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 15-16, filed on 6/25/2026, 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 carrier 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.
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 references teach 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 claims 12 and 17-18, 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 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 claim 16, as applied above, Chartrel teaches that 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). Chartrel does not explicitly disclose that the adhesive composition (the polymeric material) on the first major surface of the substrate (the porous layer) does not contain a tackifier. However, Chartrel teaches that, as regards the tackifying resins which can be contained in the composition, by the term "compatible tackifying resin" is meant a tackifying resin which, when mixed in the proportions 50%/50% with the polymer of Formula (I), gives a substantially homogenous mixture (page 17, lines 1-4). 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 or not included tackifying resins in the adhesive compositions of Chartrel because Chartrel teaches that the tackifying resins can be contained in the composition, which implies that they may also not be included in the composition.
In the alternative, Chartrel teaches that, according to one embodiment, one side of the substrate sticks to the adhesive layer (front side) (a tacky first pressure sensitive adhesive as claimed) and the other side is further covered with a non-sticking layer, for example a layer made in a siliconized material (back side) (a polymeric material as claimed) (page 19, lines 35-37). Chartrel does not explicitly disclose that the silicone impregnates the substrate (the porous material). However, Chartrel more specifically teaches that one possibility consists of coating the other face with for example a silicone emulsion (page 13, lines 2-3). 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 coating a silicone emulsion onto grid, mesh and/or porous non-woven substrates would result in at least partial impregnation of the silicone emulsion into such substrates, and it would further have been obvious to do so in order to ensure that the back of the substrate is fully covered with the non-stick layer.
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 carrier 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.
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 claims 12 and 17-18, 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 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 claim 16, as applied above, Chartrel teaches that 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). Chartrel does not explicitly disclose that the adhesive composition (the polymeric material) on the first major surface of the substrate (the porous layer) does not contain a tackifier. However, Chartrel teaches that, as regards the tackifying resins which can be contained in the composition, by the term "compatible tackifying resin" is meant a tackifying resin which, when mixed in the proportions 50%/50% with the polymer of Formula (I), gives a substantially homogenous mixture (page 17, lines 1-4). 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 or not included tackifying resins in the adhesive compositions of Chartrel because Chartrel teaches that the tackifying resins can be contained in the composition, which implies that they may also not be included in the composition.
In the alternative, Chartrel teaches that, according to one embodiment, one side of the substrate sticks to the adhesive layer (front side) (a tacky first pressure sensitive adhesive as claimed) and the other side is further covered with a non-sticking layer, for example a layer made in a siliconized material (back side) (a polymeric material as claimed) (page 19, lines 35-37). Chartrel does not explicitly disclose that the silicone impregnates the substrate (the porous material). However, Chartrel more specifically teaches that one possibility consists of coating the other face with for example a silicone emulsion (page 13, lines 2-3). 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 coating a silicone emulsion onto grid, mesh and/or porous non-woven substrates would result in at least partial impregnation of the silicone emulsion into such substrates, and it would further have been obvious to do so in order to ensure that the back of the substrate is fully covered with the non-stick layer.
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 6/25/2026 have been fully considered but they are not persuasive.
Applicant contends that the following: ‘The inherency rationale is improper because Applicant's specification demonstrates that not all silyl-terminated polyether compositions inherently possess the nail sealability property required by claims 1 and 26. Comparative Example 2 included 3 pbw of a liquid tacky resin, STAYBELITE ESTER 3-E ESTER of HYDROGENATED ROSIN, while Comparative Example 3 was prepared without AEROSIL R202, OMYACARB 5-FL, or TIONA 696 (i.e., without fillers). As shown in Table 2, both CE 2 and CE 3 received ratings of "C" on both the Top Side and Bottom Side for the nail sealability test (Test 1). Samples were considered to have passed the test only if a rating of "A" or "B" was achieved. Thus, CE 2 and CE 3 failed the Modified Test 1 of ASTM D-1970/D-1970M-13.’
