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 .
Status of Claims
Claims 1-17 are pending in the current application.
Claim Interpretations
Claims 1-17 recite the term “room temperature.” The specification as originally filed at [0014] provides a definition for the term “room temperature.” For the purpose of examination, the term “room temperature” is interpreted as 23oC ±15oC at a relative humidity of 50% ±5% RH.
Claims 1-17 recite the relative term “fast-curable.” The use of relative terminology in claim language, including terms of degree, does not automatically render the claim indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984). Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification. Clearone, Inc. v. Shure Acquisition Holdings, Inc., 35 F.4th 1345, 1349, 2022 USPQ2d 509 (Fed. Cir. 2022). See MPEP 2173.05(b). The specification as originally filed at [0056] provides a definition for the term “fast-curable.” For the purpose of examination, the term “fast-curable” is interpreted as curing in a time of 10 minutes to 3 days in the basis of molding into a sheet having a thickness of 2 mm at 23oC and 50% relative humidity.
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 applicant regards as his invention.
Claim 6 is 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.
Claim 6 is indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h).
For the purposes of examination, claim 6 is interpreted as reciting “one or more inorganic filling agents selected from the group consisting of calcium carbonate, …, and aluminum oxide.” Alternatively, claim 6 could be amended to recite “one or more inorganic filling agents selected from calcium carbonate, …, or
Correction is required.
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.
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 1-8 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura et al. (US 2008/0251200 A1).
Regarding Claim 1, Kimura teaches a room temperature fast-curing organopolysiloxane composition formulated as a two part composition comprising a first part (first pack) containing (A) 10-90 parts by weight of a diorganopolysiloxane of HO-(R2SiO)n-H that satisfies general formula (1) of claim 1, (B) 0.5-10 parts by weight of a silane and/or siloxane having at least 3 alkenoxy silyl groups, and (D) 0.01-10 parts by weight of a curing catalyst; and a second part (second pack) containing (A) 10-90 parts by weight of a diorganopolysiloxane of HO-(R2SiO)n-H that satisfies general formula (1) of claim 1, (C) 0.5-10 parts by weight of a silane and/or siloxane having at least 3 aminosilyl groups, and (D) 0-9.99 parts by weight of a curing catalyst (Kimura, [0002], [0015]-[0027]). Kimura’s first pack (A) diorganopolysiloxane content is identical to the claimed range of 10-90 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03). Kimura’s first pack (D) curing catalyst content is encompassed within the claimed range of 0.001-10 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03). Kimura’s second pack (A) diorganopolysiloxane content is identical to the claimed range of 10-90 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03). Kimura teaches the (B) silane and/or siloxane content range is encompassed within the claimed range of 0.1-30 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03). Kimura teaches the (B) silane and/or siloxane having at least 3 alkenoxy silyl groups has a structure of the formula depicted below, where R1 is a monovalent hydrocarbon group having 1-10 carbon atoms, x is 0 or 1, R2 and R3 may together represent an alicyclic hydrocarbon group having the C=C double bond with R2 and R3 capable of each being a group of 1-10 carbon atoms, and R4 preferably being a hydrogen atom (Kimura, [0034]-[0040]). Kimura’s R2 and R3 alicyclic hydrocarbon group having the C=C double bond renders obvious the structure of general formula (4) of claim 1 when the sum total of R2 and R3 carbon atoms is from 2-8, where the compounds within this scope are identical to the claimed (B) hydrolysable organosilane compounds. "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. Id. In view of the foregoing, Kimura’s silane and/or siloxane having at least 3 alkenoxy silyl groups with R2 and R3 being alicyclic hydrocarbon group having the C=C double bond and a sum total of R2 and R3 carbon atoms is from 2-8 is considered to necessarily exhibit the hydrolysable properties required by claim 1.
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Kimura – Component (B) formula
Regarding Claim 2, Kimura teaches the room temperature fast-curing organopolysiloxane composition comprises component (C) in the second pack in an amount of 0.5-10 parts by weight, where component (C) is a silane and/or siloxane having a -NH2 groups (primary amino groups) capable of crosslinking (Kimura, [0023], [0041]-[0045]). Kimura teaches the (C) silane and/or siloxane content range is encompassed within the claimed range of 0.1-20 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claims 3 and 4, Kimura’s (B) silane and/or siloxane having at least 3 alkenoxy silyl groups with R2 and R3 alicyclic hydrocarbon group having the C=C double bond renders obvious the structure of general formula (4) of claim 1 when the sum total of R2 and R3 carbon atoms is from 2-8 (Kimura, [0034]-[0040]), where the compounds within this scope are identical to the claimed (B) hydrolysable organosilane compounds. "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. Id. In view of the foregoing, Kimura’s silane and/or siloxane having at least 3 alkenoxy silyl groups with R2 and R3 being alicyclic hydrocarbon group having the C=C double bond and a sum total of R2 and R3 carbon atoms is from 2-8 is considered to necessarily exhibit the hydrolysable properties required by claim 1 and be capable of desorbing a cyclic ketone compound by hydrolysis required by claim 3. Kimura teaches the component (B) can promote a ketimine formation with the addition of an organic compound having a ketone group such as isobutyl ketone (butyl-based ketone) or cyclohexanone (cyclic-based ketone) (Kimura, [0009], [0034]-[0039], [0053]). It would have been obvious to one of ordinary skill in the art to have substituted an equivalent butyl-based or cyclic-based ketone compound (such as cyclobutanone or cyclopentanone as required by claim 4) for the same purpose with a predictable and reasonable expectation of success (MPEP 2144.06, MPEP 2143).
