DETAILED CORRESPONDENCE
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 .
Disposition of Claims
Claims 1, 3-6, 8-12, 15-21, 23 and 26-27 are pending in the application. Claims 2, 7, 13-14, 22 and 24-25 have been cancelled.
Amendments to claims 1, 15 and 26, filed on 2/10/2026, have been entered in the above-identified application.
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.
Claims 1, 3, 6, 8-12, 15-18, 21, 23 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Chartrel (WO 2012/090151 A2, see attachment) in view of Ando (US 2012/0207998 A1).
Regarding claim 1, Chartrel teaches a process for manufacturing a self-adhesive article (a self-sealing article as claimed) comprising at least a substrate and an adhesive layer, said process comprising the steps of a) conditioning an adhesive composition at a temperature of between 20 and 16°C; b) coating the adhesive composition b1) onto at least a part of the substrate or b2) onto a non-sticking support; submitting the article obtained (Abstract). Chartrel’s invention relates to self-adhesive articles having high coating weights and processes for bonding them (Abstract). The "adhesive composition" is a solvent-free cross-linkable Pressure-Sensitive Adhesive (PSA) (page 20, lines 36-37; also see page 18, lines 9-11). According to an embodiment, the adhesive composition comprises a silyl-terminated polyether (page, 22 lines 4-21). According to one embodiment, the coating of the adhesive composition is performed onto at least a part of both sides of the substrate (page 26, lines 8-11). If both sides of the substrate are coated, the adhesive composition may be the same or different onto both sides (page 26, lines 8-11).
According to one embodiment, the substrate is a grid or a mesh or a non-woven material (page 20, lines 6-7). In this case, the adhesive layer may be present onto one surface of the carrier, but can also penetrate inside the canier during its application because of the porous nature of the carrier so that the fibers of which the substrate is made are entirely coated by the adhesive composition (page 20, lines 7-10). Therefore, Chartrel teaches a porous layer at least partially impregnated with a polymeric material, as claimed.
However, it would also have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have at least partially impregnated the release coating into the porous layer in order to permit secure adhesion of a high weight of adhesive to substrates having grid, mesh and/or porous non-woven structures.
Chartrel further teaches that the articles can be used in many fields, such as medical, packaging, automobile or construction field (page 19, lines 13-14).
Chartrel does not explicitly disclose wherein the self-sealing article is water vapor permeable and an air and water barrier.
However, Ando teaches a liquid-applied moisture-permeable waterproofing material that can protect a building from rainwater or humidity in the air, can drain moisture, which has been gathered on a substrate of a building, and can be applied easily (Abstract). Ando’s invention is a curable composition comprising: (A) a polyoxyalkylene polymer having a silicon-containing group crosslinkable by forming a siloxane bond; (B) a polyoxyalkylene plasticizer (Abstract and [0084]). The examiner notes that applications of the curable compositions include a sealing material for construction, a sealing material for automobiles, a pressure sensitive adhesive, an adhesive, and liquid sealing materials and waterproofing materials, etc. used for automobile parts, electric parts, various machine parts, etc. ([0279]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided at least one of the adhesive compositions of Chartrel with moisture-permeable waterproofing properties in order to simultaneously provide for adhesion and sealing of materials used in construction and automobiles applications (see [0279] and [0267]-[0268] of Ando).
With regard to the claimed Modified Test 1 of ASTM D-1970/D-1970M-13 property, the examiner notes that the structure of Chartrel in view of Ando discussed above is the same as or is substantially similar to that disclosed by applicant. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01(I). Thus, it is the position of the Office that the composition of Chartrel in view of Ando would have the claimed properties as the same compounds necessarily have the same properties. In the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have expected that the claimed properties would be so provided, as the reference teaches similar materials as the claimed structure, and as the properties cannot be separated from the materials.
Regarding claim 3, Chartrel teaches that the invention also allows double application of adhesive or double coating on both sides (page 12, lines 35-36).
Regarding claim 6, Chartrel remains as applied above to claim 3.
Chartrel in view of Ando does not explicitly disclose wherein the tacky first and second pressure sensitive adhesives (on a given surface of the substrate) are different materials.
