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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on Augus 15, 2025 is acknowledged. The traversal is on the ground(s) that a skilled person would be discouraged from combining C1 and C2 in Tinnevelt et al. This is not found persuasive because Tinnevelt et al teaches the combination of two antioxidant compounds (Claim 1). Likewise, “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
The requirement is still deemed proper and is therefore made FINAL.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 14-15, 19, 21-23 are rejected under 35 U.S.C. 102(1) as being anticipated by Michinobu et al (JP 2021-55014).
Regarding claim 14-15, 19, 21-23, Michinobu et al teaches A-1 100 parts silyl polymer, 100 parts of calcium carbonate, 50 parts plasticizer, 1 part OKABEST CLX-50 (which satisfies claimed ????), 3 parts catalyst and 0.3 parts dehydrating catalyst (Table 2). Michinobu et al teaches silyl structures with at least one group having the formula I in claim 15 (Pg. 2).
Michinobu et al teaches the limitations of the instant claims; hence, Michinobu et al anticipates the claims.
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 14-15, 19, 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN107674638).
Regarding claims 14-15, 19, 21-22, Wang teaches a polymer structural sealant comprising 60-120 parts of hydroxy terminated polydimethylsiloxane (which satisfies claimed silyl polymer), 40-100 parts of flame retardant, 50-80 parts of inorganic filler, 10-30 parts crosslinking agent, 1-4 parts coupling agent, 4-8 parts catalyst and 3-7 parts antioxidant (Paragraphs 9-15). Wang further teaches the inorganic filler is calcium carbonate (Paragraph 20). Wang further teaches the antioxidant is any one or more of antioxidant A, RD, 4010 and 264 (Paragraph 24). However, Wang et al fails to specifically disclose a preferred embodiment comprising 20-45wt% of silyl polymer 30-55wt% of filler and 0.05-5wt% of antioxidant comprising consisting of antioxidant 264 and antioxidant A and/or antioxidant 4010.
It would have been obvious to one of ordinary skill in the art before the effect filing date of the claimed invention to have provided a composition comprising 20-45wt% of silyl polymer 30-55wt% of filler and 0.05-5wt% of antioxidant comprising consisting of antioxidant 264 and antioxidant A and/or antioxidant 4010 in Wang as Wang teaches overlapping amounts of the claimed components wherein the antioxidant is any one or more of antioxidant A, RD, 4010 and 264. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I). With respect to the molar ratio of C1:C2, it would only be obvious to the ordinary artisan to optimize/adjust the amount of antioxidant 264 and antioxidant A and/or antioxidant 4010; discovery of an optimum value of a result effective variable is ordinarily within the skill of the art. In re Boesch 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller 220 F.2d 454, 105 USPQ 233 (CCPA 1955); absent unexpected results.
Claims 14-15, 19, 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Tinnevelt et al (WO Patent 2017/052373 (already of record)).
Regarding claims 14-15, 19, 21-22, Tinnevelt et al teaches a sealant composition comprising 10-60wt% of a silyl polymer, 10-50wt% of filler and 0.05-5wt% of antioxidant, wherein a combination of the present antioxidants can be used (Pg.4). Tinnevelt et al further teaches calcium carbonate as the filler and any antioxidant can be chosen (Pg. 9 Table). Tinnevelt et al further teaches Irganox 5057 and L06 perform sufficient (Pg. 11). Tinnevelt et al further teaches Irganox 1330 in the Examples (Pg. 10). Tinnevelt et al further teaches a combination of antioxidants where one is Fig 4 and further comprising a core structure according to figure 1, 2 or 3 (Claim 1). However, fails to specifically disclose a preferred embodiment comprising 20-45wt% of silyl polymer 30-55wt% of filler and 0.05-5wt% of antioxidant comprising consisting of Irganox 1330 and 5057 or L06.
It would have been obvious to one of ordinary skill in the art before the effect filing date of the claimed invention to have provided a composition comprising 20-45wt% of silyl polymer 30-55wt% of filler and 0.05-5wt% of antioxidant comprising consisting Irganox 1330 and 5057 or L06 in Tinnevelt et al as Tinnevelt et al teaches overlapping amounts of the claimed components wherein the antioxidant can include Irganox 1330 and 5057 or L06. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I). With respect to the molar ratio of C1:C2, it would only be obvious to the ordinary artisan to optimize/adjust the amount of Irganox 1330 and 5057 or L06; discovery of an optimum value of a result effective variable is ordinarily within the skill of the art. In re Boesch 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller 220 F.2d 454, 105 USPQ 233 (CCPA 1955); absent unexpected results.
Allowable Subject Matter
Claims 16-18, 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 29, 2025