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 .
Status of Application
Claims 1-11, 16 and 17 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 2/16/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art fails to teach or suggest a thixotropic and ablative coating comprising a substantially linear organopolysiloxane. In particular, Applicant argues that Seitz’s polysiloxane is not the same as Applicant’s as Applicant requires an average y value of about 2. Additionally, Applicant argues that the claim includes alternative terminal architectures. First, the Examiner notes that Seitz teaches an identical formula where y is preferentially 2 (0010). Additionally, the alternative terminal architectures recited in the claim are recited as optional and are not required. Therefore, Seitz’s polysiloxane meets the limitations of the claim and appears to be substantially identical. Thus, the Examiner maintains Seitz teaches the same polysiloxane and will inherently yield a thixotropic and ablative coating.
Applicant argues that Seitz fails to teach an extrusion rate as claimed. However, as previously noted Seitz teaches a range which overlaps the claimed range and Applicant has not provided evidence that the range is critical. Furthermore, overlapping ranges are prima facie evidence of obviousness, absent evidence of criticality.
Applicant argues that Seitz fails to teach a thickness as claimed and Seitz does not identify coating thickness as influencing any specific property. However, Seitz teaches that the thickness can be any suitable wet thickness (0086). Furthermore, the thickness of the coating will impact the properties of the article with the coating and the thickness will need to be adjusted based on the intended use of the coating, which can include coatings on sheathing, framing, walls or asphalt (0082 and 0086). Therefore, the thickness of the applied coating on the article is a result-effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Applicant argues that one would not combine Behl’s teaching of high RPM shear mixing with Seitz’s method as Seitz teaches branched and/or resinous resins that are not designed for high shear and Seitz teaches away from high shear mixing. However, as noted above, Seitz does teach the use of linear polysiloxanes (see above) which would be suitable for high shear mixing. Furthermore, Seitz does not teach that high shear mixing is incompatible with the composition. Rather, Seitz’s compositions are formulated to render the compositions workable and would then be able to be processed by high shear mixing if desired. Therefore, the Examiner maintains that Behl is properly combinable with Seitz.
Finally, Applicant argues that the evidence in the disclosure demonstrates unexpected results. However, the evidence provided is not commensurate in scope with the claims and is not compared against the closest prior art of record. Therefore, Applicant’s arguments with respect to unexpected results is moot and the rejections of record are maintained as presented below.
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.
1. Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seitz et al. (WO 2020/263763) in view of Behl et al. (WO 2010/008749).
I. Regarding claims 1-3, 6 and 8, Seitz teaches a method of providing a coating on a substrate comprising: preparing a potentially one-part room temperature curable silicone composition by mixing components (0013); applying the composition to a substrate (0086 and claim 10), such as a steel structure (0086), potentially by spraying (0096 and claim 11), to produce a curable coating on the substrate (claim 10); and allowing the composition to cure at room temperature (title and claim 10). Seitz teaches the composition comprising: a polydimethylsiloxane terminated with (CH3O)3-Si-(CH2)2-Si which has the structure as claimed (claim 1 and 0101), wherein z is the number average degree of polymerization (0028) and is an integer greater from 300-5000 (0026); fillers present in an amount of 40-60 wt% (0049) comprising a reinforcing filler having a BET surface area of at least 15 m2/g (0049), which may be precipitated calcium carbonate (0049); non-fibrous, non-reinforcing fillers (0051), such as ground calcium carbonate (Examples 3-6, Table 1a); a silane crosslinker (0032), such as methyltriethoxysilane which has a structure as claimed (0032); a titanate or zirconate condensation reaction catalyst when the composition is a one-part composition (0047-0048). Seitz teaches the composition free of diluents or solvents (0073) and can have an extrusion rate of greater than 10 g/min (0074). Seitz fails to explicitly teach the composition is ablative and forms a thixotropic and ablative coating, the coating applied to a thickness as claimed, mixing done using a twin screw extruder at a rate of at least 500 rpm, the ratio of reinforcing fillers to non-reinforcing being from 1:2 to 1:7, the extrusion rate of 1900-2600 g/min, or an example including all the potential elements in a single embodiment.
First, Seitz teaches the composition having an extrusion rate of greater than 10 g/min (0074). This overlaps with the range of 1900-2600 g/min. Furthermore, overlapping ranges are prima facie evidence of obviousness.
