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 Status
Claim 12 is canceled. Claims 13-15 have been amended and are now all independent claims. Claim 21 is new, support can be found in claim 1.
Response to Arguments
Applicant’s arguments, see p. 10, filed 07/20/2026, with respect to the rejection(s) of claim(s) 14 under 35 U.S.C. 102 (a)(1) as being anticipated by Laas et al (herein ‘Laas’; US 20150259461 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 over US Rao et al (herein ‘Rao’; 20100184899 A1) in view of Laas et al (herein ‘Laas’; US 20150259461 A1).
Applicant's arguments filed 07/20/2026 have been fully considered but they are not persuasive.
(p. 12) Applicants argue, “Claim 1 recites, inter alia, that at least one polymeric constituent (a1) comprising two or more thiol groups selected from the group consisting of polyether, polythioether, polysulfide, polythioether-sulfide constituents and mixtures thereof. In contrast, Paragraph [0059] of Rao, as cited by the Office, broadly teaches polymeric constituents including at least one thiol group.”
Rao teaches in [p. 0059], in certain embodiments, the compositions comprise one or more additional sulfur-containing polymers. The term "sulfur-containing polymer" refers to any polymer having at least one sulfur atom, including, but not limited to, polymeric thiols, polythiols, thioethers, polythioethers and polysulfides. A "polythiol" refers to such a compound having more than one SH group, such as a dithiol or higher functionality thiol. Such groups are typically terminal and/or pendent such that they have an active hydrogen that is reactive with other functional groups. Thus, the term "polythiol" generally encompasses "polythioether" and "polysulfide" as well. In light of this, one having ordinary skill in the art at the time the invention was filed would appreciate the teachings of Rao embrace embodiments comprising polymeric species with two or more thiol groups.
(p. 12) Applicants argue, “Like Rao, Laas does not teach or suggest at least that component (A) of the sealing system comprises at least one polymeric constituent (al) comprising two or more thiol groups selected from the group consisting of polyether, polythioether, polysulfide, polythioether-sulfide constituents and mixtures thereof. Laas is deficient at least for this reason.”
Laas is relied upon for the teaching that diisocyanate/mercaptosilane adducts improve adhesion of polyurethane systems, which are analogous to the polythiourethane systems of Rao.
(p. 12) Applicants argue, “In addition, Laas describes the use of the isocyanate-mercaptoalkylalkoxysilane adducts, such as binders for sealants or coatings (see Paragraph [0015]). Laas, however, fails to disclose the use of the adducts when incorporated into a primer/sealant composition or in a two- component composition as claimed. Laas is further deficient at least for this reason.”
Laas teaches the use of the adducts in standard 1-part or 2-part polyurethane systems [p. 0117]. Laas teaches coatings, sealants or adhesives can be formulated using the adducts [p. 0118]. In response to applicant's argument that Laas fails to disclose the use the the adducts in primer compositions, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 15 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Laas et al (herein ‘Laas’; US 20150259461 A1) .
Laas exemplifies the preparation of IPDI/ mercaptopropyltrimethoxysilane and HDI/ mercaptopropyltrimethoxysilane adducts [(A1), (A2), p. 0125, 0127]. Laas then exemplifies the preparation of the polyurethanes by reacting the adducts with polyols [example 1, example 2]. Laas discloses the adducts are suitable for all the fields of use of silane-modified polyurethanes [p. 0015]. The preamble of claim 15 recites “a primer composition”. In the instant case, the preamble merely recites the intended use of the material, wherein the prior art can meet this future limitation by merely being capable of such intended use.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-11, and 13-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Rao et al (herein ‘Rao’; 20100184899 A1) in view of Laas et al (herein ‘Laas’; US 20150259461 A1).
Regarding claims 1-2, 4-9, 11, 13-15, 19-20; Rao is directed toward sealant, coating, and/or electrical potting compositions that include one or more thioether [0058]. Rao embodies the sealant compositions as multi-pack compositions, such as two-pack compositions, wherein one package comprises the thioether polymer and the second pack comprises the curing agent [p. 0101]. Rao teaches, in certain embodiments, the compositions comprise, in addition to a thioether, one or more additional sulfur-containing polymers having at least one sulfur atom, including, but not limited to, polymeric thiols, polythiols, thioethers, polythioethers and polysulfides [0059].
Rao teaches, in some embodiments, the thioethers of the present invention are "capped", i.e., they have terminal groups other than unreacted --SH groups, such as an isocyanate group or a hydrolysable silane group [p. 0037]. Rao teaches such a thioether may be obtained by reacting an uncapped thioether with an isocyanate functional compound, wherein any isocyanate functional compound can be used [p. 0038-0039]. Rao teaches, in certain embodiments, it is desirable to employ a sulfur-containing isocyanate functional compounds [p. 0039]. Rao exemplifies the preparation of an isophorone diisocyanate (IPDI) capped polythioether, and a silane capped polythioether [example 7, example 9, p. 0120, 0122][11 carbon/heteroatom chain length, see instant claim 19]. However, Rao fails to exemplify or explicitly teach an organosilane constituent comprising at least one hydrolysable group, at least one isocyanate group, with a spacer unit comprising at least one sulfur atom between the hydrolysable group and the isocyanate group.
Laas is directed toward a process for preparing polyurethanes containing silane groups, to the polyurethanes containing silane groups obtainable by this process, to the use thereof as binders in crosslinkable raw materials for varnishes, sealants or adhesives, and to the crosslinkable binders containing the inventive structures [p. 0001]. Laas teaches the use of diisocyanate/mercaptosilane adducts is already known in principle for modification of polymers [p. 0011]. Laas exemplifies the preparation of IPDI/ mercaptopropyltrimethoxysilane and HDI/ mercaptopropyltrimethoxysilane adducts [(A1), (A2), p. 0125, 0127]. Laas then exemplifies the preparation of the inventive polyurethanes by reacting the adducts with polyols [example 1, example 2]. Laas teaches that, in addition to use as sole binders, the inventive process products can also be added, for example as an additive, to standard 1-part or 2-part polyurethane systems, for example in order to achieve very specific properties, for example for improvement of adhesion [p. 0117].
Although Laas is directed toward the use of diisocyanate/mercaptosilane adducts for the modification of polymers in polyurethane systems, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the thioethers of the coating composition of Rao with Laas’s adducts as Laas teaches such adducts improve adhesion of polyurethane systems, which are analogous to the polythiourethane systems of Rao. Rao appears to be open to such adducts as well as Rao teaches any isocyanate may be used to cap the polythioethers. In addition, a skilled artisan would have a reasonable expectation of success in including such adducts in the composition of Rao as Laas demonstrates the diisocyanates readily react with thiol moieties.
Regarding claims 3 and 16; Rao teaches adhesion promoters are often present in amount from 0.1 to 15 weight percent, based on the total weight of the composition [p. 0096]. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10; Rao teaches useful cures can be obtained through oxidative coupling of the thiol groups using organic and inorganic peroxides (e.g., MnO.sub.2) known to those skilled in the art [p. 0080]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to select a manganese dioxide as the curing agent in part B of the sealant formulation of Rao as Rao teaches it is a suitable curing agent.
Regarding claims 17 and 18; Laas teaches the desired isocyanatosilane is a 1:1 mono adduct [p. 0027]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the diisocyanate/mercaptosilanes adduct from roughly equimolar amounts of diisocyanate and mercaptosilanes.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
