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
1. Applicant's election with traverse of Group I in the reply filed on 08/29/2025 is acknowledged. The traversal is on the grounds that the Examiner did not address that the adhesive was to be used in a chlorinated water environment as noted by the preambles of claims 1 and 13, which Applicant asserts is part of the shared technical feature. This is not found persuasive because such limitation is not part of the shared technical feature. While both independent claims 1 and 13 recite that the adhesive is to be used in a chlorinated water environment, claim 13 is directed to a product, while claim 1 is directed to a method. This is an intended use preamble statement, which MPEP 2111.02. II teaches that to incorporate these limitations into a method claim requires a “manipulative difference”. The current preamble- “a joint or surface in or on a building structure that is in contact with chlorinated water” is broad enough, particularly with the phrase “on a building structure” that the joint may never be in contact with chlorinated water. This results in no manipulative difference in the method and therefore is not incorporated into the method claim and is not part of the shared technical feature. In arguendo that Applicant is nonetheless correct, other prior art was found to reject the entirety of claim 1 and therefore the restriction is either way still proper and is maintained.
The requirement is still deemed proper and is therefore made FINAL.
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.
2. Claims 2, 5-7 are 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.
Regarding claim 2, claim 2 line 2 states “comprises or consists of”. This renders the claim indefinite as the scope of the claim is not clear. The scope of “comprises” is that the polymer has at least the limitations of claim 2, while the scope of “consists of” is that the polymer only has the properties of claim 2. It is unclear what exactly Applicant is claiming. For the sake of compact prosecution, the Examiner will interpret this claim as “comprises”. Please clarify which claim scope Applicant is claiming.
Regarding claim 5, Claim 5 recites the limitation "said at least one organosilane" in lines 4-5 as well as “said curing catalyst” in lines 5-6. There is insufficient antecedent basis for these limitations in the claim. The original support was removed from claim 1 in the amended claims list filed 09/08/2023. The Examiner will interpret these phrases as not having the word “said” for the sake of compact prosecution.
Regarding claim 7, Claim 7 recites the limitation "said organosilane" in line 2. There is insufficient antecedent basis for this limitation in the claim. The original support was removed from claim 1 in the amended claims list filed 09/08/2023. The Examiner will interpret this phrase as not having the word “said” for the sake of compact prosecution.
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.
3. 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.
4. Claims 1-6, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Maurice (US 5,356,504) in view of Schwöeppe et al. (US 7,807,016; hereafter known as Schwoeppe), and Roesler et al. (US 2004/0132950; hereafter known as Roesler).
Regarding claim 1, Maurice teaches a method wherein a surface is adhesively sealed on a building structure that is in contact with chlorinated water (col. 1 lines 15-18). The method step comprises applying a primer (adhesive) to the surface, waiting for the primer to cure, and applying a sealant composition (silicone sealant) onto the cured primer composition to seal the joint (Claim 1). In the examples this sealant is then allowed to cure (col. 4 lines 23-27).
Maurice does not teach that the primer comprises at least one polyol and at least one polyisocyanate, or a polyurethane reaction product thereof, and at least one organic solvent. In a related art, Schwoeppe teaches a primer the comprises at least one polyol and at least one polyisocyanate (col. 2 lines 40-45) and at least one organic solvent (col. 4 lines 8-32). The advantage of Schwoeppe’s primer is that it is excellent and has broad applicability (col. 1 lines 27-31). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to use the primer of Schwoeppe in the method of Maurice for the advantage of having an excellent primer with broad applicability.
Maurice does not teach the specific sealant composition or that it is moisture cured. In a related art, Roesler teaches a moisture-curable sealant composition (title) comprising between 20 and 90% based on the total composition S, of at least one organic polymer having hydrolysable silane groups ([0016]; noted as hydrolysable in [0003]), and a silane curing catalyst ([0076]-[0077]). It is noted that a claimed range which overlaps, lies within, or is near a prior art range establishes a prima facie case of obviousness for using values in the claimed range. See MPEP 2144.05. The advantage of Roesler’s sealant is that it has high tensile strength and elongation ([0006]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to use the sealant of Roesler in the method of Maurice for the advantage of having a sealant with high tensile strength and elongation.
Regarding claim 2, in applying Roesler as in claim 1, Roesler teaches that the organic polymer is prepared by reacting a molar excess of a diisocyanate with a polyol to yield an isocyanate-functional polyurethane polymer ([0043]), which is then reacted with an aminosilane ([0043]). This is to create two or more silane reactive groups that are alkoxysilanes ([0016]-[0018]), as well as establishing the non-hydrolysable secondary amino group.
Regarding claims 3 and 4, in applying Roesler as in claim 2, Roesler suggests that the diisocyanate is an aliphatic diisocyanate, specifically isophorone diisocyanate ([0035]) and that the polyol is a polyether polyol specifically a polyether diol ([0038]). As previously noted in claim 2, there are “two or more” hydrolysable alkoxysilane groups and one secondary amino group, the “two or more” range renders three groups as obvious. It is noted that a claimed range which overlaps, lies within, or is near a prior art range establishes a prima facie case of obviousness for using values in the claimed range. See MPEP 2144.05.
