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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1-3, 5-14 are pending. Applicant’s previous election of Group I, claims 1-3, 5-6 and glycidoxypropyltrimethoxysilane as the adhesion promoter species still applies and claims 7-14 remain withdrawn.
Response to Amendment
Applicant’s amendment of 01/08/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-3, 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phukan (U.S. 2020/0325336) in view of Mizushima (U.S. 2007/0281564).
Regarding claims 1-3, 5-6, Phukan teaches a silicone composition (the intended use for a topcoat on a silicone/polyurethane synthetic leather is not given patentable weight and is merely an intended use that the composition of Phukan is inherently capable of) that includes a mixture of alkenyl group containing polysiloxanes with overlapping number of alkenyl groups and viscosity ([0017], [0023], a mixture of such siloxanes is not in the general disclosure but the examples show that a mixture of more than one such siloxane is preferred/exemplified and therefore obvious, [0163], Table 1), a hydrophobically treated reinforcing inorganic filler ([0037], [0040]), a Si-H siloxane overlapping claim 2 ([0028]-[0034]), a hydrosilation catalyst ([0046]), an ecosolvent as claimed ([0100], the same compounds are inherently ecosolvents), silicone elastomer powder with overlapping size as in claim 3 ([0090]-[0094]), additives as in claim 5 ([0054]), and adhesion promoters such as the elected glycidoxysilane compound (as in claim 6) and zirconium acetyl acetonate ([0066]).
Phukan does not disclose the claimed amount of the adhesion promoters, however, Mizushima is also directed to silicone rubber compositions and teaches amounts for the glycidoxy silane compound adhesion promoter (to provide adhesive strength) and the zirconium adhesion promoter (to provide adhesive durability) that overlap the claimed range (for each ingredient individually and the ratio of the ingredients to each other) (see abstract, [0048]-[0051]) such that it would have been obvious to have use a combination of such adhesion promoters in the above amounts from Mizushima as the adhesion promoters already generally called for in Phukan in order to provide, respectively, adhesive strength and adhesive durability.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Mizushima’s example does not fall within the claimed ratio of zirconium to epoxy silane adhesion promoters. However, the reference is not limited to this example. The reference renders obvious the claimed ratio by disclosing an overlapping amount of each of the adhesion promoters, which overlapping amounts correspond to a ratio that overlaps the claimed ratio. The reference does not need to explicitly disclose the ratio, since the amounts of ingredients would form a ratio when combined.
Applicant argues a lack of expectation of success but appears to be arguing that the “success” in such an analysis would be the unexpected improvement in the present application, which is an improper application of this analysis because the prior art does not need to arrive at the claimed subject matter for the same reason (i.e., the unexpected results) of the present application and can instead arrive at the claimed subject matter for a different reason (i.e., the motivation explicitly disclosed in the prior art, which motivation has no doubt as to its success in being achieved, and which motivation further shows that the claimed subject matter is not arrived at via hindsight).
Applicant argues that organometallic siloxane compositions are highly sensitive, but there is no evidence to support this assertion, nor (if there was evidence) would such a vague assertion (i.e., “highly sensitive” means what exactly?) make the claimed subject matter non-obvious.
Applicant then appears to present arguments that the motivation to combine the references is not obvious enough because the references have different “focus,” which is not persuasive because the motivation in the rejection is more than sufficient to render obvious the claimed subject matter. Contrary to Applicant’s assertion, the two references are more than sufficiently analogous to each other and to the claimed subject matter to render such subject matter obvious.
Applicant then argues unexpected results. First, it is noted that example 9 does not fall within the claimed ratio range of zirconium compound to glycidoxy silane compound (seems to be a ratio of 0.6:1). Second, the cited comparative examples do not appear to be proper side by side comparisons showing the effect of the claimed ratio, but rather are further different in the total amount of each of the zirconium and glycidoxy silane compounds (i.e., the comparative examples are outside of the claimed range but also use significantly less of the adhesion promoters). Third, the claims are not commensurate in scope with the cited examples (in terms of the type and amounts of filler, vinyl siloxanes, elastomer powder, eco-solvent, and Si-H polymer, as well as the type and amount of silane compound), with the claims being significantly broader than the examples.
Applicant’s teaching away argument does not point to any disparaging language in the prior art and is not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is 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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787