However, in an embodiment, Chartrel teaches that this (double application of adhesive or double coating on both sides) can be useful for two adhesive layers, one on each face, as the composition of the two adhesive layers can be identical or different (page 12, lines 35-37).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have similarly used identical or different adhesives for the layers of the double coating on a given side of the substrate in order to provide combinations of desirable properties on a given side.
Regarding claim 8, Chartrel teaches that, in a case wherein the coating is performed onto the substrate, the coating may be performed onto at least a part of the substrate, preferably onto at least 50% of the substrate, more preferably onto at least 75% of the substrate, still more preferably onto at least 95% of the substrate (page, 25, lines 1-4).
Regarding claims 9-11, Chartrel teaches a silyl-terminated polyether having the formula (1b) (page 22, lines 4-21). Chartrel also teaches that silylated functions can be grafted at the extremities of the polymer or at any part of the polymer chain (page 21, lines 8-16). Ando teaches that a reactive silicon group may be at either a main chain end or a side chain end of the polyoxyalkylene polymer molecular chain or both ([0098]).
Regarding claim 15, Chartrel teaches that, optionally, the adhesive composition according to the invention may also include, in combination with the silyl-containing polymer, thermoplastic polymers often used in the preparation of HMPSAs, such as ethylene vinyl acetate (EVA) or styrene block copolymers (pages 23-24, lines 36-2). In particular embodiments, the adhesive composition is an adhesive composition comprising: 20 to 85 % of a polyurethane or polyether comprising 2 hydrolyzable alkoxysilane type end groups; 15 to 80 % of a compatible tackifying resin; and 0.01 to 3 % of a cross-linking catalyst (page 6, lines 5-11). The resins are advantageously chosen from: (vii) acrylic resins having a viscosity at 100°C. of less than 100 Pa.s (page 22, line 26, and page 23, lines 6).
Regarding claims 12 and 16-18, Chartrel teaches tape made with specific carriers like open or closed cells foams, grids or composite or textile or extruded or laminated webs (page 19, lines 14-19). The substrate may be based on any kind of materials that can be used according to the need for making PSA articles, such as tape or label articles (page 19, lines 28-34). For example, polypropylene, polyethylene and paper are base stock material for such carrier, as well as any useful plastic or fibrous web that can be handled through such articles; fabric, metal fiber or glass fiber based materials can also be used for some applications (page 19, lines 28-34). According to one embodiment, the substrate is a carrier based on polyethylene terephthalate (PET) (page 19, lines 28-34). According to one embodiment, the carrier is a grid or a mesh or a non-woven material ([age 20, lines 6-7).
Regarding claim 21, the examiner further notes that claim 21 includes product-by-process limitations. Chartrel teaches that, according to an embodiment of the invention, the self-adhesive article comprises an adhesive layer onto at least a part of one or both sides of the substrate, said adhesive layer(s) being optionally covered with a release liner (page 26, lines 12-14). Preferably, the release liner is made of siliconized film or paper, for example said layer is based on cross-linked polydimethylsiloxane-based material (page 26, lines 14-16). The product being claimed appears to be the same as or obvious over the prior art product, in which case differences in process are not considered to impart patentability. Thus, the burden is shifted to Applicant to show that any differences in process would result in an unobvious difference between the claimed product and the prior art product.
Regarding claim 23, Chartrel teaches that the invention also allows double application of adhesive or double coating on both sides (page 12, lines 35-36).
Regarding claims 26-27, Chartrel in view of Ando remains similarly as applied above to claims 1 and 9-11. Chartrel further teaches that the invention also allows double application of adhesive or double coating on both sides (a polymeric material, and a tacky first pressure sensitive adhesive, as claimed) (page 12, lines 35-36).
Chartrel in view of Ando does not explicitly disclose wherein the polymeric material and the tacky first pressure sensitive adhesive (on a given surface of the substrate) are different materials.
However, in an embodiment, Chartrel teaches that this (double application of adhesive or double coating on both sides) can be useful for two adhesive layers, one on each face, as the composition of the two adhesive layers can be identical or different (page 12, lines 35-37).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have similarly used identical or different adhesives for the layers of the double coating on a given side of the substrate in order to provide combinations of desirable properties on a given side.
