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 .
Preliminary amendment filed 3/25/2024 is made of record. Claims 1-11 are amended; and claims 12-15 are cancelled. Accordingly, claims 1-11 are currently pending in the application.
It is noted that claim 11 drawn to coating, caulking, mold making or encapsulating material is kept with two-part moisture curing composition since no materially significant limitations are recited in claim 11 that would patentably distinguish it from composition of claims 1-10.
Claim Objections
Claims 1, 3-6, and 10 are objected to because of the following informalities:
Claim 1 recites “each R6 is selected from is a non-hydrolysable” (lines 13-14) and should read “each R6 is selected from a non-hydrolysable”.
Claim 3 recites “of carrier fluid (i) is” (line 2) and applicant is advised to rephrase it as “of the carrier fluid (i) is” for proper antecedent basis.
Claim 4 recites “of carrier fluid (i) comprise” (line 3) and applicant is advised to rephrase it as “of the carrier fluid (i) comprise” for proper antecedent basis.
Claim 5 recites “catalyst package part” (line 3) and applicant is advised to rephrase it as “the catalyst package part” for proper antecedent basis.
Claim 6 recites “cross-linker is selected from a dimethyl ketoximo group … or … or … or 1-ethyl-2-methylvinyloxy group” Proper Markush grouping is listed as “selected from the group consisting of A, B, C and D”. Alternatively, it can be listed as “selected from A, B, C or D”. See MPEP 2173.05(h).
Claim 10 recites “carrier fluid (i)” (line 3), “cross-linker (ii)” (line 5) and “tin-based catalyst (iv)” (line 8). Applicant is advised to rephrase them as “the carrier fluid (i)”, “the cross-linker (ii)”, and “the tin-based catalyst (iv)”, respectively, for proper antecedent basis.
Appropriate correction and/or clarification are required.
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 4 is 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.
Claim 4 recites “average formula (-CnH2n-O-)y of carrier fluid (i) comprise trimethylene oxide units, tetramethylene oxide units”. One skilled in art would recognize trimethylene oxide units (i.e., oxetane), tetramethylene oxide units (i.e., tetrahydrofuran) units as ring structures. However, the unit (-CnH2n-O-)y does not appear to include a cyclic structure. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
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 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al (WO 2019/024429 A1).
It is noted that WO 2019/024429 A1 (WO) is being utilized for date purposes. However, US equivalent for WO, namely, Huang et al (US 2021/0087398 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claim 1, Huang et al teach a two-component silicone composition which can cure via two part moisture cure organosiloxane composition (abstract) which reads on two-part moisture curing silicone composition in present claim 1. The two component moisture curing silicone composition have a base component and catalyst package component (paragraph 0008) which reads on having a base part and catalyst package part in present claim 1. See example 1, wherein the catalyst package comprises polyether (1) and is a trimethoxysilyl-terminated polyether (i.e., reads on carrier fluid (i) wherein the terminal group is (R4O)m(Y1)3-m-Si-W1v , m = 3, R4 is a C1-alkyl and v = 0), treated fumed silica (i.e., reads on the reinforcing filler (v) in present claim 1), aminopropyltriethoxysilane (i.e., reads on non-dipodal aminosilane (iii) which is aminoalkyltrialkoxysilane in present claim 1), 1,6-bis(3-trimethoxysilyl)hexane (i.e., reads on bis(3-trimethoxysilyl)hexane as crosslinker (ii) in present claim 1), and dimethyl tin dineodecanoate (paragraph 0103) which reads on tin based catalyst (v) in present claim 1. In one embodiment, the alkoxysilyl terminated organic polymer is a polyether and comprises recurring units derived from oxyalkylene units represented by formula (-CnH2n-O-)y wherein n is an integer from 2 to 4 inclusive and y is an integer ≥ 4. Preferably, polyoxyalkylene polymeric backbone consists of oxypropylene units (paragraph 0058) which reads on (-CnH2n-O-)y wherein n is an integer of 3 in present claim 1.
Regarding claim 2, see example 1, wherein the base component comprises hydroxydimethyl terminated polydimethylsiloxane having a viscosity of 4000 mPa.s at 250C (i.e., reads on siloxane polymer in present claim 2 having two terminal hydroxyl or hydrolysable groups and viscosity falling within the range of 1,000 to 200,000 mPa.s at 250C) and calcium carbonate (Table 1c, paragraph 0099) which reads on reinforcing filler in present claim 2. It is noted that non-reinforcing fillers are optional and therefore not required.
Regarding claim 3, Huang et al teach that catalyst package comprises (R4O)m(Y1)3-m - Si terminated organic polymer wherein R4 is a C1-10 alkyl group and Y1 is an alkyl group containing from 1 to 8 carbons (paragraphs 0008-0009).
Regarding claim 4, Huang et al teach that in one embodiment, the alkoxysilyl terminated organic polymer is a polyether and comprises recurring units derived from oxyalkylene units represented by formula (-CnH2n-O-)y wherein n is an integer from 2 to 4 inclusive and y is an integer ≥ 4. The polyoxyalkylene polymeric backbone can comprise oxypropylene units -C3H6-O-, oxybutylene units (-C4H8-O-) or mixtures thereof. The polyether may have a number average molecular weight of 300 to 10,000 (paragraph 0058) which reads on repeating unit (-CnH2n-O-)y comprising oxypropylene units and oxybutylene units and y is at least 50 in present claim 4.
Regarding claim 5, Huang et al teach that base component composition and the catalyst package composition are intermixed in a ratio of 15:1 to 1:1 (paragraph 0093) which reads on the ratio in present claim 5.
Regarding claim 6, Huang et al teach that crosslinker includes silanes which contain silicon bonded hydrolysable groups such as alkoxy groups methoxy, ethoxy, ketoximino such as dimethyl ketoximino (paragraph 0075).
Regarding claim 7, see example 1, wherein the catalyst package includes fumed silica (paragraph 0103, Table 2a) which reads on reinforcing filler (v) in present claim 7.
Regarding claim 8, Huang et al teach that additives such as flame retardants, UV stabilizers, fungicides and/or biocides may be included. Pigment such as carbon black may be included in the catalyst package (paragraphs 0079 and 0081) which read on the additives in present claim 8.
Regarding claim 9, Huang et al teach that base component comprises 10 to 90% weight of siloxane polymer, 10 to 80 wt% reinforcing fillers and 0 to 20 wt% of non-reinforcing fillers, with the total wt% of the base component being 100 wt% (paragraphs 0085-0089).
Regarding claim 10, see example 1, wherein the catalyst package comprises 60.7 wt% of trimethoxysilane terminated polyether (1) (i.e., reads on the amount of carrier fluid in present claim 10), 14 wt% of 1,6-bis(trimthoxysilyl)hexane (i.e., reads on the amount of crosslinker in present claim 10), 16 wt% of aminopropyltriethoxysilane (i.e., reads on the amount of non-dipodal aminosilane in present claim 10), 0.2 wt% of dimethyl tin dineodecanoate (i.e., reads on the amount of tin catalyst in present claim 1) and 3.5 wt% of fumed silica (i.e., reads on amount of reinforcing filler in present claim 10) with the total adding to 100 wt%.
Regarding claim 11, Huang et al teach that composition can be used as coating, caulking, mold making and encapsulating materials (paragraph 0094) which reads on present claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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