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 is objected to because of the following informalities: In line 13 of claim 1, there should be a comma following “a is 2, 3, or 4”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 requires the polyarylorganosiloxane polymer or silicone copolymer of claim 1 to be linear, branched, or cyclic. However, any of the polyarylorganosiloxane polymer or silicone copolymers of claim 1 will fall within one of these groups. Claim 4 therefore fails to further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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 and 3-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dimitrova (WO 2019/190775 A1).
In paragraphs 48-49 Dimitrova discloses a two-part curing composition comprising a base part and a curing agent which can be a catalyst package. The catalyst package comprises an alkyl-terminated diorganopolysiloxane, a cross-linker, a tin-based catalyst, and can also comprise a primary aminosilane.
In paragraph 9 Dimitrova discloses that the polydiorganosiloxane comprises a plurality of (R1ySiO(4-y)/2)) groups, where 97% of the groups have y=2, in which case the groups are (R12SiO) groups. In paragraphs 14 Dimitrova discloses that the R1 groups can be aromatic groups, for example phenyl groups, meeting the limitations of both the monovalent substituent comprising an aromatic group R4 of component (i) of claim 1 and the monovalent organic group R5 of component (i) of claim 1, are among the most preferred R groups. In paragraph 14 Dimitrova also discloses other suitable R1 alkyl groups meeting the limitations of the monovalent organic group R5 of component (i) of claim 1. When the polydiorganosiloxane of Dimitrova comprises groups where at least one of the R substituents is phenyl it meets the limitations of component (i) of claim 1.
In paragraph 52 Dimitrova discloses that the catalyst package can additionally comprise a polydialkylsiloxane which also comprises a plurality of (R22SiO) units, where the R2 groups can be phenyl groups, also meeting the limitations of component (i) of claim 1.
In paragraph 22 Dimitrova discloses numerous suitable cross-linkers meeting the limitations of the cross-linker of component (ii) of claim 1. For example, ethyltrimethoxysilane meets the limitations of component (ii) of claim 1 where a is 3, R7 is a methoxy group (alkoxy group having 1 carbon), and R6 is an ethyl group, which is a non-hydrolysable organic group as acknowledged on page 9 lines 33-35 of the current specification. The aminosilane disclosed in paragraph 49 of Dimitrova meets the limitations of component (iii) of claim 1, and the tin-based catalyst disclosed in paragraphs 37 and 49 of Dimitrova meets the limitations of component (iv) of claim 1. In paragraph 53 Dimitrova discloses that the catalyst package can comprise filler or have no filler depending on the concentration ratio of the base composition and the catalyst package.
The composition and catalyst package of Dimitrova therefore meets the limitations of claim 1 for both the case where the optional filler of component (v) of claim 1 is present and the case where it is not present. Claim 5 is also met for the case where component (i) is the polyarylorganosiloxane rather than the silicone copolymer.
As discussed above, Dimitrova discloses that the group corresponding to the R4 group of component (i) of claim 1 can be a phenyl group, meeting the limitations of claim 3. The polydiorganosiloxane and the polydialkylsiloxane of Dimitrova must be linear, branched, or cyclic, meeting the limitations of claim 4. In paragraph 14 Dimitrova indicates that the polydiorganosiloxane can have some branching, and in paragraph 52 Dimitrova discloses that the polydialkylsiloxane can be linear or branched.
In paragraph 53 Dimitrova discloses that the base composition and catalyst package are mixed in a weight ratio of 15:1 to 1:1, as recited in claim 6. In paragraphs 29-30 and 33-34 Dimitrova discloses that the reinforcing filler can be a precipitated calcium carbonate, precipitated silica, or fumed silica, as recited in claim 7. In paragraphs 39-47 Dimitrova discloses that the composition can comprise the additional additives recited in claim 8.
In Table 2b (paragraph 62) Dimitrova discloses a catalyst package (curing agent) comprising a siloxane polymer (carrier fluid), cross-linker, and tin-based catalyst in amounts within the range recited in claim 10. The sample composition does not include the specific siloxane polymer recited in component (i) of claims 1 and 10, but as discussed above Dimitrova discloses that siloxane polymers meeting the limitations of component (i) can also be used in the catalyst package. The catalyst package of Table 2b of Dimitrova further comprises 25% by weight of an adhesion promoter, and in paragraph 41 Dimitrova discloses that the adhesion promoter can be an aminoalkylmethoxysilane meeting the limitations of the aminosilane of component (iii) of claim 10. The catalyst package also comprises 0.90% by weight of silica, which is a reinforcing filler meeting the limitations of component (v) of claim 10. Claim 10 is therefore anticipated by Dimitrova.
In paragraphs 50-51 Dimitrova discloses that the base component comprises 50 to 90% by weight of a siloxane polymer, 10 to 50% by weight of a reinforcing filler, and 0 to 20% by weight of non-reinforcing filler, meeting the limitations of the base part of claim 9.
In paragraph 1 and throughout the reference, Dimitrova discloses a sealant prepared from the composition, meeting the limitations of the caulking of claim 11.
In light of the above, claims 1 and 3-11 are anticipated by Dimitrova.
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.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Dimitrova.
The discussion of Dimitrova in paragraph 7 above is incorporated here by reference. Dimitrova discloses a composition meeting the limitations of claim 1, where the base part of the composition comprises a siloxane polymer, a reinforcing filler, and optionally non-reinforcing fillers. In paragraph 49 Dimitrova discloses that the siloxane polymer in the base composition can be silanol-terminated, in which case the polymer has hydroxyl terminal groups, as recited in component (a) of claim 2. In paragraph 9 Dimitrova discloses that the siloxanes used in the composition have at least two hydroxyl (-OH) or hydrolysable groups per molecule.
Dimitrova does not specifically disclose the viscosity of the siloxane polymer in the base composition. However, given the broad range for the number of repeat units (200 to 5000) disclosed in paragraph 9 of Dimitrova, the broad viscosity range recited for component (a) of claim 2, and the relationship recited in paragraph 17 of Dimitrova, the viscosity of the siloxane polymer in the base composition of Dimitrova will at least overlap the range recited for component (a) of claim 2. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claim 2 is therefore rendered obvious by Dimitrova.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dimitrova (WO 2019/190776 A1) is cumulative to the Dimitrova reference cited in the above rejection. Zhang (CN 106978132 A), cited as an X reference in the International Search Report, discloses a two-part composition similar to the claimed composition, but the aminosilane is disclosed as a coupling agent present in the base part rather than the catalyst package.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
Prosecution Insights