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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to a curable resin composition, classified in C08K5/0016.
II. Claims 18-20, drawn to a cured resin composition, classified in C08G77/00.
The inventions are independent or distinct, each from the other because:
Groups I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as an uncured thickening agent for a composition, and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
There would be a serious burden on the examiner to search all inventions because the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Carlyn Burton on 07/06/2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
For the purposes of examination, the term “volatile organic compound” as used in the claims (see claim 6) will be interpreted in the same manner as defined in the specification, or an organic compound having a boiling point of less than 260 °C (see Applicant’s specification at para. 0051).
For the purposes of examination, the term “substantially free of” as used in claim 6 will be interpreted in the same manner as defined in the specification, or in an amount of “about less than 5 wt%” (see Applicant’s specification at para. 0023).
For the purposes of examination, the term “higher viscosity plasticizer” as used throughout the claims (see claim 17) will be interpreted to refer to a plasticizer having a Brookfield viscosity of at least 25 cP at 23 °C (see claim 17 and Applicant’s specification at para. 0020).
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 5 and 15 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.
In claim 5, it is unclear whether the claim necessitates all five of a benzoate, a phthalate, a cyclohexyl diester, a glycol diester, and a petroleum distillate in the composition, or whether the presence of only one suffices to read on the claim. For the purposes of examination, the Examiner is interpreting the latter. To correct, the Examiner suggests replacing the word “and” in claim 5, line 2, with the word “or.”
In claim 15, the term “noxious” is confusing. It is unclear what constitutes a “noxious” odor. Noxious can alter in varying contexts, e.g., chocolate is “noxious” to dogs but not to humans. For the purposes of examination, the Examiner is interpreting any composition that lacks methyl benzoate and lacks a tin catalyst to be free of noxious odor (see Applicant’s specification at para. 0059, 0078, and 0104).
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.
Claims 1-9 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Condie et al. (US-20250084197-A1) (hereinafter referred to as “Condie”), with evidence from Xu-Rabl et al. (US-20180371299-A1) (hereinafter referred to as “Xu-Rabl”) as to the rejection of claims 2-3 only.
Regarding claims 1, 4, and 5, Condie teaches a curable resin composition (see Condie at para. 0082, teaching a coating composition comprising a resin composition and an accelerator; the “coating composition” of Condie corresponds to the claimed “curable resin composition”; also see Condie at para. 0002, teaching the resin as containing a moisture-curable silane acrylic resin), comprising:
• at least one moisture curable resin (see Condie at para. 0002, teaching the resin as being a moisture-curable silane acrylic resin);
• 10 wt% to 50 wt% of at least one plasticizer having a Brookfield viscosity of less than 25 cP at 23 °C (wherein the at least one plasticizer comprises a benzoate, regarding claim 5) (see Condie at para. 0093-0094, teaching the coating composition may contain a plasticizer, such as isodecyl benzoate (Jayflex MB-10), in an amount from 0.5 to 30 wt% in the coating composition; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; isodecyl benzoate meets the claimed viscosity limitation, as disclosed by Applicant’s specification at para. 0083 and 0085);
• 0.1 wt% to 5 wt% of a non-tin catalyst (wherein the non-tin catalyst comprises potassium neodecanoate, regarding claim 4) (see Condie at para. 0083-0084, teaching the coating composition may contain an accelerator, i.e., a catalyst, such as potassium neodecanoate; also see Condie at para. 0089, teaching the coating composition may comprise the accelerator in an amount ranging from 0.0001 wt% to 10 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
While Condie teaches the composition outlined above, Condie fails to explicitly teach the composition as containing 10 wt% to 70 wt% of the at least one moisture curable resin.
However, Condie teaches an example coating composition, Example 8, which contains 24.0% of Polymer B and 16.0% of Kaneka SAX 400, for a total of 40.0 wt% of silane resin (24 + 16 = 40) (see Example 8 of Condie at Table 5 at pg. 17).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use 24 wt% of the polymer B and 16 wt% of Kaneka SAX 400 as the silane resins in the coating composition of Condie, as Condie teaches an example as such (see Example 8 of Condie at Table 5 at pg. 17).
Following the above modification, the coating composition of Condie contains 24.0% of Polymer B (i.e., the (meth)acrylic silane polymer) and 16.0% of Kaneka SAX 400. Both Polymer B and Kaneka SAX 400 are moisture-curable resins, see Applicant’s specification at para. 0012 and Condie at para. 0002 and 0140. Accordingly, following the above modification, the ink of modified Condie contains 40 wt% of total moisture-curable resin, which falls within the claimed range; further, even if the polymer B is not moisture-curable, Kaneka SAX 400 is contained in an amount of 16 wt%, which still falls within the claimed range.
