DETAILED ACTION
Pending Claims
Claims 1-20 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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 1-11 and 14-20 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 claims 1-11, 14-16, and 18-20, claim 1 concludes with “an oligomer, and a polymer formed therewith”. It is unclear if this is referring back to the at least one silane compound; or the Ra2 group thereof. For the purpose of the prior art search, this has been interpreted as referring back to the at least one silane compound. Claims 2-11, 14-16, and 18-20 are rejected because they are dependent from claim 1.
Regarding claim 17, independent claim 17 recites the limitation “at least one silane compound according to formula (A), a hydrolysate, an oligomer, or a polymer formed therewith”. There is insufficient antecedent basis for this limitation in the claim. Formula (A) is not present in the claim.
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 1-9, 11-13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kistner et al. (WO 01/14273 A1).
Regarding claims 1, 4, 6, 8, 9, 15, and 16, Kistner et al. disclose: (1) a composition (Abstract; page 6, lines 15-31; see also page 5, lines 15-30): comprising;
a) at least one uncured resin (page 14, lines 5 through page 21, line 30), and
b) at least one hollow glass body, wherein the at least one hollow glass body comprises at least one coating layer on its surface obtained by treating the at least one hollow glass body with a treatment composition comprising at least one silicon-containing surface tension reducer (page 5, lines 15-30; see also page 11, line 32 through page 13, line 2);
(6) wherein the at least one hollow glass body is a glass microsphere (page 10, lines 8-24);
(15) an article, comprising the composition (page 22, line 9 through page 23, line 14); and (16) a mobility device comprising at least one article (page 22, line 9 through page 23, line 14; see also page 4, lines 8-10).
Kistner et al. fail to explicitly disclose an embodiment featuring:
(1) at least one unsaturated polyester resin, (4) wherein the unsaturated polyester resin is at least one selected from the group consisting of dicyclopentadiene type unsaturated polyester resin, orthophthalic acid type unsaturated polyester resin and isophthalic acid type unsaturated polyester
AND
(1) at least one silane compound according to formula (A), an oligomer thereof or a polymer thereof:
Ra1-Si-(ORa2)3 (A)
wherein Ra1 is selected from the group consisting of an alkyl group having at least 4 carbon atoms, an oligo(oxyalkanediyl) group and a poly(oxyalkanediyl) group, each Ra2 is independently selected from the group consisting of hydrogen, an alkyl group, and an aryl group; (8) wherein Ra1 is an alkyl group having at least 8 carbon atoms; and (9) wherein the alkyl group of Ra1 is unsubstituted.
Rather, they disclose a limited number of options for their uncured resin and their silicon-containing surface tension reducer. Their uncured resin can be an unsaturated polyester, including phthalic acid-based unsaturated polyesters (see page 14, lines 5-7; page 21, lines 10-30). Their silicon-containing surface tension reducer can be a silane, including octyltrimethoxysilane, decyltrimethoxysilane, and octyltriethoxysilane (see page 12, line 14 through page 13, line 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the composition of Kistner et al. with the instantly claimed unsaturated polyester resin and silane compound because: (a) Kistner et al. disclose a limited number of options for their uncured resin and their silicon-containing surface tension reducer; (b) the uncured resin of Kistner et al. can be an unsaturated polyester, including phthalic acid-based unsaturated polyesters; and (c) the silicon-containing surface tension reducer of Kistner et al. can be a silane, including octyltrimethoxysilane, decyltrimethoxysilane, and octyltriethoxysilane.
Lastly, the recitation “suitable for manufacturing of sheet molding compounds” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). 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. This composition of Kistner et al. appears to be capable of this intended use because it obviously satisfies all of the material/chemical limitations of the claimed invention.
