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 Objections
Claim 1 and the claims dependent therefrom are objected to because the relationship between the siloxane-modified polyurethane and the compounds (A), (B), and (C) identified in the body of the claim is one of the former having been derived from the latter. Hence, the word “comprising” in line 1 of claim 1 should be replaced with “prepared/derived from”.
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.
Claim 1 and the claims dependent therefrom 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.
At issue is the fact that it would seemingly not be possible to differentiate a group
-CH2CH2-Y-O* from a group -O-Y-CH2CH2-* given that, in both instances, the terminal methylene carbon is attached to one polysiloxane chain and the oxygen atom to another polysiloxane but the chains themselves are not distinguishable. Indeed, it is curious that -CH2CH2-Y-O* would be listed in formula (2) insofar it also is ostensibly derived from a dehydrogenation reaction involving a hydrosilyl group pendant to a siloxane chain and a hydroxyl group from the hydroxyalkyl group precursor, i.e. the alken-ol, given that n2 is representative of the number of groups (2) and n2/(n2 + n3 + n4 + n5) is supposed to articulate a low fraction of dehydrogenation-based by-product (less than 3 mol%). Until a difference between the aforementioned groups is explained, it would appear that the magnitude of n2/n2 + n3 + n4 + n5 cannot be ascertained
Claim Analysis
Applicant attaches to the polysiloxane macromer component a requirement that the amount of dehydrogenation reaction by-product is less than 3 mol% as reflected in the stated & that 0.97 < n2/(n2 + n3 + n4 + n5) ≤ 1.0. It is not clear why but it appears from the Examples that this limitation is satisfied where the alken-ol furnishing the hydroxyalkyl group has at least 5 carbon atoms. Indeed, there are not otherwise any distinctions between the inventive and comparative synthetic examples. Each of them uses the widely employed Karstedt’s catalyst to promote the reaction under apparently similar environmental conditions and where the catalyst is removed by agitating the reaction mixture with activated carbon. Because each of these aspects are the same, it seems reasonable to conclude, without more, that the polymer will inherently have less than 3 mol% of the structural attributes (3), (4), and (5) (although, to reiterate, it presently seems as though -CH2CH2-Y-O* and -O-Y-CH2CH2-* are indistinguishable) where it is obtained from an alken-ol containing at least 5 carbon atoms.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gunatillake et al., U.S. Patent # 6,420,452.
See example 4 where there is described the one shot copolymerization of PDMS (defined in Example 1), tetramethyldisiloxane bearing either hydroxypentyl or hydroxyhexyl terminal groups, PHMO (also defined in Example 1), BDO (butanediol) and methylenediphenyldiisocyanate. Following their copolymerization, the polymer is subjected to compression molding under heat where curing into a siloxane-modified polyurethane having thermoplasticity inasmuch as there are no crosslinking monomers occurs.
One of ordinary skill will recognize the polydimethylsiloxane macromer as being devoid of SiO4/2 and R1SiO3/2 units thus satisfying claims 2 and 3 where q=0.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schindler et al., U.S. Patent Application Publication No. 2004/0087752.
See Example 5 where a prepolymer derived from propylene glycol (correlated with claimed component (C) and isophorone diisocyanate is initially made followed by the introduction and reaction of hydroxyhexyl-terminated polydimethylsiloxane and, finally, the modification of the urethane polymer obtained from these with isocyanatopropyltrimethoxysilane. One of ordinary skill will recognize the polydimethylsiloxane macromer as being devoid of SiO4/2 and R1SiO3/2 units thus satisfying claims 2 and 3 where q=0.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Schindler et al., U.S. Patent Application Publication No. 2004/0087752.
The silylated urethane polymers are said to have utility as moisture-cure materials for adhesives, sealants, coatings, etc. and, while moisture-cured systems don’t necessarily have to be subject to heating, it is known by the skilled artisan that heating will accelerate the condensation reactions by which moisture-cured systems become crosslinked.
At least EP 3009460 and US 7,373,879, cited as constituting a basis for rejection by a foreign patent office, are also regarded as anticipatory of most of the instant claims. Insofar as they fail to address any more than what has been rendered unpatentable by Gunatillake and Schindler, and in the name of brevity, no formal statement of rejection over these will be proffered at the present time. U.S. 2005/0272862 and KR 2014/0060084 are also germane for their description of polyurethanes that may be prepared from polysiloxanes having groups conforming with formula (2) according to the broader teachings of those disclosures. There are, however, no exemplifications of a polyurethane-forming reaction mixture where a polysiloxane bearing groups (2) are described thus they would only constitute prior art under 35 U.S.C. 103.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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September 16, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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