Claims 1, 3-6, 8-12, 15-18, 21, 23 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Chartrel (WO 2012/090151 A2, see attachment) in view of Couturier (US 2011/0274865 A1).
Regarding claim 1, Chartrel teaches a process for manufacturing a self-adhesive article (a self-sealing article as claimed) comprising at least a substrate and an adhesive layer, said process comprising the steps of a) conditioning an adhesive composition at a temperature of between 20 and 16°C; b) coating the adhesive composition b1) onto at least a part of the substrate or b2) onto a non-sticking support; submitting the article obtained (Abstract). Chartrel’s invention relates to self-adhesive articles having high coating weights and processes for bonding them (Abstract). The "adhesive composition" is a solvent-free cross-linkable Pressure-Sensitive Adhesive (PSA) (page 20, lines 36-37; also see page 18, lines 9-11). According to an embodiment, the adhesive composition comprises a silyl-terminated polyether (page, 22 lines 4-21). According to one embodiment, the coating of the adhesive composition is performed onto at least a part of both sides of the substrate (page 26, lines 8-11). If both sides of the substrate are coated, the adhesive composition may be the same or different onto both sides (page 26, lines 8-11).
According to one embodiment, the substrate is a grid or a mesh or a non-woven material (page 20, lines 6-7). In this case, the adhesive layer may be present onto one surface of the carrier, but can also penetrate inside the canier during its application because of the porous nature of the carrier so that the fibers of which the substrate is made are entirely coated by the adhesive composition (page 20, lines 7-10). Therefore, Chartrel teaches a porous layer at least partially impregnated with a polymeric material, as claimed.
However, it would also have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have at least partially impregnated the release coating into the porous layer in order to permit secure adhesion of a high weight of adhesive to substrates having grid, mesh and/or porous non-woven structures.
Chartrel further teaches that the articles can be used in many fields, such as medical, packaging, automobile or construction field (page 19, lines 13-14).
Chartrel does not explicitly disclose wherein the self-sealing article is water vapor permeable and an air and water barrier.
However, Couturier teaches a self-adhered, vapor permeable, air barrier membrane that is easy to install (Abstract). The fabric sheets utilized provide both water and air resistance barriers as defined by AC 38 (ICC-ES) and ASTM E 2179 ([0012]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the substrates and/or the articles of Chartrel with vapor permeability and water and air resistance in order to obtain house wraps that are effective in protecting a building enclosure from wind driven rain, and because Couturier teaches that is a straightforward matter to select or fabricate a spun-bond, non-woven polyolefin fabric sheet that meets the criteria for air and water resistance as well as vapor permeability (see Abstract, [0003] and [0012]).
With regard to the claimed Modified Test 1 of ASTM D-1970/D-1970M-13 property, the examiner notes that the structure of Chartrel in view of Couturier discussed above is the same as or is substantially similar to that disclosed by applicant. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01(I). Thus, it is the position of the Office that the composition of Chartrel in view of Couturier would have the claimed properties as the same compounds necessarily have the same properties. In the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have expected that the claimed properties would be so provided, as the reference teaches similar materials as the claimed structure, and as the properties cannot be separated from the materials.
Regarding claim 3, Chartrel teaches that the invention also allows double application of adhesive or double coating on both sides (page 12, lines 35-36).
Regarding claims 4-5, Couturier teaches wherein partial coatings of adhesive may be applied in a random fashion or in a specific pattern ([0013]).
Regarding claim 6, Chartrel remains as applied above to claim 3.
Chartrel does not explicitly disclose wherein the tacky first and second pressure sensitive adhesives (on a given surface of the substrate) are different pressure sensitive adhesives.
However, in an embodiment, Chartrel teaches that this (double application of adhesive or double coating on both sides) can be useful for two adhesive layers, one on each face, as the composition of the two adhesive layers can be identical or different.
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have similarly used identical or different adhesives for the layers of the double coating on a given side of the substrate in order to provide combinations of desirable properties on a given side.
Regarding claim 8, Chartrel teaches that, in a case wherein the coating is performed onto the substrate, the coating may be performed onto at least a part of the substrate, preferably onto at least 50% of the substrate, more preferably onto at least 75% of the substrate, still more preferably onto at least 95% of the substrate (page, 25, lines 1-4).
