DETAILED ACTION
This is an application based on application number 18/852,706 filed 30 September 2024, which is a national stage entry of PCT/US2023/016543 filed 28 March 2023, which claims priority to US Provisional Application No. 63/325,340 filed 30 June 2022. Claims 1-20 are pending.
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 .
Election/Restrictions
Applicant’s election of Group I claims 1-12 and 17-20 in the reply filed on 28 July 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 28 July 2026.
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.
Claims 1-12 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (WIPO International Publication No. WO 2020/176861 A1) (Li) in view of Fukatsu et al. (US Patent No. 5,767,197) (Fukatsu).
Regarding instant claims 1, 6, and 9-12:
Li discloses a curable composition comprising:
an organic polymer having reactive silicon groups (Claim 1);
a chlorinated polyolefin (Claims 1 and 8); and
adhesion promoters inclusive amino modified silyl polymers (paragraph [0064])
Li further discloses that the organic polymer comprises a group represented by the general formula:
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21
97
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wherein R3 represents a hydrogen atom, an alkyl group having 1 to 20 carbon atoms, an aryl group having 6 to 20 atoms, or an aralkyl group having 7 to 20 carbon atoms (Claim 6). This group is an isocyanate group (paragraph [0045]).
Li does not explicitly disclose the components (C) and (D).
However, Fukatsu discloses a moisture curable adhesive (Title).
Fukatsu further discloses an organic polymer having hydrolyzable silyl groups and free isocyanate (NCO) that are further reacted with NCO-reactive silanes inclusive of N-aminoethylaminopropyltrimethoxysilane (i.e., the claimed component (D) of claims 1 and 11-12) and N-aminoethylaminopropylmethyldimethoxysilane (i.e., the claimed component (C) of claims 1 and 9-10) in order to introduce additional hydrolyzable silane groups (col. 6, line 54 to col. 7, line 37).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to add the NCO-reactive silanes of Fukatsu to the composition of Li. The motivation for doing so would have been that said NCO-reactive silanes meet the amino modified silyl polymers desired by Li. Further, said NCO-reactive silanes are capable of reacting with the isocyanate groups present in the organic polymer of Li to introduce additional hydrolyzable silane groups.
Therefore, it would have been obvious to combine Fukatsu with Li to obtain the invention as specified by the instant claims.
Regarding instant claim 2:
Li further discloses that the reactive silicon groups are represented by general formula (I) (Claim 1):
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629
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Regarding instant claim 3:
Li further discloses that the hydrolyzable group is inclusive of a halogen, an alkoxy group, an acyloxy group, a ketoximate group, an amino group, an amide group, an acid amide group, an aminooxy group, a mercapto group, and an isopropoxy group (paragraph [0032]).
Regarding instant claim 4:
Li further discloses that the alkoxy groups are inclusive of methoxy, ethoxy, propoxy, and isopropoxy groups (paragraph [0032]).
Regarding instant claim 5:
Li further discloses that the organic polymer comprises a main chain of polyoxypropylene (Claim 4).
Regarding instant claims 7-8:
Li further discloses that het composition comprises an additive inclusive of a filler, a dehydration agent, a plasticizer, a stabilizer, a catalyst, and combinations thereof (Claims 11-12).
Regarding instant claim 17:
Li further discloses a composition comprising a substrate and the curable composition (Claim 17).
Regarding instant claims 18-19:
Li further discloses that the substrate is selected from the group consisting of polyvinyl chloride (PVC), ethylene propylene diene rubber (EPDM), and thermoplastic polyolefin (TPO) (Claims 18-19).
Regarding instant claim 20:
Li further discloses that the substrate is a smooth-back substrate (Claim 19).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM/Examiner, Art Unit 1788 09/23/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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