Regarding claim 5, in applying Schwoeppe as in claim 1, Schwoeppe teaches that composition-wise adhesion promoters, which includes organosilanes (col. 5 lines 31-33) are between 1-20 weight percentage with the residual 80-99 weight percentage being at least one polyisocyanate compound (Claim 1). If solvent is used, it should comprise about 50-85 weight percentage (col. 4 lines 25-32). This establishes an effective weight percentage range of 40-49% of polyisocyanate compositions, and 0.0015-10% for organosilane. If broken into 2 different compositions, the polyisocyanates can be in ranges of 0.1-49%. While Schwoeppe teaches the use of a catalyst, they do not teach a specific weight percentage, although if used it is greater than zero. This is merely close to Applicant’s claimed range of 0.01-1%.
The ranges of the polyisocyanates and organosilane overlap Applicant’s claimed ranges. It is noted that a claimed range which overlaps, lies within, or is near a prior art range establishes a prima facie case of obviousness for using values in the claimed range. See MPEP 2144.05.
Regarding claim 6, in applying Schwoeppe as in claim 5, Schwoeppe teaches that usable polyisocyanates includes isophorone diisocyanate, toluene diisocyanate, methylene diphenyl diisocyanate, hexamethylene diisocyanate, and polymeric derivatives (col. 2 lines 50-62). Polymeric derivatives would include the trimers, and if there are two isocyanates, they can be in the combination as claimed by Applicant.
Regarding claim 11, Maurice teaches that their method applies to what becomes submerged parts of a swimming pool (col. 1 lines 15-18), which Applicant in their Specification notes that it is known in the art to chlorinate a swimming pool to contain at least 20 ppm of hypochlorite and/or hypochlorous acid (pg. 7 lines 12-23), which is more than Applicant’s claimed 1 ppm. In consequence, Maurice’s method teaches the limitations of claim 11.
Regarding claim 12, Maurice teaches that the building structure is to be applied to swimming pool parts made of concrete (col. 1 lines 15-18).
5. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Maurice, Schwoeppe, and Roesler as applied to claim 1 above, and further in view of Stanjek et al. (US 2017/0137677; hereafter known as Stanjek).
Regarding claim 7, in applying Schwoeppe as in claim 1, Schwoeppe does not teach of an adhesuion promoter that consists of at least one organosilane having hydrolysable alkoxysilane groups and having a glycidoxyalkyl group. In a related art, Stanjek teaches an adhesion promoter that consists of at least one organosilane having hydrolysable alkoxysilane groups and having a glycidoxyalkyl group ([0110]-[0111]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the organosilane having hydrolysable alkoxysilane groups and having a glycidoxyalkyl group as suggested by Stanjek in the composition of Schwoeppe for the advantage of adhesion promotion.
6. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Maurice, Schwoeppe, and Roesler as applied to claim 1 above, and further in view of Teysseire (US 2007/0043196).
Regarding claim 8, in applying Schoeppe as in claim 1, Schoeppe does not teach a specific time for curing their primer. In a related art, Teysseire teaches that primer should have a cure time between a few hours and a few days. The advantage of this cure time is that it ensures that the adhesion to the primer is effective, and the production is efficient ([0003]). This overlap’s Applicant’s claimed range of 3-24 hours. It is noted that a claimed range which overlaps, lies within, or is near a prior art range establishes a prima facie case of obviousness for using values in the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to establish the cure range of Teysseire for the primer of Schoeppe for the advantage of effective application and efficient production.
7. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Maurice, ???, and Roesler as applied to claim 1 above, and further in view of Rizk et al. (US 4,758,648; hereafter known as Rizk).
Regarding claim 9, Roesler does not teach the cure time for their sealant. In a related art, Rizk teaches that it is preferable for moisture cured adhesive to have a cure time of 24 hours when cured by atmospheric moisture (col. 1 lines 40-46). With this cure time known to be desirable, the sealant of Roesler can be optimized to such a value by routine experimentation- “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the 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, 456, 105 USPQ 233, 235 (CCPA 1955)”- MPEP 2144.05.II.A. It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to optimize the sealant as taught by Roesler to have the cure time of 24 hours in atmospheric moisture as suggested by Rizk as part of Routine Optimization.
8. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Maurice, Schoeppe, and Roesler as applied to claim 1 above, and further in view of Totally Seals (Webpage NPL; PDF included with Office Action; dated 05/9/2019).
Regarding claim 10, in applying Roesler as in claim 1, Roesler does not teach the Shore A hardness of its material. In a related art, Totally Seals teaches that the hardness of semi-rigid polymers is done on the Shore A scale (pg. 3 para. 3) and teaches that for polymers applied to rough surfaces a Shore A hardness should be between 20 and 40 (pg. 4 bullet points 2-3). Since Maurice is applying their sealant to cement, which is rough, it would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to ensure that the Shore A hardness is between 20 and 40 for effective bonding for the rough cement surface.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745