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 .
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 1-2, 6-10, 12-14, 17-18, and 36 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.
Regarding claim 1, the recitation of the phrase “structural proximity” renders the claim as indefinite because it is unclear what constitutes “proximity.” One having ordinary skill in the art would be unclear as to how many atoms-close the nitrogen and silicon atoms must be to fall within the claimed composition. For example, one having ordinary skill in the art would be unclear whether an n-heptane carbon chain linking the silicone and nitrogen atoms would qualify as “structural proximity.” The instant Specification merely mentions “structural proximity” once in paragraph [0024]; however no controlling definition of “structural proximity” is provided.
Furthermore, Claim 1 recites the limitation "the dimethoxy(methyl)silyl-methylcarbamate group" in lines 12-13. There is insufficient antecedent basis for this limitation in the claim. For the sake of examination, the claim will be interpreted as requiring that the claimed “second silyl-terminated reactive polymer resin” comprises dimethoxy(methyl)silyl-methylcarbamate end groups. This interpretation is consistent with the instant Specification, where said end groups are specifically named within an embodiment (c.f. instant Specification at [0024]).
Regarding claims 2, 6-10, 12-14, 17-18, and 36, the claims are rendered indefinite because they depend, either directly or indirectly, on claim 1 which is indefinite as described above.
Regarding claim 10, the term “high-purity” is a relative term which renders the claim indefinite. The term “high-purity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (the instant Specification merely mentions “high-purity silica,” e.g., [0030]), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. One having ordinary skill in the art would be unclear as to how high of a purity is required to fall within the claimed composition. A claim term that requires the exercise of subjective judgement without restriction may render a claim indefinite because claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention (see MPEP 2173.05(b).IV.).
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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 1-2, 9-10, 12-14, 17-21, 25-26, 31, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Kohl (US 2012/0329942 A1).
Regarding claim 1, Kohl teaches a curable composition containing polyether-based polymers having crosslinkable end groups (Abstract), exemplified by a composition comprising (p. 8, [0122], Table 1):
A poly(dialkylsiloxane) b), which is a vinyl trimethoxysilane-terminated polydimethylsiloxane (see footnote 2 of Table 1), which reads on the claimed “first silyl-terminated reactive polymer resin” because it is silyl-terminated and because it contains polydimethylsiloxane. This component is included in Examples 1 and 2 at 14 wt% of the composition, which falls within the claimed range of “2-40% by weight,” establishing a prima facie case of obviousness
An Organic Polymer a), which is a polypropylene glycol which has been γ-silane terminated with trimethoxysilylpropyl carbamate (see footnote 1 of Table 1). This structure differs from the claimed “dimethoxy(meth)silyl-methylcarbamate” as claimed; however, Kohl specifically states that the terminal silane group may be differently configured according to a general formula ([0032]). More specifically, Kohl states that the dialkoxysilyl groups may be used instead of trialkoxysilylgroups to confer a more elastic, softer, and more flexible final product ([0038]), and specifically points out the most preferred usage of methyl and methoxy groups therefor ([0039]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to substitute one of the methoxy groups within the exemplified polymer end groups with a methyl group to afford a dialkoxysilyl group for the purpose of conferring a more elastic, softer, and more flexible final product. Furthermore, Kohl specifically states that the hydrocarbon linker, which connects the alkoxysilyl and (optionally) carbamate groups may be chosen from hydrocarbon groups having 1 to 6 carbon atoms ([0043]). Kohl specifically states that a methylene group is particularly preferred because they impose high reactivity ([0043]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to substitute the n-propylene linker within the exemplified polymer end groups with a methylene linker for the purpose of increasing the reactivity of the polymer end group. The so-modified polymer meets the claimed structural limitations of the “dimethoxy(methyl)silyl-methylcarbamate” group because the modified end groups of the modified polymer are identical thereto. This component is included at least at 14 wt%, which falls within the claimed range of “2-40% by weight,” establishing a prima facie case of obviousness.
Dynasylan 1146 and 3-aminopropyltrimethoxysilane, both of which are indicated in the specification as “adhesion promoters” (c.f. instant Specifcation at [0064] and [0097]). Since at least these two adhesion promoters are included, the exemplified formulations meet the limitation requiring “a plurality of adhesion promoters.” Furthermore, Kohl describes Dynasylan 1146 as an oligomeric diamino silane (see footnote 5 of Table 1). The instant Specification contemplates oligomeric diaminosilanes as suitable adhesion promoters (c.f. instant Specification at [0064]), and therefore Dynasylan reads on the claimed “hydrophobic diaminofunctional silane.” Each of Dynasylan 1146 and 3-aminopropyltrimethoxysilane are included at 0.50 wt. %, and therefore the combined amounts of the adhesion promoters equates to 1 wt.%, which falls within the claimed range of “above 0% and below about 5%,” establishing a prima facie case of obviousness.
The composition is free of water (c.f. Table 1 is absent any water component), and is indicated as being curable by contact with water ([0029]), and therefore meets the limitation requiring a “moisture-cured” and “non-aqueous” composition.
Kohl is silent with regard to the claimed water absorption characteristic. Nevertheless, Kohl as applied above results in a composition that is structurally identical to the claimed composition, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed water absorption characteristic will therefore necessarily be present in Kohl as applied above.
