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 .
Response to Amendment
Applicant’s claim amendments and remarks filed May 26, 2026 are entered and have
been fully considered. Applicant has amended claim 1 and cancelled claims 2 and 5. Applicant has amended claim 13 to correct the objection, but an issue still remains, see below. Applicant has amended claim 1 to overcome the 102 rejection over Hirai (US20160096959A1) therefore it is withdrawn.
Information Disclosure Statement
The foreign reference JP 1998036770 listed in the IDS dated 2/5/2026 is not considered because a legible copy of the reference was not provided and examiner could not find a version of it on Espacenet, and presumes the document number was mis-typed.
Claim Objections
Claim 13 is objected to because the following informalities remain: The list of fillers in claim 13 includes instances where the types of fillers are repeated. “Silica” is in lines 4 and 10 of the claim. “Zinc oxide” is in lines 3 and 11 of the claim.
Appropriate correction is required.
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.
Claims 1, 3, 6-7, 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sumida, H., US-4252933.
Regarding claims 1, 3, 6-7, 12, Sumida teaches a self-bonding polysiloxane coating composition comprising a hydroxyl end-blocked polydiorganosiloxane polymer, and a polysiloxane having epoxy functional groups mixed with an amino-functional silicone compound, there may also be a hydride-containing polysiloxane and a metal salt of a carboxylic acid, abstract. In table 2, Col.8, the composition #41 is shown as comprising hydroxyl end blocked PDMS, a methylhydrogen polysiloxane where the hydrogen is bonded to the silicon atom and there are 20 repeat units, an epoxy functional polysiloxane (reads on claim 12), aminopropyltrimethoxysilane adhesion promoter (reads on claims 7 and 12), and trichloroethylene solvent. The catalyst in table 2 is dibutyltin dioctoate, but Sumida teaches in Example 10, Col. 10 lines 63-66, that the composition 41 is replicated and the tin is replaced with the catalysts of Table 4, shown in Col. 11. The composition 103 shows that zinc octoate is the catalyst, which is a different name for zinc 2-ethylhexanoate, and reads on the catalyst of claims 1, 3, and 6. Because the zinc octoate has replaced the tin catalyst of composition #41, the composition #103 is free of tin.
Regarding claim 11, Sumida teaches the organic solvent can be hexane, heptane, petroleum hydrocarbon, toluene, xylene, isopropyl alcohol, or butyl alcohol, Col. 5 lines 17-21.
Regarding claim 13, Sumida teaches the compositions can further comprise fillers such as fumed or precipitated silica, Col. 5 lines 25-26.
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 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 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sumida, H., US-4252933.
Regarding claim 8, Sumida teaches the invention according to claim 1 as explained above. Sumida exemplifies 3 parts of zinc octoate added to composition 103 in table 4, which when compared to the amount of aminopropyltrimethoxysilane listed in table 2, the ratio is 3:10.
Sumida does not explicitly teach the claimed ratio in an example. But Sumida teaches that the catalyst is used in an amount of 0.6-6 wt.% based on the amount of components A-C. The total of the components A-C in table 2 is 217 parts and 6 wt.% of this is 13.02 parts. Therefore, at its highest recommended amount, the zinc octoate can be a ratio of 13.02:10 parts amino silane in composition 103, which is equal to 1.3:1 and satisfies claim 8. It would be obvious to the skilled artisan to use up to 6 wt.% catalyst based on the total of ingredients A-C because it is the suggested amount by Sumida.
Regarding claims 9-10, Sumida teaches the invention according to claim 1 as explained above. Sumida exemplifies 3 parts of zinc octoate and 10 parts amino silane in compositions 41 and 103 (tables 2 and 4), which means the ratio of metal carboxylate to amino silane is 3:10 or 0.3:1. Sumida does not explicitly teach the claimed ratios.
Sumida discloses that the amount of component (B), which is the total of the epoxy siloxane and the amino silane, to component (A), which is the hydroxy polysiloxane, is especially preferably 0.1-1 part (B) to 1 part (A), Col. 4 lines 30-31. The minimum 0.1(B): 1(A) ratio becomes 10(B):100 (A) because composition 103 uses 100 parts (A). Adjusting composition 103 to have this minimum 10(B) : 100(A) ratio, and keeping the other ingredients the same, the ratio of metal carboxylate to amino silane is 3.3:1, which reads on claims 9-10. See the table below for the ingredients and their respective parts, examiner has kept the ratio of epoxy siloxane and amino silane the exemplified 100:10 ratio and note the zinc octoate catalyst is still within the recommended 0.6-6 wt.% range.
