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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 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.
Claim 1 recites y-x for the hydroxyl (-OH) groups in polymer A. This implies “x” is the number of hydroxyl groups reacted and y the number unreacted. The reacted hydroxyl groups created the terminal silanes as shown in the structure. The bracketed group on the right of each structure has subscript “x.” As above, this is the number of reacted hydroxyl groups. However, since an unbracketed terminal group is shown on the left of the structure, the current structure implies the number of silane groups will always be x+1. This does not make sense. The total number of silane groups is determined by the number of hydroxyl groups that react in the polymer and cannot possibly be more than those reaction based on the described chemistry. Thus, because one terminal group is unbracket, in order for the number of terminal groups to equal x, i.e. the reacted hydroxyl groups forming the terminal groups, the subscript outside the bracket cannot be x, but must be x-1. This accounts for the unbracket terminal group and ensures the total number of terminal groups equals x as it must. Examiner has interpreted the claim such that there are a total of x silane terminal groups.
Claim 1 also state the “polymer backbone contains multiple diol monomer units…” This make it appear as if the -OH groups remain. This is interpreted to mean the backbone is derived from such multiple diol monomer units and the language should be corrected to reflect this.
The remain claims are rejected as being dependent on an indefinite claim.
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.
Claim(s) 1-14 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rutz et al. (US 2012/0298299).
Regarding Claims 1, 3, 7 and 11, Rutz et al. teaches a silane-terminated polymer as claimed based on a polyester polymer backbone A in structure II (See pages 2, paragraph [0051], page 3, paragraph [0053] and page 4, paragraph [0085], teaching a hydroxyl-terminated polyester P, derivable from diol monomers having a HO-Z-OH formula with a cyclic ring system, such as 1,4-cyclohexane dimethanol, thus making at least 75% from such a preferred reactant obvious) is reacted with excess polyisocyanate to give an NCO-terminated polyurethane (See page 4, paragraphs [0075]-[0078]), which is then reacted with an aminosilane (See page 3, paragraph [0068]) such as 3-aminopropyltrimethoxysilane (See page 4, paragraph [0068]) to give the claimed silane-terminated polyester polymer of structure II with no leaving group byproducts, wherein E is NH (primary amine of 3-aminopropyltrimethoxysilane contributes NH), G is propylene (3 carbon linker of 3-aminopropyltrimethoxysilane), F is the diisocyanate derived organic radical containing no isocyanate reactive groups (See page 4, paragraph [0075], indicating excess isocyanate and thus no isocyanate reactive groups remaining), wherein R1' is methyl since there are three methoxy groups thus making n 3 (i.e. trimethoxysilyl), and R2' is absent as 3-n=0. The curing catalyst includes aminosilanes with pKa well below 15 (See page 7, paragraph [0126], and note the aminosilanes taught used in excess serve this role, or this is at least obvious, thus suggesting the aminoalkoxysilanes on page 4, paragraph [0073] are suitable as catalyst as in Claim 3) and the composition is used to bond two substrates including wood (See page 8, paragraph [0138]). Note the polyester polyol reacting with isocyanate to get urethane terminated polyesters that react with aminosilanes to get a silane terminated polymer is the exact mechanism used in the instant specification for structure (note Rutz et al. also teaches direct silane bonding to polyester polyol via urethanization to get structure I as noted below in rejection of Claim 10).
Regarding Claim 2, Rutz et al. teaches phthalates as optional thus making it obvious to omit them (See page7, paragraph [0127]).
Regarding Claim 4, this claim only requires one catalyst not be metal, such as aminosilane as above.
Regarding Claims 5, 6, 8 and 9, Rutz et al. teaches a number of diols have side chains such as neopentyl glycol, an alkylene group with methyl side chains (See page 2, paragraph [0052]).
Regarding Claim 10, Rutz et al. teaches direct isocyanate silane reaction with hydroxyl terminated polyesters (See page 4, paragraph [0059] and page 5, paragraphs [0097]-[0098]), which provide structure (I) as claimed, and further teach 3-isocyanatoproyltriethoxysilane in explicitly teaching ethoxy analogs of 3-isocyanatoproyltrimethoxysilane (See page 3, paragraph [0062]), thus giving the third structure as in Claim 10. Rutz et al. teach neopentyl glycol and adipic acid (See page 2, paragraph [0052]).
Regarding Claim 12, Rutz et al. teaches mixture of polyester and polycarbonate are suitable (See page 4, paragraph [0079]).
Regarding Claims 13, Rutz et al. teaches the polymer is up to 80% by weight of the composition (See page 6, paragraph [0104]).
Regarding Claim 14, Rutz et al. teach pigment (See page 7, paragraph [0027]).
Regarding Claim 17, Rutz et al. teach bonding between two wood substrates by applying the composition between them and curing (See page 7, paragraphs [0133] and page 8, paragraph [0138]). Examiner submits this interlayer is a join seal between the wood.
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rutz et al. as applied to Claim 1, and further in view of Hashiguchi (US 5,593,530).
Rutz et al. teaches the method of Claim 1 as described above. Rutz et al. teach bonding between two wood substrates by applying the composition between them and curing (See page 7, paragraphs [0133] and page 8, paragraph [0138]). Further, the wood is not limited and thus the composition would have been expected to have been suitable on any wood known to be bonded via adhesive, such oily wood and hardwood (See, for example, Hashiguchi, col. 8, lines 32-38, teaching yellow hardwood and teak, an oily wood, being known as bondable via adhesive). Thus, it would have been obvious to a person having ordinary skill in the art a the time of invention to bond known bondable woods, such as oily wood such as teak and hardwoods. Bonding of wood is not restricted and such woods are known to be bondable via adhesive and thus the composition of Rutz et al. is predictably suitable for such bonding.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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