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 .
Status of Application
Claims 1-3, 5-8, 10-18 and 21-23 are pending. Claims 11-18 and 21 are withdrawn. Claims 1-3, 5-8, 10, 22 and 23 are presented for examination.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3. 5-8, 10, 22 and 23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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.
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.
1. Claim(s) 1-3, 5-8, 10, 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al. (U.S. Pat. No. 9139699) in view of Tselepis (U.S. Pat. No. 10577801) and Zhang et al. (U.S. PGPUB No. 2022/0098339).
Regarding claims 1-3, 5-8, 10, 22 and 23, Cook teaches a process comprising: a first step of obtaining a water-curable silicone composition including a water-activated catalyst (column 4, lines 21-23 and column 61, lines 61-64) in an amount of 0.1-2 wt% (column 32, lines 46-54), a silicon containing base polymer, such as a silanol-terminated polysiloxane (column 4, lines 21-26 and column 35, lines 14-29) in an amount of 10-65 wt% (column 41, lines 11-17); a crosslinker (column 41, lines 51-56) in an amount of 0.5-100 parts based on 100 parts of the silicon containing base polymer (column 42, lines 10-12, and note that this overlaps with 1-30 wt% and that overlapping ranges are prima facie evidence of obviousness); a filler (column 46, lines 56-58) in an amount of 1-20 wt% (column 47, lines 4-7); and a heat activated water-release agent (column 57, lines 4-5), such as an inorganic hydrate (column 57, lines 35-38), in an amount of 5-30 wt% (column 57, lines 57-65), which decomposes to produce a decomposition product comprising water upon heating at an application temperature of 90-100 ºC (column 57, lines 23-26 and column 57, line 66-column 58, line 6); a second step of applying the composition to a substrate (column 58, lines 49-50); and a step of heating at the application temperature to release water from the water release agent and cause curing by reaction of the polysiloxane with the crosslinker in the presence of the catalyst (column 57, lines 50-56 and column 57, line 66-column 58, line 6). Cook teaches that the composition may be used as a sealant (column 58, lines 39-47), but fails to teach applying the composition at a thickness of 50 mils to 500 mils to a roofing substate and the method forms a roofing membrane over the roofing substrate. Cook also fails to teach that the heat activated water release agent is not a hydrated compound.
First, Tselepis teaches a similar silicone composition comprising a silanol-terminated polysiloxane (column 9, lines 20-39), a crosslinker (column 9, lines 49-50), a condensation catalyst (column 10, lines 55-67), and a filler (column 12, lines 9-10) for use as a silicone membrane (abstract). Tselepis teaches application of the composition directly on a substrate such as a roofing substrate at a thickness of 30-125 mils (column 17, lines 39-48, and note that overlapping ranges are prima facie evidence of obviousness) and curing to yield a silicone membrane over the roofing substrate (column 17, lines 13-24 and column 17, lines 39-column 18, line 18). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cook’s process by substituting a roofing substrate as a substrate for Cook’s generic substrate, applying to a thickness in the range as claimed and then curing to yield a silicone membrane over the roofing substrate. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that both Cook and Tselepis teach very similar sealants based on silanol-terminated polysiloxanes, catalysts and fillers), and the predictable result of providing a roofing membrane comprising Cook’s cured silicone based sealant composition over a roof substrate.
Second, Zhang teaches a moisture-curable formulation (abstract) comprising: a hydrolysable silyl functionalized compound (abstract); a condensation catalyst (0035); and a heat activated water releasing agent (0054), such as a peroxide which will decompose to provide water when heated (0054). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cook’s process by substituting a heat activated water releasing peroxide in place of Cook’s water releasing agent. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that Zhang teaches that the peroxide can be substituted for conventional hydrated compounds for generation of water for use in a moisture-curable system), and the predictable result of providing water for activating the reaction.
2. Claim(s) 1-3, 5-8, 10, 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cook in view of Tselepis and Keogh (U.S. Pat No. 4446279).
Regarding claims 1-3, 5-8, 10, 22 and 23, Cook teaches a process comprising: a first step of obtaining a water-curable silicone composition including a water-activated catalyst (column 4, lines 21-23 and column 61, lines 61-64) in an amount of 0.1-2 wt% (column 32, lines 46-54), a silicon containing base polymer, such as a silanol-terminated polysiloxane (column 4, lines 21-26 and column 35, lines 14-29) in an amount of 10-65 wt% (column 41, lines 11-17); a crosslinker (column 41, lines 51-56) in an amount of 0.5-100 parts based on 100 parts of the silicon containing base polymer (column 42, lines 10-12, and note that this overlaps with 1-30 wt% and that overlapping ranges are prima facie evidence of obviousness); a filler (column 46, lines 56-58) in an amount of 1-20 wt% (column 47, lines 4-7); and a heat activated water-release agent (column 57, lines 4-5), such as an inorganic hydrate (column 57, lines 35-38), in an amount of 5-30 wt% (column 57, lines 57-65), which decomposes and disassociates the water of hydration upon heating at an application temperature of 90-100 ºC (column 57, lines 23-26 and column 57, line 66-column 58, line 6); a second step of applying the composition to a substrate (column 58, lines 49-50); and a step of heating at the application temperature to release water from the water release agent and cause curing by reaction of the polysiloxane with the crosslinker in the presence of the catalyst (column 57, lines 50-56 and column 57, line 66-column 58, line 6). Cook teaches that the composition may be used as a sealant (column 58, lines 39-47), but fails to teach applying the composition at a thickness of 50 mils to 500 mils to a roofing substate and the method forms a roofing membrane over the roofing substrate. Cook also fails to teach that the heat activated water release agent is not a hydrated compound.
First, Tselepis teaches a similar silicone composition comprising a silanol-terminated polysiloxane (column 9, lines 20-39), a crosslinker (column 9, lines 49-50), a condensation catalyst (column 10, lines 55-67), and a filler (column 12, lines 9-10) for use as a silicone membrane (abstract). Tselepis teaches application of the composition directly on a substrate such as a roofing substrate at a thickness of 30-125 mils (column 17, lines 39-48, and note that overlapping ranges are prima facie evidence of obviousness) and curing to yield a silicone membrane over the roofing substrate (column 17, lines 13-24 and column 17, lines 39-column 18, line 18). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cook’s process by substituting a roofing substrate as a substrate for Cook’s generic substrate, applying to a thickness in the range as claimed and then curing to yield a silicone membrane over the roofing substrate. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that both Cook and Tselepis teach very similar sealants based on silanol-terminated polysiloxanes, catalysts and fillers), and the predictable result of providing a roofing membrane comprising Cook’s cured silicone based sealant composition over a roof substrate.
Second, Keogh teaches a moisture-curable formulation (abstract) comprising: a polysiloxane (abstract); a silane functionalized compound (abstract); a condensation catalyst (column 6, lines 21-27); and a heat activated water releasing filler (column 6, lines 42-50), such as a hydrated compound or zinc hydroxide (column 6, lines 42-50). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cook’s process by substituting a heat activated water releasing zinc hydroxide in place of Cook’s water releasing agent. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that Keogh teaches that the zinc hydroxide can be substituted for conventional hydrated compounds for generation of water for use in a moisture-curable system), and the predictable result of providing water for activating the reaction.
Conclusion
Claims 1-3, 5-8, 10-18 and 21-23 are pending.
Claims 11-18 and 21 are withdrawn.
Claims 1-3, 5-8, 10, 22 and 23 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ROBERT S WALTERS JR/
May 20, 2026Primary Examiner, Art Unit 1717
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