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
Applicant’s election without traverse of Group I, claims 1-4 and 7-20 in the reply filed on 06/18/2026 is acknowledged.
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 19-20 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.
Claims19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
The Examiner treats claims 19-20 as product (pigment extender) claims instead of a method of using the product (pigment extender).
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 - 4, and 9 - 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20040249043(US’043), in view of Dynasylan® - the brand for Functional Silanes (10/25/2017, filed by applicant on 05/08/2024).
Regarding claims 1-2, and 17-20, US’043 discloses aqueous or solvent borne coating compositions containing a binder, pigment and calcinated kaolin ([0008-0009], [0040] and [0017-0018]). The coatings can also be applied as paint and adhesive ([0021] and [0028]).
But it is silent about the modified calcinated kaolin as applicants set forth in claims 1-2.
However, it is known in the art that Dynasylan® 1146 silane demonstrates improved adhesion when Dynasylan® 1146 silane is used include RTV silicones and hybrid silane-crosslinked systems. Additive loading levels of 0.5 to 1.5 wt.% Dynasylan® 1146 silane with regard to the overall formulation are typically recommended. Dynasylan® 1146 silane can also be utilized as a mineral filler treatment. The diamino and alkyl functionalities result in unique functional filler properties when Dynasylan® 1146 treated minerals are incorporated into polymers (whole document).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application use treated the calcinated kaolin with Dynasylan® 1146 silane to provide unique functional filler properties when Dynasylan® 1146 treated minerals are incorporated into polymers.
Dynasylan® 1146 silane has the claimed C/N ratio as applicants set forth in the claims.
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.
Regarding claims 3 and 9, US’043 discloses aqueous or solvent borne coating compositions containing a binder, pigment and calcinated kaolin. See [0008-0009], [0040] and [0017-0018].
Regarding claim 4, US’043 discloses titanium dioxide is used. See examples and claim 31.
Regarding claims 10-15, it is known in the art that Dynasylan® 1146 silane demonstrate improved adhesion when Dynasylan® 1146 silane is used include RTV silicones and hybrid silane-crosslinked systems. Additive loading levels of 0.5 to 1.5 wt.% Dynasylan® 1146 silane with regard to the overall formulation are typically recommended. Dynasylan® 1146 silane can also be utilized as a mineral filler treatment. The diamino and alkyl functionalities result in unique functional filler properties when Dynasylan® 1146 treated minerals are incorporated into polymers( whole document).
Regarding claims 14-15, Dynasylan® 1146 silane demonstrates improved adhesion when Dynasylan® 1146 silane is used include RTV silicones and hybrid silane-crosslinked systems. Additive loading levels of 0.5 to 1.5 wt.% Dynasylan® 1146 silane with regard to the overall formulation are typically recommended. Dynasylan® 1146 silane can also be utilized as a mineral filler treatment. “about” permits some tolerance. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claim 16, the Burgess extenders including calcined clays, e.g., calcined kaolin clays, which has the claimed physical property.See [0040].
Conclusion
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731
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