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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because the tables are in German and need to be in English. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 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.
Claims 1-2, 4-5, 9-10, 12-15 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 Huang et al US9321878B2.
Regarding claim 1-2, 4-5, 9-10, 13-14, Huang teaches a process for preparing a silylated polyurethane polymer from the reaction of a polyol with an isocyanatosilane or the reaction of an isocyanate terminated polyurethane with an amino or mercapto functional silane in the presence of a titanium or zirconium catalyst, Col. 1 lines 54-65.
Huang teaches the polyol can be selected as a polyester polyol, Col. 3 line 60, and lists examples of suitable polyesters in Col. 4 lines 44-49, which reads on the polymer backbone, A, of claims 1, 2, and 13.
The isocyanatosilanes have the general formula (I), Col. 5 line 67, which matches applicant’s formula (IV) and examples of the silanes include 3-isocyanatopropyltrimethoxysilane, 3-isocyanatopropylmethyldimethoxysilane, 3-isocyanatopropyltriethoxysilane, isocyanatomethylmethyldimethoxysilane, and isocyanatomethyltriethoxysilane, Col. 6 lines 8-19, which reads on claims 4 and 14.
Huang teaches one method for preparing the silylated polymer is to react the (polyester) polyol with one of the above isocyanatosilanes, in the presence of the titanium/zirconium catalyst, which reads on applicant reaction of (III) with (IV), Col. 9 lines 33-36. Huang shows an example of the structure in general formula (IV), col. 10. This example is for a polyether polyol, but reads on applicant’s formula (I) where a polyester polyol is substituted in place of the polyether, and also reads on the linear polymer (IA) of claim 5. Huang lists four classes of polyol to select from, therefore a silylated polymer where the polyester polyol replaces the polyether polyol would be at once envisaged by one skilled in the art. In any case, the claimed invention would be obvious if not anticipated.
The fact that Huang discloses several types of polyols which can be suitably selected to form a silylated polymer does not render any particular combination of polyol and isocyanatosilane less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Huang additionally teaches the silylated polyurethane can alternatively be prepared by reacting an isocyanate terminated polyurethane with an amino or mercapto functional silane, in the presence of the titanate and/or zirconium catalyst, Col. 9 lines 46-50, which reads on the claimed process for forming formula (II), where (III) is reacted with (V) and (VI). The isocyanate-terminated polyurethane is obtained by reacting the (polyester) polyol with a polyisocyanate, Col. 7 lines 62-65, the polyisocyanates are any known polyisocyanates such as isophorone diisocyanate or diphenylmethane diisocyanate, Col. 5 lines 40-46, which reads on the claimed isocyanate of formula (V).
Huang further teaches the amino or mercapto functional silane is of formula (III), Col. 8 line 26, which reads on applicant’s silane formula (VI). Huang lists specific examples of the amino or mercapto silanes which read on applicant’s formula (VI) such as 2-mercaptoethyltrimethoxysilane and N-methyl-3-amino-2-methylpropyltrimethoxy silane, Col. 8 lines 40-67.
The reaction catalysts are titanium, zirconium, or a mixture thereof, Col. 6 lines 21-23; Huang lists specific titanate catalysts such as titanium (IV) bis(ethylacetoaceto)diisopropoxy, which reads on the catalyst of claims 9 and 10.
Huang teaches the polymer and composition are essentially tin-free and have less than 1 ppm tin content in order to obtain better storage stability and less toxicity, abstract, Col. 1 line 14, and Col. 3 line 32, which therefore suggests the reactants from which the polymer is derived would necessarily be tin-free also.
Regarding claim 12, Huang does not remove the titanium or zirconium catalyst from the examples after the silylated polymer is made, Col. 20 lines 45-67 and Col. 21 lines 1-9.
Regarding claim 15, Huang teaches the silylated polymers are cured to form sealants, coatings, and adhesives, Col. 2 lines 2-5, where the composition is essentially tin-free, Col. 3 lines 32-36.
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 3, 6-8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al US9321878B2.
Regarding claim 3, Huang teaches the invention according the claim 1 as explained above. Huang also teaches that the polyol can further comprise an additional diol as chain extender such as propylene glycol, Col. 5 line 12, which would produce a methyl group branching off the main polymer chain, and therefore reads on the branched diol component.
Regarding claims 6 and 7, Huang teaches a particular polyester polyol can be polycaprolactone triol, Col. 4 lines 3-4, which would produce a branched polymer of formula (IB) where x=2 and y-x=0, when reacted with the isocyanatosilane. Furthermore, Huang teaches the isocyanato silane can be used in a molar excess of the hydroxyl groups, where the molar ratio of NCO:OH can be 1.5:1.0, Col. 9 lines 39-44, which would mean all of the hydroxyl groups are reacted and the polymer of formula (IB) would be substantially free of free hydroxyl groups.
Regarding claim 8, Huang teaches the silylated polymer and composition are to be essentially tin free with less than 1 ppm tin, Col. 3 line 35. Huang is silent as to the exact catalyst used for the preparation of the polyol reactant, but teaches using titanium, zirconium, or a mixture thereof as a replacement for tin catalysts to reduce the toxicity of the polymer and composition made therefrom, Col. 1 lines 37-47 and lines 64-65. Therefore it would be obvious to a person having ordinary skill in the art to select the same catalysts, titanium, zirconium or a mixture thereof, used for the preparation of the silylated polymer, for the preparation of the polyol reactant with the motivation of reducing the overall toxicity and keeping the polymer and composition essentially tin-free and titanium and zirconium catalysts are suitable replacements for tin catalysts as disclosed by Huang.
Regarding claim 11, Huang teaches the reaction catalysts are titanium, zirconium, or a mixture thereof, Col. 6 lines 21-23; the suggestion of a mixture of the titanate and zirconium catalysts reads on claim 11.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765