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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/11/2026 has been entered.
Response to Arguments
Applicant's arguments filed 6/11/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art fails to teach or suggest that the high shear mixer is operated at a speed of at least 1000 rpm. However, the Examiner notes that the claims only recite this in the alternative. The claims alternatively recite “and/or using a twin-screw extruder”. The further limitation to the rpm is only with respect to when a high shear mixer is utilized. As outlined below, the prior art teaches use of a twin-screw extruder for high-shear mixing (which is the alternative in claim 1 and not required to be conducted at 1000 rpm). Therefore, the Examiner maintains that the combination of references still make obvious the claims. If Applicant intends to claim that the mixing is conducted at a certain rpm that would need to be specified for both types of mixers that are claimed. For example, claim 1 could recite “by mixing at a high shear at a rate of at least 1000 rpm using either a high shear mixer or a twin screw extruder” which would then require that rate to be used during mixing.
Applicant also argues that there are unexpected results attributed to the high shear mixing conditions and points to Tables 2, 4 and 6. However, the evidence is not commensurate in scope to the claims which are limited to a shear of at least 1000 rpm and claim broader compositions than the few examples disclosed. Additionally, as shown in comparative example 2, high shear mixing is used, but does not show good slump/flow characteristics so it can not be ascertained that high shear mixing is critical to achieve the required results. Therefore, Applicant’s evidence of unexpected results is moot; thus, the rejections of record are maintained.
With respect to claims 10, 11, 16 and 17, Applicant argues that the weight ratio is not a result-effective variable. However, the Examiner disagrees and maintains that adjusting the ratio of reinforcing filler to non-reinforcing filler will alter the strength of a resulting coating. Furthermore, it would have been within the level of one of ordinary skill in the art to optimize the ratio to arrive at a composition exhibiting optimal results over a wide range of properties.
Applicant also argues that the Examiner has not demonstrated that the compositions would inherently have the properties as claimed. However, it has been held 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."). Furthermore, Applicant notes that compositions with differing weight ratios of (b) and (c) will have different properties. However, as outlined in the rejection below, the combination of references make obvious this ratio and thus the resultant composition will inherently have the claimed properties.
Finally, Applicant argues that there are unexpected results for the weight ratio of component (b) to (c). However, for the same reasons noted above, the evidence is not commensurate in scope to the claims. Therefore, the rejections of record are maintained.
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 under high shear mixing in a high shear mixer at a rate of at least 1000 rpm or using a twin-screw extruder, 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. Further, note that claim 8 only recites further limitations when the alternative element of a high shear mixer operated at over 1000 rpms is used. In this case, the combination of references teaches the alternative and thereby also makes obvious this limitation.
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.").
3. Claim(s) 1, 2 and 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seitz et al. (WO 2020/263763) in view of Hamada et al. (EP 0739652).
I. Regarding claims 1, 2, 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 high shear mixer at a rate of at least 1500 rpm or using a twin-screw extruder, 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, Hamada teaches using a high shear mixer at a rate of 500-1500 rpm for mixing (page 4, lines 16-28, and note that overlapping ranges are prima facie evidence of obviousness) of a similar curable organopolysiloxane (page 2, lines 19-20) composition comprising a catalyst (page 2, lines 24-25) and a silane crosslinker (page 2, lines 21-22). 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 high shear mixer at a rate of 1500 rpm as disclosed by Hamada. One would have been motivated to make this modification as Hamada teaches that a high shear mixer is typically used for this type of mixing (page 4, lines 5-28) and will allow for continuous mixing and coating (page 4, line 5).
II. Regarding claim 4, Seitz in view of Hamada 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 Hamada also make obvious the viscosity range as claimed in claim 4.
III. Regarding claim 5, Seitz in view of Hamada 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 Hamada 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 Hamada 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 Hamada also make obvious the viscosity range as claimed in claim 7.
Second, Seitz in view of Hamada 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 Hamada 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 Hamada 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 Hamada also make obvious claim 9.
Conclusion
Claims 1-11, 16 and 17 are pending.
Claims 1-11, 16 and 17 are rejected.
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/ROBERT S WALTERS JR/
June 16, 2026Primary Examiner, Art Unit 1717
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