DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on May 21, 2026 has been fully considered. The previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
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.
3. Claims 1-6, 8, 11, 14, 16-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wojtowicki et al (US 2010/0314813) in view of Kohlstrung et al (WO 2017/055329, Kohlstrung’888), Greenwood (US 4,320,076), Huddleston (US 4,946,529) and Malcolm (US 5,635,562).
It is noted that while the rejection is made over WO 2017/055329 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2018/0215888 is relied upon. All citations to paragraph numbers, etc., below refer to US 2018/0215888.
4. The rejection is adequately set forth on pages 4-12 of an Office action mailed on February 24, 2026 and is incorporated here by reference.
5. Claims 1-8, 11, 14, 16-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wojtowicki et al (US 2010/0314813) in view of Kohlstrung et al (WO 2017/055329, Kohlstrung’888), Greenwood (US 4,320,076), Huddleston (US 4,946,529) and Malcolm (US 5,635,562), as further evidenced by Kohlstrung et al (US 2017/0002164, Kohlstrung’164).
It is noted that while the rejection is made over WO 2017/055329 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2018/0215888 is relied upon. All citations to paragraph numbers, etc., below refer to US 2018/0215888.
6. The rejection is adequately set forth on pages 12-13 of an Office action mailed on February 24, 2026 and is incorporated here by reference.
7. Claims 1-6, 8, 11-12, 14, 16-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wojtowicki et al (US 2010/0314813) in view of Kohlstrung et al (WO 2017/055329, Kohlstrung’888), Greenwood (US 4,320,076), Huddleston (US 4,946,529) and Malcolm (US 5,635,562), in further view of Moeller et al (US 2008/0039594) and Born et al (US 6,448,338).
It is noted that while the rejection is made over WO 2017/055329 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2018/0215888 is relied upon. All citations to paragraph numbers, etc., below refer to US 2018/0215888.
8. The rejection is adequately set forth on pages 14-18 of an Office action mailed on February 24, 2026 and is incorporated here by reference.
9. Claims 1-6, 8, 11, 13-14, 16-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dobashi (US 2009/0239962) in view of Kohlstrung et al (WO 2017/055329, Kohlstrung’888), Greenwood (US 4,320,076) and Huddleston (US 4,946,529).
It is noted that while the rejection is made over WO 2017/055329 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2018/0215888 is relied upon. All citations to paragraph numbers, etc., below refer to US 2018/0215888.
10. The rejection is adequately set forth on pages 18-24 of an Office action mailed on February 24, 2026 and is incorporated here by reference.
11. Claims 1-8, 11, 13-14, 16-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dobashi (US 2009/0239962) in view of Kohlstrung et al (WO 2017/055329, Kohlstrung’888), Greenwood (US 4,320,076) and Huddleston (US 4,946,529), as further evidenced by Kohlstrung et al (US 2017/0002164, Kohlstrung’164).
It is noted that while the rejection is made over WO 2017/055329 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2018/0215888 is relied upon. All citations to paragraph numbers, etc., below refer to US 2018/0215888.
12. The rejection is adequately set forth on pages 24-25 of an Office action mailed on February 24, 2026 and is incorporated here by reference.
13. Claims 1-6, 8, 11-14, 16-17, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dobashi (US 2009/0239962) in view of Kohlstrung et al (WO 2017/055329, Kohlstrung’888), Greenwood (US 4,320,076) and Huddleston (US 4,946,529), in further view of Moeller et al (US 2008/0039594) and Born et al (US 6,448,338).
It is noted that while the rejection is made over WO 2017/055329 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2018/0215888 is relied upon. All citations to paragraph numbers, etc., below refer to US 2018/0215888.
14. The rejection is adequately set forth on pages 26-29 of an Office action mailed on February 24, 2026 and is incorporated here by reference.
Response to Arguments
15. Applicant's arguments filed on May 21, 2026 have been fully considered.
16. With respect to Applicant’s arguments regarding the rejections of Claims 1-6, 8, 11, 14, 16-17, 19-20 under 35 U.S.C. 103 as being unpatentable over Wojtowicki et al (US 2010/0314813) in view of Kohlstrung et al (WO 2017/055329, based on US 2018/0215888, Kohlstrung’888), Greenwood (US 4,320,076), Huddleston (US 4,946,529) and Malcolm (US 5,635,562); Claims 1-8, 11, 14, 16-17, 19-20 under 35 U.S.C. 103 as being unpatentable over Wojtowicki et al (US 2010/0314813) in view of Kohlstrung et al (WO 2017/055329, based on US 2018/0215888, Kohlstrung’888), Greenwood (US 4,320,076), Huddleston (US 4,946,529) and Malcolm (US 5,635,562), as further evidenced by Kohlstrung et al (US 2017/0002164, Kohlstrung’164) and Claims 1-6, 8, 11-12, 14, 16-17, 19-20 under 35 U.S.C. 103 as being unpatentable over Wojtowicki et al (US 2010/0314813) in view of Kohlstrung et al (WO 2017/055329, based on US 2018/0215888, Kohlstrung’888), Greenwood (US 4,320,076), Huddleston (US 4,946,529) and Malcolm (US 5,635,562), in further view of Moeller et al (US 2008/0039594) and Born et al (US 6,448,338), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Though Wojtowicki et al does not teach the composition further comprising a cross-linked solid butyl rubber having Mooney viscosity (ML1+3 at 127⁰C) of 65-80; a low molecular weight multifunctional (meth)acrylate having three (meth)acrylate groups and a peroxidically crosslinkable terpolymer comprising a glycidyl group as the component c), the secondary references of Kohlstrung’888, Greenwood, Huddleston and Malcolm were applied for the teachings of those, wherein:
i) Kohlstrung’888 clearly teaches the thermally expandable compositions for sealing cavities, very similar to those taught by Wojtowicki et al, further comprising pre-crosslinked butyl rubber, trimethylolpropane trimethacrylate and a polymer having glycidyl (meth)acrylate groups.
