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 without traverse of Group II, claims 2-10 in the reply filed on 7/7/2026 is acknowledged.
Claims 1 and 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/7/2026.
Claim Objections
Claim 9 is objected to because of the following informalities: the species “N-phenyl-1-napthylamine” is listed twice within the Markush group. Appropriate correction is required.
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.
Claims 3 and 9 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 3 recites “wherein the at least one silane functional prepolymer is selected from the list of prepolymers formed by polyurethanes having at least one alkoxysilane group…”. The claim appears to require a silane-functional prepolymer that is in turn made from another silane-functional prepolymer. However, the specification as originally filed appears to suggest the listing of alkoxyfunctional polymers are the prepolymers themselves and are not reactants used to create them. The disconnect between the specification and claims renders the intended scope of the claim unclear.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “(also octylated diphenylamine)”, and the claim also recites “bis(4-oxylphenyl)amine” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 2-7 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thebes (WO 2018/073102 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 2, 3, 6, and 7, Thiebes teaches aminosilanes as stabilizers for silane-modified polyethers (Page 1) and describes examples where silane terminated polyurethane prepolymers are stabilized with N-(n-butyl)-3-aminopropyltrimethoxysilane (Pages 17-18), which does not have oxalanilide or 2,2,6,6-tetramethylpiperidinyl groups. The silane groups are preferably -SiR3 where R is methoxy or ethoxy (Pages 11-12).
Regarding Claim 4, Thiebes teaches weight average molecular weights spanning 500-24,000 g/mol. Since weight average molecular weight values are intrinsically larger than number averages, Thiebes meets the molecular weight characteristics claimed.
Regarding Claim 5, Thiebes teaches the silane groups are preferably -SiR3 where R is methoxy or ethoxy (Pages 11-12). Thiebes teaches various ways silane-modified polymers can be prepared, such as reaction of polyethers containing allyl groups with hydrosilanes (Page 11), which would result in structures of Formula (I) where R3 is a C3 alkylene.
Regarding Claim 10, Thiebes teaches embodiments where stabilizer is included at roughly 1.92 wt% (Page 18).
Claim(s) 2-8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (WO 2012/057281 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 2, 6-8, and 10, Watanabe teaches curable compositions (¶ 8) and describes an embodiment in Example 19 comprising trimethoxysilane terminated prepolymers, catalyst, additives, and roughly 0.8 wt% of 4,4’-bis(α,α-dimethylbenzyl)diphenylamine aging stabilizer (¶ 320-321, 192-194, 237; Table 17).
Regarding Claims 3 and 4, Watanabe describes polymeric polyols having alkoxysilane group being created with a reported Mn of 4000 (¶ 216, 237). The various resins of ¶ 48 are further noted.
Regarding Claim 5, the polymer polyols are created with 3-methacryloxypropyltrimethoxysilane (¶ 237), which would yield alkoxysilane groups of Formula (I) where R3 is C3 alkylene, a = 3, and R2 is C1 alkyl.
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (WO 2012/057281 A1) as evidenced by SIELC (Styrenated Diphenylamine Information). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Watanabe within ¶ 16-18 is incorporated herein by reference.
Regarding Claim 9, as evidenced by SIELC, 4,4’-bis(α,α-dimethylbenzyl)diphenylamine aging stabilizer is styrenated diphenylamine. Alternatively, from a list of 19 preferred aging stabilizers, Watanabe expressly teaches 2,2,4-trimethyl-1,2-dihydroquinoline, N-phenyl-1-napthylamine, octylated diphenylamine, N-isopropyl-N’-phenyl-p-phenylenediamine, N-(1,3-dimethylbutyl)-N’-phenyl-p-phenylenediamine, and 4,4’-bis(α,α-dimethylbenzyl)diphenylamine (aka styrenized diphenylamine) (¶ 192-197). The position is taken that Watanabe anticipates each species in the alternative. See MPEP 2131.02(II).
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) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thebes (WO 2018/073102 A1) in view of Watanabe (WO 2012/057281 A1). As the cited WO publications are in a non-English language, machine-translated versions of the publication will be cited to.
Thiebes teaches aminosilanes as stabilizers for silane-modified polyethers (Page 1) and describes examples where silane terminated polyurethane prepolymers are stabilized with N-(n-butyl)-3-aminopropyltrimethoxysilane (Pages 17-18), which does not have oxalanilide or 2,2,6,6-tetramethylpiperidinyl groups. The silane groups are preferably -SiR3 where R is methoxy or ethoxy (Pages 11-12).
Regarding Claims 8 and 9, Thiebes differs from the subject matter claimed in that aging stabilizers consistent with claims 8 and 9 are not described. Watanabe is also directed toward curable silane compositions (¶ 1). Watanabe teaches it was known in the art aging stabilizers can be used to improve heat resistance by preventing thermal deterioration of the curable composition (¶ 192). It would have been obvious to one of ordinary skill in the art to utilize the aging stabilizers of Watanabe within the compositions of Thiebes because doing so would improve heat resistance by preventing thermal deterioration of the curable composition as taught by Watanabe.
Watanabe expressly teaches 2,2,4-trimethyl-1,2-dihydroquinoline, N-phenyl-1-napthylamine, octylated diphenylamine, N-isopropyl-N’-phenyl-p-phenylenediamine, N-(1,3-dimethylbutyl)-N’-phenyl-p-phenylenediamine, and 4,4’-bis(α,α-dimethylbenzyl)diphenylamine (aka styrenized diphenylamine) (¶ 192-197).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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