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 .
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.
Claims 1-3, 5-12, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Iezzi et al., U.S. Patent Application Publication No. 2020/0332054 in view of Wolan et al., U.S. Patent Application Publication No. 2015/0266995.
Iezzi, Applicants will recognize, teaches most aspects of the claimed invention including the disclosure of compounds anticipatory of the silyl-containing compound- see [0023,0024] and Figures 5 and 6 where structural representations of the silyl-containing compound where “m”=0 and “m” =1,2 respectively are depicted (m=2 where X=Y in Figure 6). The silyl-containing compound is reacted with a polyfunctional compound selected from a polyepoxy compound, a compound bearing a plurality of acrylic moieties, or, relevant to the present discussion, a polyisocyanate [0020] to form a polyurethane thermoset, of which the polyisocyanates mentioned in [0021] are exemplary. The thermosets are used as coatings and, due to the structural attributes imparted by the silyl-containing compound, are susceptible to network degradation induced by exposure to fluoride salts [0030]. The salts are introduced as solutions according to [0036].
It is acknowledged, though, that there is no mention of an operation wherein said silyl-containing compound and polyisocyanate are first reacted after which there is introduced an amino-functional alkoxysilane to modify the polyurethane thermoset derived from the former pair of reactants.
Wolan is applicable for its teachings in [0002] that persons of ordinary skill in the art have long been practicing the replacement of polyurethanes bearing residual isocyanate groups with corresponding ones that have been modified with silane moieties because they are of lower toxicity. (Framed in the context of the background section of Iezzi, where the stated objective is to develop polymers coatings that don’t require toxic and/or corrosive means to promote the removal of said coating when it has reached the end of its service life, it would be obvious that the skilled artisan would also be motivated to employ coating materials that are, themselves, less toxic by virtue of remaining isocyanates being consumed/capped by reaction with a silane compound also featuring isocyanate-reactive groups. Notably, in the paragraphs that follow [0003-0005] and also the solution offered by Wolan [0010], the silanes reacted with residual isocyanate are amine-functional alkoxysilanes. It would, therefore, have been obvious as of the effective filing date of the instant invention to modify the polyurethane thermoset coating materials taught by Iezzi by reacting leftover isocyanate groups with an amino-functional alkoxysilane to provide a substitute coating material with fewer negative environmental impacts.
Concerning claims 2 and 11, the formula and accompanying description in [0023-0024] render obvious the compound depicted in these claims insofar as silyl compounds bearing two phenyl substituents and where R3 is an ethylene moiety are contemplated.
As for claims 7 to 9 and 16-18, Iezzi is not forthcoming as to the by-products formed when the fluoride salts attack and decompose the polyurethane thermoset but, to the extent that they are formed using the same genus of silyl-containing precursors, the will also yield the same by-products according to the mechanism delineated in Figure 4 of the instant Specification.
Claims 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Iezzi et al., U.S. Patent Application Publication No. 2020/0332054 in view of Wolan et al., U.S. Patent Application Publication No. 2015/0266995 as applied to claims 1-3, 5-12, and 14-18 above, and further in view of Thiemann et al., U.S. Patent Application Publication N0. 2015/0284611.
The background section of Wolan at [0005] and also at [0027] advocates for the utilization of secondary amines with sterically-encumbering substituents as the silane modifiers. (Selection of this class of aminosilane is made to reduce the amount of hydrogen bonding that the urea groups resulting from amine reaction with the isocyanate. Minimization of hydrogen bonding, in turn, reduces the viscosity of the silane-modified polymer making it more processable.) Among the bulky amine-bound groups listed in [0005] are cyclohexyl groups. In paragraph [0027], there is mentioned the use of “cyclohexyl amino methyl dimethoxy silane”. This characterization is, however, incomplete because it is not indicated what is the linking group between the amine- and silicon atoms.
The Examiner takes notice of the fact that aminopropyl alkoxysilanes are the most common reported in the literature in the context of silane-modification of polymers but, more recently, it has been discovered that their methylene-linked congeners are desirable substitutes for the activating effect that amine moieties positioned α to the alkoxysilane convey to the silane towards hydrolysis/condensation and, therefore, promotes more rapid cure in the presence of (environmental) moisture. This activating effect is explained in [0031] of Thiemann as being due to donation of electron density from the (amine) heteroatom to the silicon atom (thus labilizing the silicon-bound alkoxy groups and facilitating their hydrolysis/condensation). It is this activation imparted by the α-nitrogen atom that would motivate the skilled artisan to substitute N-cyclohexylaminomethyl methyldimethoxysilane for the presumed N-cyclohexylaminopropyl methyldimethoxysilane disclosed in [0027]. As for the silane permutations of claims 4 and 13 featuring a butyl-substituted secondary amine, there is little development of the concept of the secondary amines with bulky groups beyond what is taught in [0005] of Wolan but the Examiner posits that one of ordinary skill is capable of ascertaining what other silanes functionalized with secondary amines have application in the formation of silane-modified polyurethanes with controlled viscosity as a matter of routine experimentation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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February 3, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765