent in curability, adhesive properties and storage stability [0301] as taught by Okamoto.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cannas (US20160152760, herein Cannas), in the view of Zeng (US20230022605, herein Zeng).
Regarding Claim 14, Cannas teaches “composition based on polymers containing silane groups, which allows a low hazard classification, has good storability and cures rapidly by means of moisture.” [0009] comprising: “polyoxyalkylene radical or a radical of a polyoxyalkylated compound” [0049] and “Polyether STP-1 Containing Alkoxysilane Groups” [0168], which is “SAX725” [0125], which reads upon the structure of polyoxyalkylene having a hydrolyzable silyl group at both terminals.
Cannas teaches “Zn(neodecanoate)2 (zinc(II) bis-neodecanoate) and Zn(acac)2 (zinc(II) bis(acetylacetonate)) catalysts” [0173] which is zinc based catalyst, wherein, “ with Zn as central atom” [0044]. Cannas teaches the “Zn(acac)2 amount as 3.3 mmol of metal atoms per 100 g of Polyether STP-2 Containing Alkoxysilane Groups” [P10; Table 2], wherein the 3.3 mmol Zinc metal is 3.3 mmolx65g/mol=0.21 g, therefore, the Zn(acac)2 mass is 0.87 g. Hence, the B/A ratio is 0.87/100=0.87% lies in the claimed range.
Cannas teaches: “3-aminopropyltrimethoxysilane” [0108] reads upon component (C) is a compound having one hydrolyzable silyl group and one amino group in one molecule, in the concentration of 3.0 parts by weight [0172], lies in the claimed range.
Cannas teaches “vinyltrimethoxysilane” [0172] as (E) component, which is a compound having one vinyl group and one hydrolyzable silyl group, in the concentration of 0.5 part by weight, lies in the claimed range. Before the effective filing date of the claimed invention, it would have been obvious for a person of ordinary skill in the art to have utilized the amount of 0.5 part by weight, with a reasonable expectation of success, and would have been motivated to do as Cannas discloses that such amounts are suitable for the invention.
Cannas teaches “filler” [0127] as component (D), and “plasticizer” [0127] as component (F), but does not teach their ranges. However, Zeng teaches fillers (b) are present in the composition in an amount of from 5 to 65% by weight of the composition [0085]; and Plasticizer (c) is present in an amount of from 5 to 40% by weight of the composition [0086], both overlap the claimed ranges. Cannas and Zeng are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of silyl modified organic polymer and zinc salt catalyst based moisture curable resin composition. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the fillers (b) are present in the composition in an amount of from 5 to 65% by weight of the composition [0085]; and Plasticizer (c) is present in an amount of from 5 to 40% by weight of the composition [0086] into the composition formation. The motivation to do so would be that to achieve the desired property of maximum adhesion of the sealant to the joint surface to take place [0108] as taught by Zeng.
Regard to the shear adhesion strength, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Cannas and Zeng collectively teach all of the claimed ingredients, in the claimed amounts, and Cannas teaches the composition as being made by a substantially similar process as of mixed in and the mixture was stirred [0171]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the shear adhesion strength would necessarily arise from a composition with all the claimed ingredients serve as reaction composition lead to the copolymer product. "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). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 12/19/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 102 (a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Cannas (US20160152760, herein Cannas), and Zeng (US20230022605, herein Zeng).
In this case, the newly added reference_Zeng and Cannas collectively teach the moisture curable resin composition as set forth above in the new rejection.
In response to the “unexpected properties”, this argument is not persuasive.
In fact, When Examples 1-5 and Comp. Examples 1-5 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 1 is open to the (E) component is comprised in an amount of 0.5 to 20 parts by mass per 100 parts by mass of the component (A). However, Examples 1-5 and Comp. Examples 1-5 only use the single value 7 parts by mass. Hence, these ranges are not reasonably commensurate in scope with the claimed ranges. Examples 1-5 and Comp. Examples 1-5 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Additionally, Cannas and Zeng teach the moisture curable resin composition as set forth in claim 1, which is capable of performing the functionality as sealing agent or an adhesive for an aluminum material, is the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [MPEP 2144.07].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767