DETAILED ACTION
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 I, claims 1-11 and a species of the composition of claim 6 in the reply filed on 8/3/2026 is acknowledged. Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/3/2026.
Claim Objections
Claim 1 objected to because of the following informalities: the parentheses for the last paragraph should be removed. 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 1-9 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 pre-AIA the applicant regards as the invention.
Claim 1 recites polymer A has a reactive silicon group and also recites the reactive silicon group is optional. Additionally, it is unclear if the first reactive silicon group is connected to a terminal group. For purposes of expediting prosecution, the claim is interpreted as polymer A having an average of 4 to 8 terminal groups per molecule, wherein at least one of the terminal groups is a reactive silicon group represented by the following formula (1), and each of the remaining terminal group is independently the reactive silicon group, an unsaturated group, an isocyanate group, or an active hydrogen-containing group.
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 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.
Claims 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaku et al (JP2019183173).
In setting forth this rejection a machine translation of JP2019183173 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claims 1-2, 4: Kaku teaches a curable composition comprising an oxyalkylene polymer A has 2-8 main chain ends in one molecule, and an average of more than 1.0 reactive silicon groups represented by the formula 1 at each main chain end.
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, wherein R is a monovalent organic group having 1 to 20 carbon atoms, other than a hydrolyzable group, and X is a hydroxyl group or a hydrolyzable group. 'a' represents an integer between 1 and 3. If a is 1, then R can be the same or different from each other. If a is 2 or greater, X can be the same or different from each other [0006, 0012]. Each main chain end having two terminal groups that are either a reactive silicon group, an active hydrogen containing group, or an unsaturated group. The silylation rate is greater than 50 mol% and less than or equal to 100 mol% [0028]. The polymer has a number-average molecular weight of 2,000 to 10,000 [0012, 0028], the hydroxyl group equivalent molecular weight of polymer A is (2000-10000)/(number of main chain ends), which overlaps the claimed range.
Claim 3: The polymer has an average of more than 1.0 reactive silicon groups represented by the formula 1 at each main chain end. Case law holds that 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 them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claim 5: Kaku teaches the polymer A can be a copolymer of ethylene oxide and propylene oxide monomers, and a homopolymer of propylene oxide is preferred [0019]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize that the copolymer of ethylene oxide and propylene oxide contains a higher proportion of propylene oxide than ethylene oxide, and the content of ethylene oxide would overlap the claimed range.
Claim 6-8: the composition further comprises an oxyalkylene polymer B2 which has 2 main chain end and an average of 0.5-1 reactive silicon groups represented by the formula 1 at each main chain end [0040, 0048, example]. Polymer B2 is formed by introducing an average of 0.5-1 unsaturated groups to one main chain end of a precursor polymer, and then react it with a reactive silicon group containing compound, which is a silylating agent that reacts with the unsaturated groups, the silylation rate of polymer B2 is 55-95mol% [0048-0049]. The Mn of polymer B is 11000-40000 [0041], the hydroxyl group equivalent molecular weight is 5500-20,000.
Claim 9: the ratio of a mass of polymer A to polymer B is 30:70 to 70:30 (table 3).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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