Regarding claims 9-11, Chartrel teaches a silyl-terminated polyether having the formula (1b) (page 22, lines 4-21). Chartrel also teaches that silylated functions can be grafted at the extremities of the polymer or at any part of the polymer chain (page 21, lines 8-16).
Regarding claim 15, Chartrel teaches that, optionally, the adhesive composition according to the invention may also include, in combination with the silyl-containing polymer, thermoplastic polymers often used in the preparation of HMPSAs, such as ethylene vinyl acetate (EVA) or styrene block copolymers (pages 23-24, lines 36-2). In particular embodiments, the adhesive composition is an adhesive composition comprising: 20 to 85 % of a polyurethane or polyether comprising 2 hydrolyzable alkoxysilane type end groups; 15 to 80 % of a compatible tackifying resin; and 0.01 to 3 % of a cross-linking catalyst (page 6, lines 5-11). The resins are advantageously chosen from: (vii) acrylic resins having a viscosity at 100°C. of less than 100 Pa.s (page 22, line 26, and page 23, lines 6).
Regarding claims 12 and 16-18, Chartrel teaches tape made with specific carriers like open or closed cells foams, grids or composite or textile or extruded or laminated webs (page 19, lines 14-19). The substrate may be based on any kind of materials that can be used according to the need for making PSA articles, such as tape or label articles (page 19, lines 28-34). For example, polypropylene, polyethylene and paper are base stock material for such carrier, as well as any useful plastic or fibrous web that can be handled through such articles; fabric, metal fiber or glass fiber based materials can also be used for some applications (page 19, lines 28-34). According to one embodiment, the substrate is a carrier based on polyethylene terephthalate (PET) (page 19, lines 28-34). According to one embodiment, the carrier is a grid or a mesh or a non-woven material ([age 20, lines 6-7).
Regarding claim 21, the examiner further notes that claim 21 includes product-by-process limitations. Chartrel teaches that, according to an embodiment of the invention, the self-adhesive article comprises an adhesive layer onto at least a part of one or both sides of the substrate, said adhesive layer(s) being optionally covered with a release liner (page 26, lines 12-14). Preferably, the release liner is made of siliconized film or paper, for example said layer is based on cross-linked polydimethylsiloxane-based material (page 26, lines 14-16). The product being claimed appears to be the same as or obvious over the prior art product, in which case differences in process are not considered to impart patentability. Thus, the burden is shifted to Applicant to show that any differences in process would result in an unobvious difference between the claimed product and the prior art product.
Regarding claim 23, Chartrel teaches that the invention also allows double application of adhesive or double coating on both sides (page 12, lines 35-36).
Regarding claims 26-27, Chartrel in view of Couturier remains similarly as applied above to claims 1 and 9-11. Chartrel further teaches that the invention also allows double application of adhesive or double coating on both sides (a polymeric material, and a tacky first pressure sensitive adhesive, as claimed) (page 12, lines 35-36).
Chartrel in view of Couturier does not explicitly disclose wherein the polymeric material and the tacky first pressure sensitive adhesive (on a given surface of the substrate) are different materials.
However, in an embodiment, Chartrel teaches that this (double application of adhesive or double coating on both sides) can be useful for two adhesive layers, one on each face, as the composition of the two adhesive layers can be identical or different (page 12, lines 35-37).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have similarly used identical or different adhesives for the layers of the double coating on a given side of the substrate in order to provide combinations of desirable properties on a given side.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chartrel (WO 2012/090151 A2, see attachment) in view of Couturier (US 2011/0274865 A1), as applied to claim 1 above, further in view of Weston (US PGPUB 2009/0158683).
Regarding claim 19, Chartrel in view of Couturier remains as applied above to claim 1.
Chartrel in view of Couturier does not explicitly disclose wherein the porous layer comprises a woven material.