Second, adjusting the amount of reinforcing filler to non-reinforcing filler will necessarily adjust the strength of a coating resulting from the composition as lower amounts of reinforcing filler will be weaker than those with greater amounts of reinforcing filler as compared to non-reinforcing filler. Further, the use of non-reinforcing filler is generally used to reduce the cost of the composition. Thus, there is a balance between utilization of non-reinforcing filler and reinforcing filler to provide both a cost-effect composition that still has optimal reinforcing and strength properties. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ratio through routine optimization. In order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). As illustrated above, the ratio of reinforcing filler to non-reinforcing filler must be balanced to achieve optimal reinforcing properties while still benefiting from a reduction in cost and is an articulate rationale as to why it would have been obvious to arrive at the claimed ratio. Furthermore, it would have been obvious to try different claimed ratios (which is a conventional scientific process and within one of ordinary skill in the art’s technical grasp) to arrive at an optimal ratio from a finite selection of values that yields an improved reinforced composition at reduced costs which is a design need. Note that in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Third, Seitz fails to teach a single example utilizing each of the specific elements. However, Seitz teaches that the recited elements can be used in combination. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the elements in a single composition by substituting the specific elements as claimed. One would have been motivated to make this modification as one could have made these substitutions with a reasonable expectation of success (particularly given that Seitz teaches all the elements as claimed can be used in combination to yield a room temperature curable coating composition, as noted above), and the predictable result of providing a silicone coating composition.
Fourth, Seitz fails to teach the thickness as claimed. However, Seitz teaches that the thickness can be any suitable wet thickness (0086). Furthermore, the thickness of the coating will impact the properties of the article with the coating and the thickness will need to be adjusted based on the intended use of the coating, which can include coatings on sheathing, framing, walls or asphalt (0082 and 0086). Therefore, the thickness of the applied coating on the article is a result-effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Fifth, Seitz makes obvious a composition including all the same elements as claimed (see above). Given that Seitz’s composition is essentially identical to the claimed composition, the property of the resultant coating being ablative and thixotropic is inherent to the composition. Note that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
Finally, Behl teaches using high shear mixing using a twin screw extruder at a rate of 500 rpm for mixing (0065 and Examples 19 and 20, Table 1) of a similar curable organopolysiloxane (0023) composition comprising a titanate catalyst (0035) and a silane crosslinker (0032). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Seitz’s process by mixing Seitz’s composition using a twin screw extruder at a rate of 500 rpm. One would have been motivated to make this modification as Behl teaches that a twin screw extruder is typically used for this type of mixing (0043) will allow for adequate mixing of all the components (0044) thereby ensuring a homogeneous composition.
II. Regarding claim 4, Seitz in view of Behl make obvious all the limitations of claim 1 (see above). Additionally, Seitz teaches the composition in an example having a viscosity of 83 Pa•s (Example 6, Table 1a). Therefore, Seitz in view of Behl also make obvious the viscosity range as claimed in claim 4.
III. Regarding claim 5, Seitz in view of Behl make obvious all the limitations of claim 1, but fail to teach the composition cures at a rate as claimed. However, Seitz in view of Behl teach an identical process as claimed (see above) where curing is done at room temperature (see above) and Seitz teaches an essentially identical composition (see above); therefore, since the process and composition utilized is identical, then inherently the coating will cure at an identical rate to that claimed. Note that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
IV. Regarding claim 7, Seitz in view of Behl make obvious all the limitations of claim 1 (see above) but fail to explicitly teach the viscosity, the extrusion rate and the thickness as claimed.
First, Seitz teaches the composition in an example having a viscosity of 83 Pa•s (Example 6, Table 1a). Therefore, Seitz in view of Behl also make obvious the viscosity range as claimed in claim 7.
Second, Seitz in view of Behl teach the composition having an extrusion rate of greater than 10 g/min (see Seitz at 0074). This overlaps with the range of 1900-2500 g/min. Furthermore, overlapping ranges are prima facie evidence of obviousness.
Finally, Seitz in view of Behl teach that the thickness can be any suitable wet thickness (see Seitz at 0086). Furthermore, the thickness of the coating will impact the properties of the article with the coating and the thickness will need to be adjusted based on the intended use of the coating, which can include coatings on sheathing, framing, walls or asphalt (see Seitz at 0082 and 0086). Therefore, the thickness of the applied coating on the article is a result-effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
V. Regarding claim 9, Seitz in view of Behl make obvious all the limitations of claim 1 (see above), and Seitz teaches an article having a coating obtained by the process (see Seitz at 0086 and 0090). Therefore, Seitz in view of Behl also make obvious claim 9.
2. Claim(s) 10, 11, 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seitz.
I. Regarding claims 10 and 11, Seitz teaches an article, such as a steel structure (0086), having a coating which is the cured product of a composition (0086 and 0090). Seitz teaches the composition comprising a potentially one-part (0071) room temperature curable (abstract) and sprayable (0085) composition comprising: a polydimethylsiloxane terminated with (CH3O)3-Si-(CH2)2-Si which has the structure as claimed (claim 1 and 0101); fillers present in an amount of 40-60 wt% (0049) comprising a reinforcing filler having a BET surface area of at least 15 m2/g (0049), which may be precipitated calcium carbonate (0049); non-fibrous, non-reinforcing fillers (0051), such as ground calcium carbonate (Examples 3-6, Table 1a); a silane crosslinker (0032), such as methyltriethoxysilane which has a structure as claimed (0032); a titanate or zirconate condensation reaction catalyst when the composition is a one-part composition (0047-0048). Seitz teaches the composition free of diluents or solvents (0073) and can have an extrusion rate of greater than 10 g/min (0074). Seitz fails to explicitly teach the coating is ablative, the ratio of reinforcing fillers to non-reinforcing being from 1:2 to 1:7, the extrusion rate of 1900-2600 g/min, the coating having a thickness of from 2.5 to 5 mm, or an example including all the potential elements in a single embodiment.
