DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Election/Restrictions
Claims 12, 15, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/11/26.
Applicant's election with traverse of Group I, claims 1-11, 13, and 14 in the reply filed on 5/11/26 is acknowledged. The traversal is on the ground(s) that Lucas does not teach the claimed composition as a standalone teaching apart from an acetamide scavenger. This is not found persuasive because the claim language does not limit the composition against the inclusion of additional components. Please see MPEP 2111.03. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). That Lucas teaches the additional inclusion of a scavenger does not negative its teaching of the claimed one-component RTV silicone rubber composition.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102/103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
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 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 1, 2, 5-10, 13, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lucas et al. (US 4,503,209, “Lucas”).
Regarding claims 1, 2, 10, 13, and 14, Lucas teaches silicone elastomer (e.g., col. 13, lines 1-20) made by reacting a one-part RTV composition based on a linear organopolysiloxane with terminal hydrolysable groups (e.g., col. 3 -4, 7-8; this linear organopolysiloxane reads on the siloxane chemical formula of claims 1 and 2), an acetamido functional silane scavenger (col. 12 lines 20-50), silica, a tin IV catalyst (e.g., col. 10 lines 30-50), a methyltrimethoxysilane crosslinker, and a trimethoxysilylpropyltetramethylguanidine accelerator (column 11, line 63 - column 12, line 49). The preferred crosslinker is MTMS, the preferred catalyst is dibutyltin laurate or acetate, the preferred curing accelerators are di-n-hexylamine or di-n-butylamine present at 0.1-5 or 0.3-1 parts by weight per 100 parts by weight of base polysiloxane (see D1 examples III, V; column 11, line 63 - column 12, line 49). Lucas teaches the organopolysiloxane may have a viscosity of from 100 to 1,000,000 cP at 25C (col. 5 lines 50-68, thus reading on the claimed ranges). Lucas teaches the inclusion of anhydrous fillers (col. 11 lines 10-50). Note that the presence of an additional mandatory component in the compositions of D1, the acetamido functional scavenger, is irrelevant when considering novelty for a composition comprising components a) to e) in accordance with claim 1. Lucas provides a general teaching that the curing accelerator used alongside the tin catalyst can be present at levels as low as 0.1 or 0.3 parts by weight per 100 parts by weight of organopolysiloxane (col. 11 line 60 - col. 12 line 55). Lucas additionally teaches that the composition may be a sealant used in construction applications (col. 11 lines 15-50). The Examiner notes that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
Regarding claim 5, Lucas additionally teaches the inclusion of, among others, tin octoate (see col. 10 lines 30-50).
Regarding claim 6, Lucas additionally teaches the inclusion of a guanidine structure reading on those claimed, wherein, e.g., the R groups are alkyl groups (see col. 11 line 45- col. 12 line 40).
Regarding claim 7, Lucas additionally teaches the inclusion of, for example, dibutyl amine (di-n-butylamine, col. 12 lines 40-50)0.
Regarding claim 8, Lucas additionally teaches that the composition may be used as a construction adhesive or sealant and therefore may be considered a past that can join two smooth surfaces (e.g., col. 11 lines 15-45]).
Regarding claim 9, Lucas additionally teaches the composition may be used as a sealant and may include adhesive promoters and may be used in construction applications (see, e.g., col. 11 lines 15-45, including PVC fillers and adhesion promoters and for use in construction applications). Therefore, the composition would be expected to adhere to PVC substrates insofar as it is substantially similar compositionally to that claimed and the intended use is described as being similar. Further, it would have been obvious to the ordinarily skilled artisan to have included adhesion promoters to adhere the composition to PVC so as to use the composition in, for example, a broader range of construction applications (e.g., col. 11 lines 15-45).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lucas, as applied to claim 1, above, and further in view of Flannigan et al. (US 2005/0014894, “Flannigan”).
Regarding claim 3, while Lucas teaches to include a fumed silica filler (col. 11 lines 15-60), Lucas fails to teach the claimed hydrophobically treated anhydrous fumed silica is included as a filler. However, in the same field of endeavor of RTV silicone compositions ([0002]), Flannigan teaches to use a fumed hydrophobic (anhydrous) silica as a filler for an RTV organopolysiloxane elastomer in order to provide physical strength to the cured elastomer ([0015]). Thus it would have been obvious to the ordinarily skilled artisan at the time of filing to have included a fumed hydrophobic anhydrous silica as a filler for an RTV organopolysiloxane elastomer in order to provide physical strength to the cured elastomer ([0015]).
Claim(s) 4 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lucas, as applied to claim 1, above, and further in view of Pichl et al. (US 2016/0024258, “Pichl”).
Regarding claims 4 and 11, Lucas fails to specifically teach that the composition results in a translucent or transparent cured material, however in the same field of endeavor of silicone RTV materials for use in construction applications ([0005]), Pichl teaches that it is known and useful to provide the RTV silicone rubber material with various properties including, e.g., transparency and the ability to adhere to many materials so as to broaden the applications of the composition ([0005], [0102], [0108], [0109]), and it thus would have been obvious to the ordinarily skilled artisan to have provided the silicone material of Lucas with transparency in order to use the composition in various applications such as sealants, adhesives, coating agents, and the like ([0005], [0102], [0108], [0109]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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