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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 21, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on January 21, 2026 has been fully considered. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
4. Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 18 recites the component (f) including three or more (meth)acrylate groups. However, said limitation is already present in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recite a limitation “the composition does not comprise a binary copolymer”. However, since there are no prepositions “the” or “said” in front of the term “binary copolymer”, it is not clear if the composition does not contain binary copolymer component (a1) of claim 1, or does not contain any possible binary copolymer.
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.
6. Claims 1-6, 8, 11, 14, 16-20 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.
7. Wojtowicki et al discloses a thermally expandable composition comprising:
a) 3-40%wt of a first thermoplastic elastomer;
b) 3-40%wt of a second thermoplastic elastomer;
c) 5-50%wt of at least one thermoplastic polymer having at least one polymerizable C=C double bond;
d) 0-30%wt of at least one tackifier;
e) 1-20%wt of at least one chemical blowing agent (Abstract, [0027]-[0034], [0051]-[0057], [0076]),
f) 0.2-5%wt of a chemical curing agent such as organic peroxides ([0068]),
- wherein the components a) and b) are styrene-butadiene block copolymers ([0063], [0065], as to instant claims 1, 3);
- the component c) is an ethylene-vinyl acetate copolymer or ethylene/methyl (meth)acrylate copolymer ([0066]);
- the tackifying resin d) is a hydrocarbon resin derived from cracked petroleum distillate, having molecular weight of as low as 1000, i.e. liquid ([0067], as to instant claims 1, 5, 12, 14);
- the component e) comprises azodicarbonamide ADCA ([0093]) and is used in amount of 1-20%wt ([0076], as to instant claims 1, 6, 14).
8. It is further noted that, as also confirmed by instant specification (see [072] of instant specification) ADCA is an exothermic blowing agent.
9. The composition further comprises 2-20%wt of a plasticizer ([0099], claim 7) and 5-40%wt of fillers ([0098], as to instant claim 8).
10. The composition is expandable by heating and is used for sealing cavities ([0018], [0147], claim 13).
11. 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).
12. However,
1) Kohlstrung’888 discloses a thermally expandable composition comprising:
A) at least one peroxidically cross-linkable polymer including styrene-butadiene block copolymers, ethylene-vinyl acetate copolymer and further ethylene/(meth)acrylate/ glycidyl (meth)acrylate terpolymer ([0012], [0102], [0051], [0060], [0062], as to instant claims 1-2, 11, 14);
B) at least one peroxide ([0013]);
C) at least one chemical blowing agent, i.e. compounds that decompose under the action of heat ([0021]);
D) 5-70%wt of an aromatic or aliphatic hydrocarbon resin, such as liquid C9/C10 aromatic hydrocarbon resin ([0065], [0105], as to instant claims 5, 14),
E) 0.2-2.5%wt of trimethylolpropane trimethacrylate (as to instant claims 1, 14, 17-20),
wherein the composition is solid at 22⁰C, heated to temperatures of 70-120⁰C ([0115]) and expandable at temperature of 110-120⁰C ([0109]) and is used for sealing and in adhesive applications ([0111], [0117]).
Specifically exemplified composition comprises:
12.5 pbw of ethylene-acrylate-glycidyl methacrylate terpolymer;
8.3 pbw of a pre-cross-linked butyl rubber (as to instant claim 1, 14);
a liquid aromatic C9/C10 hydrocarbon resin;
a dicumyl peroxide;
3 pbw of TMPTMA (i.e. a low molecular weight multifunctional acrylate, specifically trimethylolpropane trimethacrylate ([0073], as to instant claims 1-2, 14, 17-20);
0.6 parts of citric acid;
5.3 pbw of polyisobutylene ([0136]).
Thus, Kohlstrung’888 discloses a thermally expandable composition based on styrene-butadiene block copolymers, ethylene-vinyl acetate copolymer, used in sealing applications, similarly to the teachings of Wojtowicki et al, but further comprising ethylene/(meth)acrylate/ glycidyl (meth)acrylate terpolymer as the additional polymer A) and a cross-linked butyl rubber in amount of about 8pbw. Kohlstrung’888 explicitly teaches the use of at least two polymers as the component A), especially the polymer comprising glycidyl (meth)acrylate units as the second polymer ([0060]).
Though Kohlstrung’888 does not specify Mooney viscosity of said cross-linked butyl rubber,
2) 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% (col. 2, lines 50-67, as to instant claims 1, 14, 16) and expanding agent (Table 1). Thus, 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. Greenwood exemplifies the butyl rubber being used in amount of about 12 pbw (col. 4, lines 11-12).
3) 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, as to instant claims 1, 14, 16) in adhesive compositions (Abstract).