Regarding Claims 5 and 6, Kimura teaches the room temperature fast-curing organopolysiloxane composition comprises (F) an inorganic filler (such as fumed silica as required by claim 6) in an amount of 1-500 parts by weight (Kimura, [0051]-[0052]). Kimura’s filler content falls within the claimed range of 0.1-1000 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 7, Kimura teaches the room temperature fast-curing organopolysiloxane composition comprises (E) a silane coupling agent (i.e., adhesion promoter) in an amount of 0.1-10 parts by weight (Kimura, [0049]-[0050]). Kimura’s silane coupling agent content falls within the claimed range of 0.001-10 parts by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 8, Kimura teaches a blending weight ratio of the first pack to the second pack is 25:75 to 75:25 (1:3 to 3:1) (Kimura, [0080]). Kimura’s weight ratio overlaps the claimed ratio of 1:1 to 10:1, and therefore, renders obvious the claimed ratio (MPEP 2144.05).
Regarding Claim 14-17, Kimura teaches the room temperature fast-curing organopolysiloxane composition is adapted for products including an adhesive agent, a sealing agent, a coating, and a potting agent (Kimura, [0002], [0027], [0084]).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura et al. (US 2008/0251200 A1) as applied to claim 1 above, and further in view of Araki et al. (US 2011/0034613 A1).
Regarding Claims 9-11, Kimura teaches the room temperature fast-curing organopolysiloxane composition as discussed above for claim 1. Kimura teaches the room temperature fast-curing organopolysiloxane composition is adapted for products including an adhesive agent, a sealing agent, a coating, and a potting agent (Kimura, [0002], [0027], [0084]).
Kimura remains silent regarding the room temperature fast-curing organopolysiloxane composition being specifically utilized for automobile parts, automobile sealants, and electrical/electronic parts.
Araki, however, teaches a two-part room temperature fast-curable organopolysiloxane composition formed of a first part and a second part, where the second part comprises an organopolysiloxane of general formula (7) that satisfies general formula (1) of claim 1 and an organotin catalyst (curing catalyst); and the first part comprises an organopolysiloxane of general formula (1) that satisfies general formula (1) of claim 1 (Araki, Abstract, [0002]-[0025], [0060]-[0062]). Araki’s two-part room temperature fast-curable organopolysiloxane composition is used as a sealant in automotive parts and electrical/electronic parts (Araki, [0024]-[0025], [0061]).
Since Kimura and Araki both disclose similar two-part room temperature fast-curable organopolysiloxane compositions for use as adhesive and sealing agents, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Kimura’s composition specifically for automobile parts, automobile sealants, and electrical/electronic parts, because such compositions exhibit fast and deep curability, desired mechanical and workability properties, and desirable curability under low temperature and low humidity conditions as taught by Araki and Kimura (Araki, [0024]-[0025], [0060]-[0062]; Kimura, [0002], [0032], [0082]-[0084]).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura et al. (US 2008/0251200 A1) as applied to claim 1 above, and further in view of Fujiwara et al. (JP 2015113377 A, herein English machine translation utilized for all citations).
Regarding Claims 11-13, Kimura teaches the room temperature fast-curing organopolysiloxane composition as discussed above for claim 1. Kimura teaches the room temperature fast-curing organopolysiloxane composition is adapted for products including an adhesive agent, a sealing agent, a coating, and a potting agent (Kimura, [0002], [0027], [0084]).
Kimura remains silent regarding the room temperature fast-curing organopolysiloxane composition being specifically utilized for electrical/electronic parts, building/civil engineering structures.
Fujiwara, however, teaches a room temperature curable organopolysiloxane composition comprising an organopolysiloxane that satisfies general formula (1) of claim 1, a hydrolysable organosilane compound, and a curing catalyst (Fujiwara, [0001], [0009]-[0012]). Fujiwara’s room temperature curable organopolysiloxane composition is used as adhesives and sealants in electrical/electronic parts and industrial/architectural/structural/construction/building sealants (i.e., building/civil engineering structures) (Fujiwara, [0002]-[0003], [0006], [0008], [0010], [0038]).
Since Kimura and Fujiwara both disclose similar room temperature curable organopolysiloxane compositions for use as adhesive and sealing agents, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Kimura’s composition specifically for electrical/electronic parts and construction/building sealants, because such compositions exhibit good appearance, good thixotropy, good storage stability, excellent weather resistance, excellent electrical properties, deep curability, and desired mechanical and workability properties as taught by Fujiwara and Kimura (Fujiwara, [0001]-[0002], [0008]; Kimura, [0002], [0032], [0082]-[0084]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782