First, Seitz teaches the composition having an extrusion rate of greater than 10 g/min (0074). This overlaps with the range of 1900-2600 g/min. Furthermore, overlapping ranges are prima facie evidence of obviousness.
Second, the ratio of the types of fillers is a result-effective variable. Adjusting the amount of reinforcing filler to non-reinforcing filler will necessarily adjust the strength of a coating resulting from the composition as lower amounts of reinforcing filler will be weaker than those with greater amounts of reinforcing filler as compared to non-reinforcing filler. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ratio through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). Third, Seitz fails to teach a single example utilizing each of the specific elements. However, Seitz teaches that the recited elements can be used in combination. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the elements in a single composition by substituting the specific elements as claimed. One would have been motivated to make this modification as one could have made these substitutions with a reasonable expectation of success (particularly given that Seitz teaches all the elements as claimed can be used in combination to yield a room temperature curable coating composition, as noted above), and the predictable result of providing a silicone coating composition.
Fourth, Seitz fails to teach the thickness as claimed. However, Seitz teaches that the thickness can be any suitable wet thickness (0086). Furthermore, the thickness of the coating will impact the properties of the article with the coating and the thickness will need to be adjusted based on the intended use of the coating, which can include coatings on sheathing, framing, walls or asphalt (0082 and 0086). Therefore, the thickness of the applied coating on the article is a result-effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Finally, Seitz makes obvious a composition including all the same elements as claimed (see above). Given that Seitz’s composition is essentially identical to the claimed composition, the property of the resultant coating being ablative is inherent to the composition. Note that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
II. Initially, with respect to claims 16 and 17, the language that “where after being sprayed onto a substrate surface to produce a thixotropic curable coating thereon has a coating thickness before any visible indication of slump/flow of from 2.5 to 5 mm measured using a wet film comb gauge” holds no patentable weight. The claims are drawn to the composition and the thickness to which that composition is applied is not relevant to the composition itself. Any prior art composition having the elements as claimed could be applied to a thickness as claimed. Therefore, any prior art composition that includes the elements as claimed will be interpreted as meeting the limitation of “where after being sprayed onto a substrate surface to produce a thixotropic curable coating thereon has a coating thickness before any visible indication of slump/flow of from 2.5 to 5 mm measured using a wet film comb gauge”.
Regarding claims 16 and 17, Seitz teaches a potentially one-part (0071) room temperature curable (abstract) and sprayable (0085) composition comprising: a polydimethylsiloxane terminated with (CH3O)3-Si-(CH2)2-Si which has the structure as claimed (claim 1 and 0101); fillers present in an amount of 40-60 wt% (0049) comprising a reinforcing filler having a BET surface area of at least 15 m2/g (0049), which may be precipitated calcium carbonate (0049); non-fibrous, non-reinforcing fillers (0051), such as ground calcium carbonate (Examples 3-6, Table 1a); a silane crosslinker (0032), such as methyltriethoxysilane which has a structure as claimed (0032); a titanate or zirconate condensation reaction catalyst when the composition is a one-part composition (0047-0048). Seitz teaches the composition free of diluents or solvents (0073) and can have an extrusion rate of greater than 10 g/min (0074). Seitz fails to explicitly teach the composition is ablative, the ratio of reinforcing fillers to non-reinforcing being from 1:2 to 1:7, the extrusion rate of 1900-2600 g/min or an example including all the potential elements in a single embodiment.
First, Seitz teaches the composition having an extrusion rate of greater than 10 g/min (0074). This overlaps with the range of 1900-2600 g/min. Furthermore, overlapping ranges are prima facie evidence of obviousness.
Second, the ratio of the types of fillers is a result-effective variable. Adjusting the amount of reinforcing filler to non-reinforcing filler will necessarily adjust the strength of a coating resulting from the composition as lower amounts of reinforcing filler will be weaker than those with greater amounts of reinforcing filler as compared to non-reinforcing filler. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ratio through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). Third, Seitz fails to teach a single example utilizing each of the specific elements. However, Seitz teaches that the recited elements can be used in combination. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the elements in a single composition by substituting the specific elements as claimed. One would have been motivated to make this modification as one could have made these substitutions with a reasonable expectation of success (particularly given that Seitz teaches all the elements as claimed can be used in combination to yield a room temperature curable coating composition, as noted above), and the predictable result of providing a silicone coating composition.
Fourth, Seitz makes obvious a composition including all the same elements as claimed (see above). Given that Seitz’s composition is essentially identical to the claimed composition, the property of the coating composition being ablative is inherent to the composition. Note that "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
Conclusion
Claims 1-11, 16 and 17 are pending.
Claims 1-11, 16 and 17 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ROBERT S WALTERS JR/
March 9, 2026Primary Examiner, Art Unit 1717