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 § 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 4 and 11 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.
The Examiner cannot ascertain with full certainty if the condition outlined in these claims is attached to each of oxyalkylene polymer (A) and oxyalkylene polymer (B) individually, or instead if the requirement is averaged across all molecules (A) and (B) such that one of these could have a content of silicon groups bound to 3 hydrolyzable groups greater than 50 mol% as a fraction of all terminal groups mentioned but the combination of both polymers would still have a total rate of SiX3 substitution of less than 50 mol%.
For the purpose of evaluating the instant invention against the prior art, it will be presumed that the latter construal had been intended.
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, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2009-046539.
Applicant is directed to Examples 1 and 4 where the synthesis of oxyalkylene polymers TMS-2 and TMS-6 correlated with claimed oxyalkylene B and oxyalkylene A respectively are described. Table 1 summarizes the makeup of several compositions, Examples 13-16, containing both of these in different ratios. Polyether TMS-6 features a silicon group at 85% of all termini [0118] and has a number average molecular weight of 25,000. The Examiner concedes that claim 1 stipulates of the oxyalkylene polymer, by contrast, that it have a molecular weight of >25,000 to as high as 100,000 g/mol. That is, the molecular weight of TMS-6 is not within the specified range but, rather, has a molecular weight “touching” it. In instances such as this, the MPEP instructs, “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). At the present time, there is no data/evidence illustrating that when a skilled practitioner selects a polyoxyalkylene with the same required structural attributes but has a molecular weight just beneath the lower threshold of the claimed range, the properties of the resulting composition, or a cured product derived from the same, will have demonstrably worse property(s). Accordingly, this aspect of the invention is deemed obvious. Furthermore, a broader description of the prior art component (a1), of which TMS-6 is exemplary, indicates that the number-average molecular weight of this component may be as high as 50,000 g/mol. See [0008-0011]. Hence, it is the Examiner’s position that homologues of TMS-6 that comply with the requirements of oxyalkylene A, including the molecular weight limitation, are embraced within the teachings of the broader description and their substitution for TMS-6 in the formulations of Table 1 would likewise be obvious.
As for claim 3, paragraph [0112] fully describes TMS-2 confirming that a full 100 mol% of all groups are occupied by trimethoxysilyl groups and its Mn is 17,000 g/mol.
Regarding claim 5, Examples 13-15 all contain corresponding quantities of TMS-6 as a fraction of the sum of the combined weight of TMS-2 and TMS-6.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2009-046539 in view of Yusuke et al., JP 2020-176169.
It is acknowledged that Sato fails to teach an oxyalkylene-based reactive plasticizer having two terminal moieties with one being unreactive within that system and the other being hydrolysable silyl group, or an ethylenically-unsaturated or active hydrogen group. Rather, it merely discloses general classes of small molecule- and polymeric plasticizer and, hence, does not address the molecular weight limitation. In the absence of any detailed disclosure, a skilled practitioner would turn to the related prior art to ascertain what polyoxypropylene plasticizers would be most beneficial.
Yusuka is directed to another sealant composition [0004] also having as a main component an oxyalkylene polymer (A) that features at least 4 terminal groups (abstract), of which at least a fraction are occupied by hydrolyzable silyl groups, but can have as many as 8 terminating moieties [0025]. Sorbitol is among the initiators that may be employed in the preparation of component (A), in which case the oxyalkylene polymer would contain six terminal residues [0030]. Relevant to the present discussion, the composition of Yusuka further comprises a polyoxyalkylene (C) with the same structural attributes as are present in claimed component (C) with an overlapping number average molecular weight fulfilling the role of a reactive plasticizer. See [0046-0049]. In the case where the claimed ranges “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).
Given the compositional parallels between the inventions of Sato and Yusuka, and also the instant invention, it would be obvious to the skilled artisan to use a polyether plasticizer those outlined by Yusuka, for the stated advantages set forth in [0047].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sato et al., JP 2009-046539 in view of Harumushi et al., U.S. Patent Application Publication No. 2015/0133622.
To reiterate, Sato contemplates in [0095] the employment of polyethers, and polyoxypropylene glycol in particular, as a plasticizing compound. (Among the polymeric plasticizers, those based on similar polyethers are obvious for their documented compatibility with the curable polymers.) However, Sato only mentions broad classes of suitable plasticizer and, therefore, is silent as to the appropriate molecular weight of a polyoxypropylene embodiment. In the absence of any detailed disclosure, a skilled practitioner would turn to the related prior art to ascertain what polyoxypropylene plasticizers would be most beneficial.