Regarding claims 2, 3, and 18-20, the teachings of Kistner et al. are as set forth above and incorporated herein. Kistner et al. fail to explicitly disclose: (2) wherein an amount of the at least one uncured resin ranges from 20 to 99.9 vol.-% based on the total volume of the composition; (18) from 35 to 80 vol.-% based on the total volume of the composition; (19) from 40 to 60 vol.-% based on the total volume of the composition; (20) from 45 to 55 vol.-% based on the total volume of the composition; and (3) wherein an amount of the at least one hollow glass body ranges from 0.1 to 80 vol.-%, based on the total volume of the composition. Rather, they disclose at least about 40 percent by volume of microbubbles (corresponding to up to 60 percent by volume of uncured resin) (see page 6, lines 28-31). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Kistner et al. with the instantly claimed amounts of polyester resin (20 to 99.9 vol.-% or 35 to 80 vol.-% or 40 to 60 vol.-% or 45 to 55 vol.-%) and hollow glass bodies (0.1 to 80 vol.-%) because: (a) Kistner et al. disclose at least about 40 percent by volume of microbubbles (corresponding to up to 60 percent by volume of uncured resin); and it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 5 and 11, the teachings of Kistner et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (5) wherein an amount of polyolefin in the composition is 1 wt.-% or less, based on the total weight of the composition; and (11) wherein the composition is free of glass fibers and carbon fibers. However, they do not require the presence of these materials. Accordingly, the teachings of Kistner et al. would have obviously embraced the instantly claimed low amount of polyolefin and the instantly claimed absence of glass fibers and carbon fibers.
Regarding claim 7, the teachings of Kistner et al. are as set forth above and incorporated herein. They fail to disclose an embodiment (7) wherein the at least one hollow glass body is further treated with an unsaturated silane. Rather, they present the above mentioned silanes corresponding to formula A (octyltrimethoxysilane, decyltrimethoxysilane, and octyltriethoxysilane) and vinyl-containing silanes as equally suitable surface tension reducers (see page 12, lines 20-30). In light of this, it has been found that combining equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further treat the hollow glass of Kistner et al. with an unsaturated silane because: (a) Kistner et al. present the above mentioned silanes corresponding to formula A (octyltrimethoxysilane, decyltrimethoxysilane, and octyltriethoxysilane) and vinyl-containing silanes as equally suitable surface tension reducers; and (b) it has been found that combining equivalents known for the same purpose is prima facie obvious.
Regarding claims 12 and 13, the teachings of Kistner et al. are as set forth above and incorporated herein to obviously satisfy claims (12 & 13) (see also page 11, line 32 through page 12, line 3).
Regarding claim 17, the teachings of Kistner et al. are as set forth above and incorporated herein to obviously satisfy claim (17) (see also page 13, lines 3-9).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kistner et al. (WO 01/14273 A1) in view of Mack et al. (US Pat. No. 6,500,883).
Regarding claim 10, the teachings of Kistner et al. are as set forth above and incorporated herein. Kistner et al. contemplate various silicon-containing surface tension reducers (see page 12, lines 20-30). However, they fail to explicitly disclose a silane of formula (A), (10) wherein Ra1 is at least one selected from the group consisting of an oligo(oxyalkanediyl) group and a poly(oxyalkanediyl) group.
Mack et al. disclose the use of a surface-modified filler for a polymer-based composition (see Abstract), wherein their fillers include glass beads (see column 5, lines 54-57). They demonstrate that polyether-functional silanes are also recognized in the art as suitable surface treatments for these fillers (see column 3, line 58 through column 4, line 1; column 4, lines 65-67). In light of this, it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to treat the hollow glass of Kistner et al. with the instantly claimed silane (wherein Ra1 is at least one selected from the group consisting of an oligo(oxyalkanediyl) group and a poly(oxyalkanediyl) group) because: (a) Kistner et al. contemplate various silicon-containing surface tension reducers; (b) Mack et al. disclose the use of a surface-modified filler for a polymer-based composition, wherein their fillers include glass beads; (c) Mack et al. demonstrate that polyether-functional silanes are also recognized in the art as suitable surface treatments for these fillers; and (d) it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kistner et al. (WO 01/14273 A1) in view of Kamens et al. (US Pat. No. 4,636,528).
Regarding claim 14, the teachings of Kistner et al. are as set forth above and incorporated herein. Kistner et al. use their composition for making syntactic foams (see Abstract). They fail to explicitly disclose: (14) a method of making an article, comprising melt-processing the composition.
Kamens et al. also disclose foams formed from unsaturated polyester resins (see Abstract; column 8, lines 31-36). Kamens et al. demonstrate that these foams are capable of being formed with heat molding techniques used in sheet molding compounds and bulk molding compounds (see column 11, lines 35-48).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the foam of Kamens et al. with the instantly claimed melt-processing because: (a) Kistner et al. use their composition for making syntactic foams; (b) Kamens et al. also disclose foams formed from unsaturated polyester resins and demonstrate that these foams are capable of being formed with heat molding techniques used in sheet molding compounds and bulk molding compounds.
International Search Report
The international search report cited one X-reference. This reference has been considered.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
June 20, 2026
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