Regarding claims 2, 13-14, and 17-18, Kohl is silent with regard to the claimed slump, peel adhesion, cure time, and water absorption characteristics. Nevertheless, Kohl as applied above results in a composition that is structurally identical to the claimed composition, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed slump, peel adhesion, cure time, and water absorption characteristics will therefore necessarily be present in Kohl as applied above.
Regarding claim 9, Kohl teaches that the inventive composition may be comprise two parts which are mixed together (parts A and B, c.f. [0087]), and specifically teaches mixing the compositions within Table 1 as part A (referenced in the rejection of claim 1, above) with a part B component ([0124]). Kohl teaches that component B can comprise a polypropylene glycol ([0087]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to mix the exemplified composition, referenced above, with an additional component containing a polypropylene glycol. Kohl teaches the mixing of components A and B in a ratio ranging from 1:1 to 200:1 ([0089]), and therefore the ingredients of component A included at 14 wt% would be diluted to anywhere from about 7 to about 13.9 wt%, which fall within the claimed compositional ranges of claim 1, establishing prima facie cases of obviousness. Likewise, the adhesion promoters, collectively included at 1 wt%, would be diluted to anywhere from about 0.5 to about 0.995 wt%, which falls within the claimed compositional range of claim 1, establishing a prima facie case of obviousness. Importantly, while Kohl prefers that component B contains water ([0087]), patents are relevant for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). Therefore, it would have been obvious to one having ordinary skill in the art to utilize a component B containing a polyethylene glycol but not containing water; thereby meeting the limitation of claim 9 while maintaining the requirements of claim 1 including the claimed compositional ranges and “non-aqueous” character.
Regarding claim 10, Kohl teaches that the inventive composition may contain fillers ([0085]) including chalk ([0108]), and which is exemplified by calcium carbonate (c.f. [0123], Table 2). Importantly, as described above, while the calcium carbonate is exemplified as being included in part B of the composition, it would have been obvious to one having ordinary skill in the art to utilize a component B not containing water; thereby meeting the limitation of claim 10 while maintaining the requirements of claim 1 including the claimed compositional ranges and “non-aqueous” character.
Regarding claim 12, the exemplified composition of Kohl further contains a catalyst (dioctyl-bis(acetylacetonato)tin (c.f. Table 1 within [0122], and [0097]).
Regarding claims 19, 20-21, and 25-26, as described in the rejection of claim 1, above, Kohl teaches a composition containing a pair of silane terminated polyether polymers and a plurality of adhesion promoters comprising a functional silane. Kohl is silent with regard to the claimed cure time, peel adhesion, water absorption, and slump characteristics. Nevertheless, Kohl as applied above results in a composition that is structurally identical to the claimed composition, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed cure time, peel adhesion, water absorption, and slump characteristics will therefore necessarily be present in Kohl as applied above.
Regarding claim 31, as described above, Kohl teaches that the inventive composition may be comprise two parts which are mixed together (parts A and B, c.f. [0087]), and specifically teaches mixing the compositions within Table 1 as part A (referenced in the rejection of claim 1, above) with a part B component ([0124]). Kohl teaches that component B can comprise a polypropylene glycol ([0087]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to mix the exemplified composition, referenced above, with an additional component containing a polypropylene glycol.
Regarding claim 36, Kohl teaches the deposition of the inventive curable coating onto a coatable substrate, followed by curing ([0117]), which reads on the claimed method. As described above, the composition of Kohl meets all of the limitations of claim 1.
Claims 6-8 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Kohl (US 2012/0329942 A1) in view of Lim (US Patent No. 7,294,665 B1).
Regarding claims 6-8, Kohl teaches all of the limitations of claim 1, as described above. Kohl teaches the incorporation of adhesion promoters and specifically states that multiple may be used ([0101]), but differs from claim 1 because it is silent with regard to the specific additional incorporation of both a monomeric alkylfunctional silane and a bifunctional organosilane as required by claim 6, and is likewise silent with regard to the specific examples thereof recited within claims 7 and 8.
In the same field of endeavor, Lim teaches moisture curable compositions including alkoxysilyl capped polymer compounds including an adhesion promoter, filler, and moisture curing catalyst (Abstract), wherein the adhesion promoters may include aminopropyltrimethoxysilane, octyl trimethoxysilane, and glycidoxypropyltrimethoxysilane (col. 6, lines 57-63). As described above, Kohl likewise teaches the use of aminopropyltrimethoxysilane ([0122], Table 1), and teaches the incorporation of multiple adhesion promoters ([0101]). Finally, it is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art to include octyl trimethoxysilane and glycidoxypropyltrimethoxysilane as additional plasticizers within the formulation of Kohl, as Lim teaches them as suitable adhesion promoters for similar moisture curable compositions alongside aminopropyltrimethoxysilane. These additional adhesion promoters are those recited within claims 7 and 8, and therefore the modified composition of Kohl in view of Lim meets all of the limitations of claims 6-8.
Regarding claim 32, as described above, Kohl teaches the use of Dynasylan 1146 which reads on the claimed “hydrophobic diaminofunctional silane.” Furthermore, as described above, Kohl in view of Lim additionally contains octyl trimethoxysilane and glycidoxypropyltrimethoxysilane, thereby meeting all three of the claimed adhesion promoter limitations.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
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