Regarding claims 2-3, Kaneka SAX 400 is a trimethoxysilane-terminated polypropylene (i.e., a silyl-terminated polyether), as evidenced by Xu-Rabl at Table 1 at para. 0114; further, trimethoxysilane reads on the general formula (1) in claim 2, where a = 3 and X is a methoxy group.
Regarding claims 6-7, see Condie at para. 0093, teaching the coating composition may contain “one or more” plasticizers; accordingly, Condie necessarily teaches their composition may contain only a single plasticizer, e.g., isodecyl benzoate; isodecyl benzoate has a boiling point greater than 300 °C, as disclosed by Applicant’s specification at para. 0083-0084; accordingly, Condie teaches embodiments where the plasticizer contains no volatile organic compounds (i.e., the plasticizer contains only isodecyl benzoate); also see Applicant’s specification at para. 0051, defining “volatile organic compound” to refer to compounds having a boiling point of less than 260 °C, which the Examiner is applying here (also see claim interpretation above).
Regarding claim 8, see claim 1 modification above, setting forth modified Condie as teaching a composition containing 40 wt% of moisture-curable resin; also see Condie at para. 0094, teaching the coating composition may contain the plasticizer in an amount from 0.5 to 30 wt%; accordingly, modified Condie necessarily suggests a total content of moisture-curable resin and plasticizer ranging from 40.5 wt% to 70 wt% (40% moisture-curable resin + 0.5% plasticizer content min = 40.5% total content min; 40% moisture-curable resin + 30% plasticizer content max = 70% total content max); this range of 40.5 wt% to 70 wt% falls completely within the claimed range.
Regarding claims 9, 13, 14, and 16, the claimed limitations are notably properties of the composition; since the composition of modified Condie is the same as that claimed, it necessarily follows that the composition meets the claimed limitations; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)); burden of proof then shifts to Applicant to provide objective evidence to the contrary, see In re Fitzgerald, see MPEP § 2112-2112.02; also see Condie at para. 0126, teaching the composition may be used in a spray gun.
Regarding claim 15, Condie does not necessitate the presence of a tin catalyst or methyl benzoate in their composition; accordingly, Condie necessarily suggests their composition may be free of noxious odor; also see the claim interpretation set forth in the 112(b) rejection above.
Regarding claim 17, while modified Condie teaches the composition outlined above, modified Condie fails to explicitly teach the composition as further comprising at least one higher viscosity plasticizer having a Brookfield viscosity of at least 25 cP at 23 °C.
However, Condie teaches their coating composition may contain “one or more” plasticizers, and further teaches isodecyl benzoate and diisononyl phthalate as suitable plasticizers (see Condie at para. 0093).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use both isodecyl benzoate and diisononyl phthalate as plasticizers in the coating composition of Condie, because Condie teaches one or more plasticizers may be used in combination and further teaches both compounds as suitable plasticizers (see Condie at para. 0093). Combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Diisononyl phthalate is a higher viscosity plasticizer having a Brookfield viscosity of at least 25 cP at 23 °C, as disclosed by Applicant’s specification at para. 0083 and 0086.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Condie, as applied to claim 1 above, and further in view of Yuki et al. (JP-2020045403-A), with reference to the included machine translation (hereinafter referred to as “Yuki”).
Regarding claims 10-12, while modified Condie teaches the composition according to claim 1 outlined above, modified Condie fails to explicitly teach the claimed viscosity values.
However, Yuki teaches a curable resin composition for imparting adhesion which may contain a moisture-curable resin (see Yuki at Abstract and pg. 2, para. 5). Yuki further teaches the viscosity of the composition to range from 50 Pa-s to 500 Pa-s, and that if the viscosity is below 50 Pa-s, the applicability of the composition to a small application area is reduced, and if it exceeds 500 Pa-s, the workability is reduced (see Yuki at pg. 3, para. 9).
Since Yuki teaches that the viscosity of a curable resin composition for adhesion impacts applicability and workability (see Yuki at pg. 3, para. 9), the viscosity of a curable resin composition is a result effective variable. For example, one of ordinary skill in the art would increase the viscosity of the composition enough so that it is not too thin such that it impedes applicability, but not so much so that it is too thick, reducing its workability with respect to its intended effect. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have adjusted, by routine experimentation, the viscosity of the composition of modified Condie at various rpms to fall within the claimed range in order to optimize applicability and workability (see Yuki at pg. 3, para. 9). See MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kawakami et al. (US-20070282080-A1) teach a curable composition (see Kawakami at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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