DETAILED ACTION
Pending Claims
Claims 1-18 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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
Claims 1-18 are objected to because of the following informalities:
Regarding claims 1-18, for improved clarity, the following quantity limitations referencing (A’) in claim 1 should be recited after component (A’) is introduced in the claim:
with respect to component (A): “the total amount of components (A) and (A’) being 100 parts by weight”;
with respect to component (B): “in an amount of 1 to 30 parts by weight per 100 parts by weight of components (A) and (A’) combined”; and
with respect to component (C): “in an amount of 0.01 to 5 parts by weight per 100 parts by weight of components (A) and (A’) combined”.
Claims 2-18 are objected to because they are dependent from claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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.
Claims 2 and 7-9 are 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.
Regarding claim 2, the claim introduces: (D) a cure accelerator in the form of a primary amino group-containing organic compound, each of the first and second packs containing 0 to 5 parts by weight of the primary amino group-containing organic compound per 100 parts by weight of components (A) and (A') combined. The claim then states: at least one of the first and second packs containing 0.1 part by weight or more of the organic compound. This open-ended range extends beyond the maximum amount allowed by the first limitation. Accordingly, it is unclear which limitation controls the scope of the claim. For the purpose of the prior art search, this has been interpreted as:
(2) further comprising (D) a cure accelerator in the form of a primary amino group-containing organic compound, each of the first and second packs containing 0 to 5 parts by weight of the primary amino group-containing organic compound per 100 parts by weight of components (A) and (A’) combined, and the total amount of component (D) in the composition is 0.1 to 10 parts by weight per 100 parts by weight of components (A) and (A’) combined
Regarding claims 7 and 8, claim 7 introduces: (E) an inorganic filler, each of the first and second packs containing 0 to 1,000 parts by weight of the inorganic filler per 100 parts by weight of components (A) and (A’) combined. The claim then states: at least one of the first and second packs containing 0.1 part by weight or more of the inorganic filler. This open-ended range extends beyond the maximum amount allowed by the first limitation. Accordingly, it is unclear which limitation controls the scope of the claim. Claim 8 is rejected because it is dependent from claim 7. For the purpose of the prior art search, this has been interpreted as:
(7) further comprising (E) an inorganic filler, each of the first and second packs containing 0 to 1,000 parts by weight of the inorganic filler per 100 parts by weight of components (A) and (A’) combined, and the total amount of component (E) is the composition is 0.1 to 2,000 parts by weight per 100 parts by weight of components (A) and (A’) combined
Regarding claim 9, the claim introduces: (F) an adhesion promoter, each of the first and second packs containing 0 to 5 parts by weight of the adhesion promoter per 100 parts by weight of components (A) and (A’) combined. The claim then states: at least one of the first and second packs containing 0.1 part by weight or more of the adhesion promoter. This open-ended range extends beyond the maximum amount allowed by the first limitation. Accordingly, it is unclear which limitation controls the scope of the claim. For the purpose of the prior art search, this has been interpreted as:
(9) further comprising (F) an adhesion promoter, each of the first and second packs containing 0 to 5 parts by weight of the adhesion promoter per 100 parts by weight of components (A) and (A’) combined, and the total amount of component (F) in the composition is 0.1 to 10 parts by weight per 100 parts by weight of components (A) and (A’) combined
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/724,243 (US 2025/0059375 A1) in view of Kimura et al. (US 2012/0010349 A1).
Regarding claims 1 and 3-18, with the exception to instantly claimed two-pack configuration:
Copending claims 1-19 obviously satisfy all the material limitations of claims (1 & 10);
Copending claims 2-3 obviously satisfy all the material limitations of claim (3).
Copending claim 3 obviously satisfies all the material limitations of claim (4).
Copending claim 4 obviously satisfies all the material limitations of claim (5).
Copending claim 7 obviously satisfies all the material limitations of claim (6).
Copending claims 9-10 obviously satisfy all the material limitations of claim (7).
Copending claim 10 obviously satisfies all the material limitations of claim (8).
Copending claim 8 obviously satisfies all the material limitations of claim (9).
Copending claims 11-12 obviously satisfy all the material limitations of claim (11).
Copending claim 13 obviously satisfies all the material limitations of claim (12).
Copending claim 14 obviously satisfies all the material limitations of claim (13).
Copending claim 15 obviously satisfies all the material limitations of claim (14).
Copending claim 16 obviously satisfies all the material limitations of claim (15).
Copending claim 17 obviously satisfies all the material limitations of claim (16).
