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 6/30/2026 are entered and have been fully considered. Claim 1 has been amended and claims 2-3 are cancelled. Regarding the drawings, the objection to the drawings is not in error and remains because there is a file in the application contents submitted 7/28/2023, labeled as drawings, that is a table in the German language and appears to be a duplicate of the tables of results in the instant specification. It appears the file was submitted in error, as such, applicant will have to file a petition to expunge, see MPEP 724.05.
Drawings
The drawings submitted 7/28/2023 are objected to because the tables are in German and need to be in English, or if submitted in error, the document needs to be expunged, see MPEP 724.05. 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 § 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 1, 4-15 are rejected under 35 U.S.C. 103 as obvious over Huang et al US9321878B2.
Regarding claims 1, 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 and 13. Huang also teaches the polyol can also be prepared from a reaction mixture of a polyol with a diol chain extender, Col. 5 line 8. The exemplified chain extenders include propylene glycol, also known as 1,2-propanediol, Col. 5 line 12, which reads on the claimed branched diol component.
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 a method for preparing the silylated polymer by reacting the (polyester) polyol with one of the above isocyanatosilanes, in the presence of the titanium/zirconium catalyst, Col. 9 lines 33-36, which reads on applicant reaction of (III) with (IV) of claim 1. 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 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.
The fact that Huang discloses several types of polyols and chain extenders which can be suitably selected to form a silylated polymer does not render any particular combination of polyol and chain extender 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).
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 method of Huang and use a polyol formed from the reaction of a polyester polyol and 1,2-propanediol as the polyol to be reacted with an isocyanatosilane with the motivation of producing the predictable result of another permutation of a tin-free silylated polyurethane polymer as taught by Huang.
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.
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.
Response to Arguments
In light of the amended claim 1, the 102 rejection has been withdrawn, but a new ground of rejection under 103 over Huang has been applied.
Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that Huang does not disclose or suggest the process where the polymer backbone comprises a branched diol component, examiner points to Col. 5 lines 8-3 where Huang contemplates the polyols are prepared from reaction mixtures with additional diols such as propylene glycol, which is 1,2-propanediol.
In response to applicant’s argument that Huang teaches a broad process with broad classes of polyols, examiner points to the fact that Huang teaches both claimed paths to achieving the silylated polymer and contemplates including a specific branched diol within the polyol component, which leads one of ordinary skill in the art to produce the claimed invention.
In response to applicant’s argument that Huang does not directly disclose or suggest the specific use of propylene glycol, the prior art need not have an embodiment for every iteration disclosed. Furthermore, Huang does directly suggest it by clearly teaching “Polyol (ii) can also be prepared from a reaction mixture containing one or more chain extenders and/or one or more other polyols. Examples of suitable chain extenders are polyhydric alcohols such as … propylene glycol…”, Col. 5 lines 8-12.
The fact that Huang discloses several types of polyols and chain extenders which can be suitably selected to form a silylated polymer does not render any particular combination of polyol and chain extender 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).
In response to applicant’s argument that Huang does not disclose the combination of required selections or give any direction suggesting the combination to achieve the claimed invention, examiner points to Col. 1 lines 52-65 where Huang specifically gives the two routes to achieve the process of claim 1 and the following selections from Huang are made to meet Applicants’ claim, (i) two synthetic approaches for making the silylated PU, of which Huang teaches both, and, just as significantly, no others; (ii) the selection of polyester polyol from one of only 4 primary classes of polymer polyol; (iii) the selection of a non-tin catalyst when Huang teaches only using non-tin catalysts, and (iv) the use of one of several branched diol where propylene glycol is admittedly the only overlapping species. Therefore the selections are not so broad as to prevent the skilled artisan from conceiving the claimed invention derived from the teachings of Huang.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s argument that Huang lists broad lists of possible components requiring hindsight to combine is unpersuasive because Huang only lists four classes of polyol: polyether, polyester, hydroxyl terminated polybutadienes, and hydroxyl terminated polyurethanes (which use the same polyols), therefore four options of polyol is not so broad that one of ordinary skill in the art would not conceivably practice all of them in the method of Huang. Additionally, the list of diol chain extenders disclosed by Huang is also not so broad that the skilled artisan would not conceivably use 1,2-propanediol to construct the polyol, but rather it is listed within the first two. Furthermore, the argument that Huang does not describe the propylene glycol as preferred is unpersuasive because all the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art even though the art teachings relied upon are phrased in terms of a non-preferred embodiment or even as being unsatisfactory for the intended purpose, In re Boe, 148 USPQ 507 (CCPA 1966); In re Smith, 65 USPQ 167 (CCPA 1945); In re Nehrenberg, 126 USPQ 383 (CCPA 1960); In re Watanabe, 137 USPQ 350 (CCPA 1963).
Regarding applicant’s argument that Huang does not teach the excellent storage stability and processability due to the incorporation of the branched diol component, it is not necessary that the prior art teach the same properties as applicant, furthermore the data relied upon doesn’t show that the stability is derived from the incorporation of propylene glycol, or other branched diol, in the polymer but, rather, from the absence of tin in Example 1; nor does it prove that the branched diols also impart improved processability.
Furthermore, a mere conclusion that Applicant’s invention exhibits unexpected results regarding the ease of processability due to the branched diol is not enough to show non-obviousness. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02. Applicant does not provide data on stability or processability based on branched diols versus non-branched diols used in the polymer.
In response to applicant’s argument of unexpected results regarding storage stability, the data is unconvincing and is not commensurate in scope with the claims.
First, the claims are broader in scope than the data, the claims are directed to two pathways of producing the silylated polyurethane, the reaction of (III) with (IV), and alternatively the reaction of (III) with (V) followed by (VI). Where the polyol of (III) can be different classes of polyol, polyester, polycarbonate or a combination thereof. However, the inventive examples of the as-filed specification are produced using polyester polyols P4010 and SS4080 and both examples follow the path of reacting the polyol (III) with the (IV) isocyanato silane. Additionally, the polyester polyols are made with specific ingredients, adipic acid and 3-methyl-1,5-pentanediol, whereas the claim is directed to a much broader class of polyester polyols where it can be any polyester polyol (including those with higher functionality) as long as it comprises a component of one of the branched diols, which can include chain extenders. The inventive examples utilize one type of isocyanato silane, while the claim encompasses many more species.
Second, the inventive examples only utilize the branched polyester polyol and do not have a comparison with an unbranched polyester polyol, applicant’s assertion that the branching contributes to the excellent storage stability and processability is not shown in the data provided and is therefore unpersuasive. Instead, applicant tests the polymers made with tin versus a titanate catalyst and the results show that the lack of tin improves stability, which Huang already teaches by using an atmospheric moisture test and measuring viscosity. The result of the improved storage stability is not actually unexpected based on the findings of Huang, despite the tests being of a different nature. Applicant does provide evidence that the physical properties of the polymers without tin are maintained over time while the polymers with tin have a decrease in physical properties over time, which is absent from Huang, but the showing is not commensurate in scope with the claims.
Applicant’s argument that Huang does not recognize that tin must also be excluded from the reactants is not persuasive because Huang specifically 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. Furthermore, Huang exemplifies the process without the use of tin and produces the hydroxyl terminated polymer in Col. 20 without tin and states there must be less than 1 ppm of tin in the polymer, therefore the skilled artisan would understand the polyol used for the silylated polyurethane must necessarily be without tin.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., ease of processability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
For the reasons given above, the rejection over Huang is maintained.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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