ii) Further, Greenwood discloses expandable sealing compositions used for sealing cavities, comprising solid butyl rubbers having Mooney viscosity of 40-65, cross-linked in amount of 25-75%, wherein Greenwood explicitly teaches that the compositions based on the solid butyl rubber crosslinked in amount of as high as 75% exhibit adhesive/sealing properties, and thus could be used to improve adhesiveness in compositions, i.e. act as adhesion promoters as well. Furthermore, Huddleston discloses the use of commercial pre-crosslinked butyl rubber having crosslinking degree of as high as 75%, specifically Kalar 5264 having Mooney viscosity (ML1+3 at 127⁰C) of 55-65 (col. 6, lines 8-26) in adhesive compositions (Abstract).
iii) Malcolm teaches an expandable composition substantially the same as that of Wojtowicki et al, wherein Malcolm teaches the use of a mixture of adhesion promoters used in amount of 2-20%wt, which adhesion promoter mixture includes the same petroleum-based hydrocarbon resins cited by Wojtowicki et al as at least one tackifying resin.
2) Thus, the secondary references of Kohlstrung’888, Greenwood, Huddleston clearly teach the use of cross-linked butyl rubbers in adhesive compositions used for sealing cavities, including thermally expandable compositions, to improve adhesiveness, and therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the cross-linked butyl rubber as additional component in the thermally expandable composition of Wojtowicki et al to further at least partially improve adhesive properties of the composition of Wojtowicki et al as well, since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
3) Kohlstrung’888, Greenwood, Huddleston and Malcolm are secondary references, each of which was applied for the specific teaching. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
4) In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
5) Both Wojtowicki et al and Kohlstrung’888 are related to thermally expandable sealing compositions, intended to be used to seal cavities, no matter how these compositions are applied to said cavities, manually or not manually.
6) Kohlstrung’888 is a secondary reference which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973). Further, in paragraph [0048] Kohlstrung’888 teaches that composition is preferably substantially free of ADCA and/or OBSH. By using the terms “preferably” and “substantially free”, the total absence of said exothermic blowing agents is not required.
Under 35 USC 103 a preferred embodiment is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
7) The secondary reference of Greenwood was applied for the specific teachings of using solid butyl rubbers having Mooney viscosity of 40-65, cross-linked in amount of 25-75% in the expandable sealing compositions used for sealing cavities, i.e. the composition substantially similar to that of Wojtowicki et al and used for the same purpose. Greenwood explicitly teaches that the compositions based on the solid butyl rubber crosslinked in amount of as high as 75% exhibit adhesive/sealing properties, and thus could be used to improve adhesiveness in compositions, i.e. act as adhesion promoters as well. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form third composition to be used for the same purpose” (see MPEP 2144.06). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
17. With respect to Applicant’s arguments regarding the rejections of Claims 1-6, 8, 11, 13-14, 16-17, 19-20 under 35 U.S.C. 103 as being unpatentable over Dobashi (US 2009/0239962) in view of Kohlstrung et al (WO 2017/055329, based on US 2018/0215888, Kohlstrung’888), Greenwood (US 4,320,076) and Huddleston (US 4,946,529); Claims 1-8, 11, 13-14, 16-17, 19-20 under 35 U.S.C. 103 as being unpatentable over Dobashi (US 2009/0239962) in view of Kohlstrung et al (WO 2017/055329, based on US 2018/0215888, Kohlstrung’888), Greenwood (US 4,320,076) and Huddleston (US 4,946,529), as further evidenced by Kohlstrung et al (US 2017/0002164, Kohlstrung’164) and Claims 1-6, 8, 11-14, 16-17, 19-20 under 35 U.S.C. 103 as being unpatentable over Dobashi (US 2009/0239962) in view of Kohlstrung et al (WO 2017/055329, based on US 2018/0215888, Kohlstrung’888), Greenwood (US 4,320,076) and Huddleston (US 4,946,529), in further view of Moeller et al (US 2008/0039594) and Born et al (US 6,448,338), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Kohlstrung’888, Kohlstrung’164, Greenwood, Huddleston, Malcolm, Moeller et al and Born et al are secondary references, each of which was applied for the specific teaching. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
3) In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
4) Both Dobashi and Kohlstrung’888 are related to expandable sealing compositions, intended to be used to seal cavities, no matter how these applications are applied to said cavities, manually or not manually.
5) Kohlstrung’888 is a secondary reference which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973). Further, in paragraph [0048] Kohlstrung’888 teaches that composition is preferably substantially free of ADCA and/or OBSH. By using the terms “preferably” and “substantially free”, the total absence of said exothermic blowing agents is not required.
Under 35 USC 103 a preferred embodiment is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
6) The secondary reference of Greenwood was applied for the specific teachings of using solid butyl rubbers having Mooney viscosity of 40-65, cross-linked in amount of 25-75% in the expandable sealing compositions used for sealing cavities, i.e. the composition substantially similar to that of Dobashi and used for the same purpose. Greenwood explicitly teaches that the compositions based on the solid butyl rubber crosslinked in amount of as high as 75% exhibit adhesive/sealing properties, and thus could be used to improve adhesiveness in compositions, i.e. act as adhesion promoters as well. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form third composition to be used for the same purpose” (see MPEP 2144.06). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Conclusion
THIS ACTION IS MADE FINAL. 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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