Copending claim 18 obviously satisfies all the material limitations of claim (17).
Copending claim 19 obviously satisfies all the material limitations of claim (18).
Kimura et al. disclose a similar composition where components (A) and (A’) have a siloxane backbone (see Abstract; paragraphs 0010-0014). They preferably formulate their composition as a two-pack formulation, which corresponds to the two-pack configuration of the instantly claimed invention (see paragraphs 0015-0025 & 0080). This configuration allows for fast-curing.
Therefore, it would have been obvious to one of ordinary skill in the art to formulate copending composition with the instantly claimed two-pack configuration because: (a) Kimura et al. disclose a similar composition where components (A) and (A’) have a siloxane backbone; (b) Kimura et al. preferably formulate their composition as a two-pack formulation, which corresponds to the two-pack configuration of the instantly claimed invention; and (c) this configuration allows for fast-curing.
Regarding claim 2, Kimura et al. further demonstrate that the instantly claimed accelerator is recognized in the art as a suitable additive for this type curable composition (see paragraphs 0053-0054). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Allowable Subject Matter
Aside from the double patenting rejection and the objection, claim 1 would be allowable.
Aside from the double patenting rejection and the objection, claims 3-6 and 10-18 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Aside from the double patenting rejection and the objection, claims 2 and 7-9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The claimed invention is drawn to a two-pack room temperature fast-curing resin composition comprising a first pack containing (A), (B), and (C), and a second pack containing (A’):
(A) 10 to 90 parts by weight of an organic polymer which is capped at a molecular chain end with a hydrolyzable silyl group and/or hydroxysilyl group and whose backbone is free of an organopolysiloxane structure, the total amount of components (A) and (A’) being 100 parts by weight;
(A’) 10 to 90 parts by weight of an organic polymer which is capped at a molecular chain end with a hydrolyzable silyl group and/or hydroxysilyl group and whose backbone is free of an organopolysiloxane structure, the total amount of components (A) and (A') being 100 parts by weight;
(B) a hydrolyzable organosilane compound having the general formula (1):
PNG
media_image1.png
124
358
media_image1.png
Greyscale
;
in an amount of 1 to 30 parts by weight per 100 parts by weight of components (A) and (A’) combined; and
(C) a curing catalyst in an amount of 0.01 to 5 parts by weight per 100 parts by weight of components (A) and (A’) combined.
Gubbels et al. (US 2016/0340548 A1) disclose a composition (see paragraphs 0006-0013) containing: a polymer (A), corresponding to (A) and (A’) (see paragraphs 0026-0030); a crosslinking agent (B), related to (B) (see paragraph 0036); and a silane-type catalyst (D), corresponding to (C) (see paragraphs 0011 & 0042-0047). Their crosslinking agent includes alkenyloxysilanes, such as methyltris(isopropenoxy)silane and vinyltris(isopropenoxy)silane (see paragraph 0036). In light of this, the teachings of Kimura et al. (US Pat. No. 5,939,487) demonstrate that the alkenyloxysilanes of Gubbels et al. (see Abstract; column 3, lines 11-18 & 49-55) and the instantly claimed hydrolyzable organosilane (see Abstract; column 3, lines 19-27 & 56-58) are recognized in the art as equally suitable crosslinking agents for this type of curable composition.
Gubbels et al. disclose a two-part configuration for their composition where the co-reactive parts (A), corresponding to (A) and (A’), and (B), corresponding to (B), are kept in separate parts (see paragraph 0013). This is done to prevent these materials from reacting until the time of use. Kimura et al. (US 2012/0010349 A1) disclose a similar composition where components (A) and (A’) have a siloxane backbone (see Abstract; paragraphs 0010-0014). They preferably formulate their composition as a two-pack formulation, which corresponds to the two-pack configuration of the instantly claimed invention (see paragraphs 0015-0025). This configuration combines the co-reactive materials in a single part and allows for fast-curing. This fast-cure mechanism of the configuration taught by Kimura et al. is divergent from delayed-cure mechanism of the configuration taught by Gubbels et al. Accordingly, there is a lack of motivation to:
(1) replace crosslinking agent of Gubbels et al. with the crosslinking agent of Kimura et al. (US Pat. No. 5,939,487) AND
(2) replace the delayed-cure configuration of Gubbels et al. with the fast-cure configuration of Kimura et al. (US 2012/0010349 A1).
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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, Randy Gulakowski can be reached at (571)272-1302. 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.
/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
September 30, 2026
Prosecution Insights