Regarding this contention, Applicant's specification discloses that ingredients useful in the polymeric material include tackifiers, pigments and fillers (among other additives), each in an adequate amount (page 9, lines 17-23, or [0057]). As claimed in claim 1, the polymeric material may or may not comprise tackifiers and/or fillers. Although CE 2 shows that a particular composition comprising 3.9 wt % of a liquid tack resin did not pass the nail sealability test of Modified Test I of ASTM D-1970/D-1970M-13, this single example does not demonstrate what other amounts of tackifying resin would or would not result in the test being passed. It is also unclear from applicant's single example what effect increasing or decreasing the amount of tackifier would have (or tend to have) on the nail sealability properties. Chartrel does not place any limitation on the amount of tackifying resin (cols. 20-21). Chartrel teaches, in particular embodiments, an adhesive composition comprising 15 to 80 % of a compatible tackifying resin (col. 6, lines). As there is no showing in applicant’s examples that including tackifiers in the amounts taught by Chartrel results in articles that would fail Modified Test I of ASTM D-1970/D-1970M-13, it is unclear how CE 2, as a single example, demonstrates that articles comprising the compositions taught by Chartrel in view of Ando (or Couturier) would not pass Modified Test I of ASTM D-1970/D-1970M-13. In addition, applicant’s specification discloses, with respect to the list of disclosed additives that includes fillers, that additives may be added singly to the curable composition or two or more thereof may be added in combination to the curable composition (page 9, lines 17-23, or [0057]). Applicant’s disclosure suggests that the addition of fillers is optional. Further, Chartrel teaches that the adhesive composition may include pigments, dyes or fillers (page 24, lines 10-14). Therefore, it is unclear how applicant’s CE 3 demonstrates that articles comprising the compositions taught by Chartrel in view of Ando (or Couturier) would not pass Modified Test I of ASTM D-1970/D-1970M-13.
Applicant contends the following: ‘The Examiner cannot simultaneously maintain that the structure of Chartrel et al. in view of Ando is "the same as or is substantially similar to" the Applicant's disclosed structure for purposes of asserting inherency, while at the same time dismissing the Applicant's Comparative Examples as not being similar enough to the prior art to be probative…. Furthermore, the Response to Arguments states, "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)" (Office Action paragraph 63). This observation does not address the issue presented here, namely, whether the specific prior art combination relied upon in the rejection necessarily yields an article that passes Modified Test 1 of ASTM D-1970/D-1970M-13.’
Regarding these contentions, as discussed above, Applicant's specification discloses that ingredients useful in the polymeric material include tackifiers and fillers (among other additives), each in an adequate amount (page 9, lines 17-23, or [0057]). Although CE 2 shows a result for a composition that comprises 3.9 wt% of a tackifier and does not pass Modified Test 1 of ASTM D-1970/D-1970M-13, this single example does not demonstrate what other amounts of tackifying resin would or would not result in the test being passed, or what effect increasing or decreasing the amount of tackifier would have (or tend to have) on the nail sealability properties. Chartrel does not place any limitation on the amount of tackifying resin and, in particular embodiments, teaches an adhesive composition comprising 15 to 80 % of a compatible tackifying resin (col. 6, lines). In addition, although CE 3 shows a result for a composition that does not comprise fillers and does not pass Modified Test 1 of ASTM D-1970/D-1970M-13, applicant’s specification suggests that fillers may or may not be included in the polymeric material (page 9, lines 17-23, or [0057]), and Chartrel teaches that the adhesive compositions may include pigments, dyes and fillers (page 24, lines 10-14). Therefore, it is unclear how CE 2 and CE 3 demonstrate that articles comprising the compositions taught by Chartrel in view of Ando (or Couturier) would not pass Modified Test I of ASTM D-1970/D-1970M-13.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
Prosecution Insights