Composition 103
Minimum Preferred (B)
Component
parts
percent
parts
percent
(A) SiOH
100
45.45%
100
83.33%
(C) hydride
7
3.18%
7
5.83%
(B1) epoxy siloxane
100
45.45%
9.1
7.58%
(B2) amino silane
10
4.55%
0.91
0.76%
zinc octoate
3
1.36%
3
2.50%
Total
220
100.00%
120.01
100.00%
zinc octoate/amino silane
0.30
3.30
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Sumida because selection of overlapping portion of ranges has been held to be a prima facie obvious. 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).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sumida, H., US-4252933 in view of Ryang, H., US-4472565A.
Regarding claim 4, Sumida teaches the invention according to claim 1 as explained above. Sumida teaches that the metal salt of a carboxylic acid causes dehydrogenation condensation reaction between the hydroxyl end-blocked polyorganosiloxane and the polyorganohydrogensiloxane Col. 1 lines 65-68. Sumida does not teach using a titanium carboxylate catalyst.
Ryang discloses a condensation curing composition comprising a silicone polyimide copolymer with hydride radicals and a silanol terminated polydiorganosiloxane, which react in the presence of a catalyst, abstract. It is further disclosed that the catalysts suitable for the condensation reaction include titanium compounds such as titanium naphthenate which is a titanium carboxylate, and is listed with other metal carboxylates such as zinc 2-ethylhexanoate, Col. 6 lines 62-68, Col. 7 lines 5-8. The titanium carboxylate catalyst is listed as functionally equivalent to zinc 2-ethylhexanoate, which is the catalyst exemplified by Sumida, under the name zinc octoate.
Sumida and Ryang are analogous to the claimed invention because both are directed to catalysts having utility in the dehydration-condensation of SiH and SiOH-bearing compounds. It is prima facie obvious to substitute one material for another to obtain predictable results when the materials provide the same use and function, in this case as a condensation reaction catalyst.
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to practice the invention of Sumida but substituting the zinc octoate catalyst for the claimed titanium carboxylate catalyst with a reasonable expectation of success in obtaining a condensation curing composition because it is a simple substitution of functionally equivalent catalysts.
Response to Arguments
In light of the amended claim 1, the 102 rejection over Hirai is withdrawn. Hirai only teaches compositions using bismuth catalysts and no longer reads on the claims.
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument, page 5, that Sumida does not teach a composition that is free of tin and has a zinc or titanium carboxylate, examiner points to the above rejection and composition 103 of example 10 where Sumida replaces the tin catalyst of composition 41 with zinc octoate, which is another name for zinc 2-ethylhexanoate. Applicant’s assertion that tin is a prominent and preferred feature of Sumida’s composition is unsupported speculation on applicant’s part. Nowhere does Sumida teach that the tin catalyst is preferred or required in the composition. In Col. 4 lines 57-68, Sumida states the catalyst is a metallic fatty acid salt and proceeds to list specific tin and zinc catalysts as options, among others. Additionally, applicant’s assertion that the zinc in example 10 is used in combination with the tin is incorrect, in Col. 10 line 65, Sumida states “the catalysts shown in Table 4 were used for the dibutyltin dilaurate,” which means the catalysts in table 4 were used in place of the dibutyltin dilaurate.
In response to applicant’s argument regarding claim 4, that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, a holding of obviousness is justified by the teachings Ryang, where it is disclosed that the titanium carboxylate catalyst is functionally equivalent to the zinc carboxylate catalyst for dehydrogenative condensation reactions. It is obvious because it is a simple substitution of functionally equivalent catalysts.
In response to applicant's argument that Ryang does not teach or suggest that titanium catalysts would be suitable to replace tin where the polymer does not include a polyimide, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The skilled artisan would understand that a polyimide copolymer is not required to utilize the condensation catalysts listed in Ryang for polyorganosiloxane condensation reactions involving Si-OH and Si-H bearing compounds.
Ryang discloses dehydrogenative condensation reactions between silanol and hydride terminal groups and the catalysts employed for such, it is not required that Ryang teach tin-free compositions for the skilled artisan to understand that the titanium catalysts disclosed by Ryang may be used singly in a composition, the prior art need not teach the same motivation or advantage as applicant. Furthermore, titanium catalysts for condensation reactions are well known within the polyorganosiloxane art, and the person skilled in the art is familiar with their use.
Unless there are unexpected results associated with the use of the titanium catalyst in applicant’s composition, the substitution of a tin or zinc catalyst for a titanium catalyst is obvious and would do no more than produce a predictable result of a condensation curing polyorganosiloxane composition with a reasonable expectation of success because titanium carboxylate catalysts are well established in the art and their use in polyorganosiloxane condensation reactions is well known and documented.
For the reasons given above, the 102 and 103 rejections over Sumida and Sumida in view of Ryang are maintained.
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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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, Randy Gulakowski can be reached at 571-272-1302. 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.
/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
Prosecution Insights