Harumashi et al. is considered to be related prior art inasmuch as one of the inventions defined therein is a curable composition comprised of a polyether bearing an average of more than one hydrolysable silyl groups at each of two termini (claim 7, , claim 12, synthesis examples 7-9). Like the compositions of the instant Specification, the prior art compositions have application as construction sealants and, in particular, sealing materials for building joints that also will benefit from durability through numerous expansion/contraction events. Relevant to the present discussion, the introduction of a plasticizer to tailor viscosity and slump is mentioned in [0212] and among the plasticizers mentioned are polymeric plasticizers with polyether plasticizers being most favored for their compatibility with the host polymer [0214]. Paragraph [0215] indicates that preferred polymer plasticizers are those with a number average molecular weight spanning the range of 500 to 15,000 so as to achieve a proper balance between the extent to which the plasticizer will bleed to the surface and a resulting viscosity that is not so high that the workability of the sealant suffers. Of course, the aforementioned range is strongly overlapping with that claimed.
Claims 1, 2, 6-9, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Miyafuji et al., WO 2020/179644.
Mijafuji is directed to a sealant product that seals a punctured tire enabling the tire to continue being used until it can be serviced [0006]. The sealant comprises a polymer blend of two polyoxyalkylenes differing in their molecular weight and reactive silicon group content [0013], the reactive silicon group complying with formula (1) in [0011]. A thorough description of the first polyoxyalkylene (A) commences in [0024] with permutations of the reactive silicon group being delineated in [0027]. It is noted here that polyoxyalkylene (A) is prepared employing a ring-opening polymerization reaction of epoxides and C4 oxygen heterocycles [0033-0034] and among the initiators used in their formation is sorbitol, which one of ordinary skill recognizes has six hydroxyl groups from which six polyether segments can be polymerized. Suitable catalysts are outlined in [0036] with DMC (double metal cyanide) complexes being preferred for the narrow molecular weight ranges they confer. The polyoxyalkylene [A] has a molecular weight of between 13,000 and 100,000 g/mol, which is an only slightly broader range than that required according to claim 1. “A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson 315 F.3d 1325, 1330, 56USPQ2d 1379, 1382-83 (Fed Cir. 2003).
Because all of the silane terminal groups of polyoxyalkylene (A) conform with the formula -SiR1X2, the limitation of claim 2 is necessarily satisfied as none of the reactive silicon groups present will be devoid of a monovalent organic group.
As for claims 6 and 13, the polyoxyalkylene (B), as designated by the reference and to be distinguished from claimed polyoxyalkylene B, is linear and contains an inert group at one end and a group adhering to formula (I) in [0011] at the opposite end. See [0126] where the synthesis of an exemplification of this component is summarized.
Concerning claims 7 and 14, polymeric plasticizers featuring a polyoxyalkylene backbone with a number average molecular weight higher than 1,000 g/mol and hydroxyl-, ester- or ether terminal groups are mentioned in [0077]. The disclosed range is, of course, encompassing of that claimed. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, the role of a plasticizer is universally recognized by polymer formulators of ordinary skill and so too is the molecular weight of a plasticizer on its efficacy as an additive that imparts flexibility while not sacrificing processability (due to, for instance, undesirable viscosity increases). “Discovering an optimum value of a result effective variable involves only routine skill in the art.” In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Allowable Subject Matter
Claims 10-12 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. Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Sato is the only reference over which claim 3 was unpatentable and, therefore, the only disclosure over which claim 4 was possibly unpatentable. However, whereas this disclosure makes reference to polymer embodiments for which the variable “a” would not equal zero, there is no particular emphasis on this aspect and, indeed, in the aforementioned exemplification, the end groups in the polymers correlated with claimed components A and B are ones where “a” equals zero in all cases. Regarding claims 10-12, Mijafuji was the only reference rendering claim 2 unpatentable and the only other silylated oxyalkylene polymer component mentioned in this document was that correlated with the polymer described in claim 13. There was no apparent reason offered by the prior art motivating a practitioner of that invention to also incorporate an oxyalkylene polymer B.
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 16, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765