However, Weston teaches a multiple sheet building wrap for wrapping the structural components of a building in order to protect the underlying structural components and optional building sheathing from moisture (Abstract). Suitable moisture vapor permeable WRBs (also commonly referred to as “weather-resistive barrier” or “house wrap”) for use as the WRB layer of the multiple sheet building wrap include porous sheets, which include woven fabrics, such as sheets of woven fibers or tapes, or nonwoven fabrics, such as flash-spun plexifilamentary sheets, spunbond nonwoven sheets, spunbond-meltblown nonwoven sheets, spunbond-meltblown-spunbond (SMS) nonwoven sheets, asphalt-saturated papers, felts and laminates of any of the above including laminates of nonwoven or woven fabrics or scrims and a moisture vapor permeable film such as microporous film, microperforated film or nonporous breathable film ([0024]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have included a woven fabric in the substrate of Chartrel in view of Couturier in order to further adjust and balance various properties of a water-resistive barrier substrate, wherein the barriers can resist water that has penetrated behind an exterior covering, preventing the water from further intruding into an exterior wall assembly, as suggested by Weston (see Abstract, [0004] and [0024]).
Regarding claim 20, Weston teaches spunbond-meltblown nonwoven sheets ([0024]). The examiner notes that meltblown fibers would comprise microfibers. In the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have expected that meltblown fibers would have diameters in the microfiber range. In an embodiment, Weston also teaches sheets having fibers of less than 25 micrometers (see [0018] and [0024]).
Response to Arguments
Applicant's arguments filed 2/10/2026 have been fully considered but they are not persuasive.
Applicant contends that the following: “The Examples in the Application as filed suggest that not all compositions disclosed in Chartrel et al. in view of Ando would inherently pass Modified Test I of ASTM D-1970/D-1970M-13. See, for example, the Comparative Examples. In particular, when just three parts by weight of liquid tackifying resin is added to Comparative Example 2, the article failed to pass Modified Test I of ASTM D-1970/D-1970M-13. The Examples of Chartrel et al. have at least 45% tackifying resin. For at least these reasons, claim 1 and its dependent claims are patentable over Chartrel et al. in view of Ando.”
Regarding this contention, applicant discloses that ingredients useful in the presently disclosed polymeric materials include various additives such as tackifiers, and does not place any limitations on the appropriate weight percentage range for the content of the tackifiers in the polymeric material (page 9, lines 17-27). Although applicant points to Comparative Example 2 as a single example showing that an article made with a polymeric material of a specific composition comprising a specific tackifying resin fails to pass Modified Test I of ASTM D-1970/D-1970M-13, it is unclear how the tackifying resin of Chartrel compares to that in Comparative Example 2. In addition, the composition of Comparative Example 2 includes a variety of additional materials not included in the compositions of Chartrel. There is also no showing in applicant’s examples that including tackifiers in the amounts taught by Chartrel (e.g., amounts within or across a particular weight percentage range) results in articles that fail Modified Test I of ASTM D-1970/D-1970M-13. Therefore, it is unclear how the composition of Comparative Example 2 demonstrates that the compositions taught by Chartrel would result in articles that do not pass Modified Test I of ASTM D-1970/D-1970M-13.
Applicant contends that in view of claim 15, Chartrel et al. in view of Ando fails to teach or suggest at least the limitation, "wherein the tacky first pressure sensitive adhesive comprises rubber-modified bitumen, an acrylic homopolymer or copolymer, a methacrylic homopolymer or copolymer, butyl rubber, styrene-butadiene-styrene, styrene-isoprene-styrene, styrene butadiene, styrene-ethylene-butadiene-styrene, or ethylene/vinylacetate."
Regarding this contention, as applied above, Chartrel teaches that optionally, the adhesive composition according to the invention may also include, in combination with the silyl-containing polymer, thermoplastic polymers often used in the preparation of HMPSAs, such as ethylene vinyl acetate (EVA) or styrene block copolymers (pages 23-24, lines 36-2). In particular embodiments, the adhesive composition is an adhesive composition comprising: 20 to 85 % of a polyurethane or polyether comprising 2 hydrolyzable alkoxysilane type end groups; 15 to 80 % of a compatible tackifying resin; and 0.01 to 3 % of a cross-linking catalyst (page 6, lines 5-11). The resins are advantageously chosen from: (vii) acrylic resins having a viscosity at 100°C. of less than 100 Pa.s (page 22, line 26, and page 23, lines 6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Worrell whose telephone number is (571)270-7728. The examiner can normally be reached on Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789