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 § 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 appl icant regards as his invention. Claims 1, 3, 13, 18-19, 21-23, 51-52, 54, 61-62, 77-78, 83, 92-93, and 124-125 are 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Most of the claims are replete with consecutive, increasingly narrower disclosures of numerical ranges and genera of claimed compositional elements. For instance, claim 54 initially merely stipulates that the polycarbonate be present (whereas claim 1 indicated it was optional), which is followed by a description of the polycarbonate of reduced breadth. In claim 18, the minimum weight contribution of the prepolymer is initially stated to be 10% but this figure is followed by 12%, then 15%, etc. In all cases, the narrowed range is marked by the word “preferably ”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim Interpretation The Examiner notes that claim 1 is really of quite incredible breadth and is rendered unpatentable by perhaps hundreds of prior art disclosures. This is because component (iii) may be used as an alternative to component (ii), there being no limitations attached to the fumed silica whatsoever except to say that it is “preferably” hydrophobic silica. Understanding that Applicants’ actual invention requires the involvement of highly structured carbon black, the Examiner confined his search to strategies that would capture this concept as an essential ingredient. As an aside, the fact that Applicant continues to seemingly further limit the highly structured carbon black, again marked by the use of “preferably”, it was initially presumed that not all highly structured carbon blacks, as recognized by one of ordinary skill, would have to contain an OAN of 115 ml/100g. Of course, this elicited concerns that maybe the intended breadth couldn’t be known and claim 1 was subject to a 112(b) rejection on this basis. However, [0029] of the Specification expressly states that highly structured carbon black is any that adheres to the OAN limitation. 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, 3, 13, 18-19, 21-23, 51-52, 54, 61-62, 83, 92-93, and 12 4-125 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Stanjek et al., U.S. Patent Application Publication No. 2019/0048190 . Stanjek is directed to adhesive/sealant compositions comprising the materials outlined in inventive Example 2 including a 35.9 wt.% silane-functionalized polyether as defined in [0259], a 18.1 wt.% phthalate plasticizer, 15.7 wt.% carbon black as defined in [02 61 ] , a tin-based curing catalyst, an amino-functionalized alkoxysilane correlating with the silane compatibilizer , etc. (All weight contributions are easily calculated based on a sum of 400 total grams of all materials.) As for claims 22 and 23, U.S. 3,852,399 confirms at column 2, lines 22-24 that Printex ® 60 belongs to the class of carbon black known as ISAF. The classifications in claim 23 are understood to be a more current manner of categorizing carbon black and IARC Monographs (2010) 93, pg 58, Table 1.3 establishes that intermediate superabrasion furnace black carries an ASTM designation of N220. Concerning claim 125, Table 1 of Stanjek demonstrates that the composition of Inventive Example 2 exhibits a corresponding degree of tensile strength and elongation. 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. Claim s 54, 61, 62, and 77-78 are rejected under 35 U.S.C. 103 as being unpatentable over Stanjek et al., U.S. Patent Application Publication No. 2019/0048190 . The reference only exemplifies compositions wherein an alkoxysilylated polyether fulfills the role of the base polymer. On the other hand [0011,0039] together indicate that silyl group-terminated polycarbonates represent an obvious functional alternative to the polyether and this compound is anticipatory of both claimed components (i) and (iv). Paragraph [0069] recommends that the silylated polymer be incorporated in quantities corresponding to 15-60 wt.%, which is strongly overlapping with the bounds set forth in claims 61 and 62. As an initial matter, the fumed silica- paragraph [0137] refers to pyrogenic silica which is the same substance by a different name- is not expressly said to be hydrophobic. On the other hand, the reference says of the calcium carbonate/chalk that it is preferably treated with a fatty acid, which the skilled artisan appreciates imparts hydrophobicity. Thus, it is the position of the Office that a skilled practitioner of the prior art invention would at once envisage also using treated/ hydrophobicized silica too. (Silica is also widely known to aggregate when not compatibilized with the organic polymer host into which it is mixed thereby making it very difficult to incorporate uniformly. This constitutes another well-established reason why one of ordinary skill would be motivated to use hydrophobic silica .) Finally, it shall be noted that it is desirable to substantially limit the moisture content of the filler [0138] which only is further suggestive that hydrophobic silica should be utilized. As for the amount of silica, the prior art really only instructs how much total filler should be used, and then in terms of parts per 100 parts of the base polymer. Insofar as the silica is not even required, it is clear that would not represent more than 42% of the total as claim 78 allows and amounts less than 0.2 wt.% as claim 77 contemplates would not even enable the properties of the composition to be influenced by the silica. Moreover, the skilled artisan is familiar with the role played by silica as an additive that conveys improved mechanical properties such as mechanical/tensile strength and hardness and would optimize accordingly. The act of optimizing for these properties would bring a practitioner to conclude that ranges consistent with those suggested by claims 77 and 78 together would be best. The ISA cites numerous disclosures alleged to anticipate/render obvious all of the claims. The Examiner agrees many at least some of these would indeed anticipate at least claim 1, but hardly address all of the dependent claims. In the name of brevity, and insofar as they fail to represent a grounds for rejection o f any more than what is already rejected by Stanjek , a formal statement of rejection over any of them will be withheld at the present time. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MARC S ZIMMER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1096 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 8:30-5:00 . 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, FILLIN "SPE Name?" \* MERGEFORMAT Heidi Kelley can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-1831 . 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. December 19, 2024 /MARC S ZIMMER/ Primary Patent Examiner, Art Unit 1765