,DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/5/2025 has been entered.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 7/29/2021 are accepted.
Claim Rejections - 35 USC § 103
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.
Claim(s) 14, 15, and 24 -26 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018/054791 (herein referred to as “Culot”) in view of (a) Walker et al (US 3,645,817), and (b) Marzouki et al (US 4,411,115).
Culot (fig.1; [0061]) discloses: an insulating glass unit comprising :
- a first pane of glass (12),
- a second pane of glass (14),
- a spacer (10) positioned between an inner surface of the first pane of glass and an inner surface of the second pane of glass having a substantially rectangular cross-section, and
- a sealant system for adhering the inner surfaces of the glass panes to the spacer, which comprises a primary sealant (16, 18) located in the side regions of the spacer and a secondary sealant (20) located in the outer region of the spacer,
wherein the primary sealant (16, 18) is composed of a transparent hot-melt single component sealant composition comprising polyisobutylene (see [0061]: "The frame was used to provide a spacer secured to peripheral portions of two glass panes (12) and (14) by means of continuous deposits (16, 18) of a transparent primary sealant material e.g. a polyisobutylene based adhesive composition").
Culot teaches the sealant may comprise polyisobutylene, but differs from the claimed invention in that the content of polyisobutylene is not taught to be 95 % to 99 %, based on the total weight of the composition. However, Walker teaches a polyisobutylene composition (abstract) may comprise a compatible resin such as ethylene vinyl acetate (abstract) in amounts of 5-25pbw (col 2, lines 16+). Said resin confers strength and is effective for preventing cold flow of the polyisobutylene resin (col 2, lines 16+). Thus, it would have been obvious to one of ordinary skill in the art to utilize 5-25pbw of ethylene vinyl acetate relative to the 100pbw of the polyisobutylene sealant composition disclosed in Culot. The motivation for doing so would have been that Walker teaches said resin will confer strength and prevent cold flow of the polyisobutylene resin.
Culot in view of Walker fail to teach the sealant composition should have a MVTR less than 0.1g/m2. However, Marzouki teaches a sealant composition useful for windows (col 2, lines 22+) was has a moisture vapor transmission rate of less than 0.1g/m2 (col 2, lines 22+) . Thus, it would have been obvious to one of ordinary skill in the art at t time the invention was made to make the sealant composition have a MVTR less than 0.1g/m2. The motivation for doing so would have been that Marzouki teaches such WVTR are desirable for window sealant compositions. Alternatively, the examiner takes the position the sealant composition of Walker is compositionally identical to the claimed sealant and must therefore have the same physical properties (MPEP2112) because the courts have held the chemical composition and its properties are inseparable.
Furthermore, Culot in view of Walker fail to teach the sealant composition should have a softening point between 100-150C. However, Marzouki teaches a sealant composition useful for windows (col 2, lines 22+) and teaches the sealant composition should be shape retaining and non-tacky at temperatures below 60.degree. C. and capable of softening to bond-forming condition when heated to temperatures above 140.degree. C (col 89, lines 22+). Specifically, Marzouki teaches the sealant may have a softening point above 100C (col 9, lines 20+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the sealant composition the softening point of the composition between100-140C. The motivation for doing so would have been that Marzouki teaches such softening points are desirable for window sealant compositions.
With regards to claim 14, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of ethylene vinyl acetate polymer present in the polyisobutylene sealant composition. The motivation for doing so would have been to optimize the properties, costs, and processability of the composition.
With regards to claim 15, Walker’s ethylene vinyl acetate (abstract) is understood to read on the claimed thermoplastic polymer.
With regards to claim 26, Walker’s ethylene vinyl acetate (abstract) is understood to read on the claimed thermoplastic polymer.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018/054791 (herein referred to as “Culot”) in view of (a) Walker et al (US 3,645,817), (b) Marzouki et al (US 4,411,115), as applied to claims above, and further in view of https://www.adhesivesmag.com/articles/84698-just-add-pibs (herein referred to as “AST’).
Culot in view of Walker, and Marzouki is relied upon as above, but does not teach the claimed melt flow index of the sealant composition. However, ASI teach that the viscosity of the polyisobutylene is a result effective variable which is dependent upon the MW of the grade selected (“certain grades of the MW range are very viscous…”). Thus, it would have been obvious to one of ordinary skill in the art the time the invention was made to optimize the melt flow index of the composition in order to optimize the processability of the composition.
Claim(s) 18- 21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018/054791 (herein referred to as “Culot”) in view of (a) Walker et al (US 3,645,817), (b) Marzouki et al (US 4,411,115), as applied to claims above, and further in view of WO2006/037500 (herein referred to as Davison).
With regards to claims 18, 19, and 23, Culot in view of Walker, and Marzouki is relied upon as above, but does not teach the sealant may further comprises a transparent tackifying resin . However, Davison teaches that tackifiers, such as those claimed in claim 18, may be added to polyisobutylene sealant compositions in amounts of 10-35wt% (claim 8). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add 10-35wt% tackifying resin to the polyisobutylene sealant composition. The motivation for doing so would have been that Davison teaches such amounts of tackifying resins have traditionally been added to polyisobutylene sealants in order to improve the tack thereto.
With regards to claim 20, Culot, Marzouki, and Walker fail to disclose the composition may further comprise antioxidant stabilizer. However, Davison teaches that antioxidant stabilizers may be added to polyisobutylene sealant compositions in amounts of 0-0.5wt% (claim 8). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add 0-0.5wt% antioxidant stabilizer to the polyisobutylene sealant composition. The motivation for doing so would have been that Davison teaches such amounts of antioxidant stabilizers have traditionally been added to polyisobutylene sealants in order to improve the stability thereof.
With regards to claim 21, Culot, Marzouki, and Walker fail to disclose the composition may further comprise an adhesion promoter. However, Davison teaches that adhesion promoter may be added to polyisobutylene sealant compositions in amounts of 0.25-2.5wt% (claim 8). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add 0.25-2.5wt% adhesion promoter to the polyisobutylene sealant composition. The motivation for doing so would have been that Davison teaches such amounts of adhesion promoters have traditionally been added to polyisobutylene sealants in order to improve adhesion.
Response to Arguments
Applicant’s amendments and arguments filed 9/5/2025 with respect to the pending claim(s) have been considered but are not persuasive.
With respect to the rejection of claims under 35 U.S.C. 103 as being unpatentable over WO2018/054791 (herein referred to as “Culot’’) in view of Walker et al (US 3,645,817) and https://www.adhesivesmag.com/articles/84698-just-add-pibs (herein referred to as “AST’). Applicant respectfully traverses and submits the features of now cancelled claims 27 and 29 have been incorporated into amended claim 14. Said argument is noted and it persuasive for overcoming the previously relied upon combination of references.
With regards to the rejection claims 27 and 29, Applicant argues in order to achieve the moisture barrier properties of the reference, a composition containing the essential ingredients of Marzouki’s sealant composition (ie. a block copolymer with two polystyrene end blocks attached to a saturated polyolefin rubber midblock, an aliphatic hydrocarbon resin with a melting point of at least 60°C, an epoxy resin, and finely divided inorganic filler) must be used. Since Marzouki’s composition does not comprise the elements of the claimed composition, applicant argues the claimed composition is not obvious because the Marzouki composition has a moisture vapor transmission rate of less than 0.1 g/m? or a softening point above 100°C.
With regards to the rejection of Claims 18-21 and 23 under 35 U.S.C. 103 as being unpatentable over Culot in view of Walker et al. and ASI, as applied to claims above, and further in view of W02006/037500 (herein referred to as “Davison’’), Applicant traverses because claims 18-21 depend from independent claim 14 and thus incorporate all its limitations. Accordingly, the arguments presented in response to the rejection of claim 14 apply equally to claims 18-21. Said argument is not persuasive for the reasons noted above.
With regards to the rejection of Claims 27 and 29 under 35 U.S.C. 103 as being unpatentable over Culot in view of Walker et al. and ASI, as applied to claims above, and further in view of Marzouki et al. (US 4,411,115). Applicant traverses said rejection as claims 27 and 29 are dependent from independent claim 14 and therefore incorporate all the limitations thereof. Applicant argues Marzouki does not add any teaching that overcomes the deficiencies of the rejection based on Culot, Walker, and ASI. Said argument is not persuasive for the reasons noted above.
For the reasons noted herein, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787