4) Malcolm discloses an expandable vibration dampening composition comprising:
2-24%wt of styrene-butadiene block copolymers;
2-14%wt of plasticizer;
2-22%wt thermoplastic polymer including ethylene-vinyl acetate copolymer or acrylics (col. 4, lines 23-44);
0.02-5%wt of a foaming agent and
2-20%wt of a mixture of adhesion promoters including petroleum-based hydrocarbon resins (Table 1, col. 5, lines 25-30).
Thus, Malcolm teaches an expandable dampening 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.
13. Since Greenwood, Kohlstrung’888 and Wojtowicki et al are related to expandable sealing compositions used to fill cavities, and thus belong to the same field of endeavor, wherein i) Kohlstrung’888 discloses a thermally expandable composition based on styrene-butadiene block copolymers, ethylene-vinyl acetate copolymer, used in sealing applications, similarly to the teachings of Wojtowicki et al, but further comprising ethylene/(meth)acrylate/ glycidyl (meth)acrylate terpolymer as additional polymer A) and further a cross-linked butyl rubber, ii) Greenwood specifies the use of a solid butyl rubber cross-linked in amount of as high as 75% to improve the sealing properties of the composition, and iii) Huddleston teaches the use of commercial pre-crosslinked butyl rubber having crosslinking degree of as high as 75%, specifically commercial product Kalar 5264 having Mooney viscosity (ML1+3 at 127⁰C) of 55-65 (col. 6, lines 8-26) in adhesive compositions, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Wojtowicki et al, Greenwood, Kohlstrung’888 and Huddleston and to include, or obvious to try to include the ethylene/(meth)acrylate/ glycidyl (meth)acrylate terpolymer as additional polymer A) and further include the solid butyl rubber crosslinked in amount of as high as 75% and having Mooney viscosity (ML1+3 at 127⁰C) of 55-65 (i.e. Kalar 5264), as taught by Huddleston and Greenwood, and in amount as taught by Kohlstrung’888 and/or Greenwood in the composition of Wojtowicki et al, so to further improve sealing/adhesive properties of the composition of Wojtowicki et al, i.e. as an adhesion promoter as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Further, since Wojtowicki et al discloses the use of 1-20%wt of at least one tackifier, i.e. more than one, 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, i.e. tackifiers are compounds promoting adhesion, therefore, it would have been obvious to a one of ordinary skill in the art to use, or obvious to try to use the solid crosslinked butyl rubber Kalar 5264 as the second tackifier/adhesion promoter in amount of as low as 1%wt in the composition of Wojtowicki et al as well, since it would have been 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). 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
14. Since the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm is substantially the same as that claimed in instant invention, and is used for sealing, and in adhesive applications as that claimed in instant invention, therefore, the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm will intrinsically and necessarily be or would be reasonably expected to be, at least partially, pumpable at temperatures of 50-120⁰C as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
15. The ranges in the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
16. Claims 1-8, 11, 14, 16-20 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.
17. The discussion with respect to 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), set forth in paragraphs 6-15 above, is incorporated here by reference.
18. Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm do not recite the solid rubber having a molecular weight of 100,000 or greater.
19. However, as evidenced by Kohlstrung’164, solid rubbers including butyl rubber are having molecular weight of 100,000 or higher ([0042], as to instant claim 7). Thus, based on the evidence provided by Kohlstrung’164, the cross-linked solid butyl rubber in the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm will intrinsically and necessarily have, or would be reasonably expected to have molecular weight of 100,000 or higher as well (as to instant claim 7). 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
20. Claims 1-6, 8, 11-12, 14, 16-20 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.
21. The discussion with respect to 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), set forth in paragraphs 6-15 above, is incorporated here by reference.
22. Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm do not recite do not recite the plasticizer used in the composition (see claim 7 of Wojtowicki et al) being liquid polyisobutylene, and further use of liquid butadiene-isoprene copolymers as an additive in said composition.
23. However,
1) Moeller et al discloses radiation cross-linkable hot-melt adhesives, wherein such compositions comprise 5-20%wt of polyisobutylene as plasticizer, specifically commercial product Oppanol, wherein said plasticizers are having viscosity of as low as 100 mPas ([0049]-[0051]), i.e. liquid. It is noted that commercially available polyisobutylene product Oppanol is used in instant invention (Table 1 of instant specification, as to instant claim 12).
2) Born et al discloses a curable composition/sealant for sealing seams, pumpable at temperatures of 60-110⁰C (Abstract; col. 3, lines 38-45) comprising peroxide-crosslinkable copolymers, peroxides and further 5-40%wt of liquid rubbers, specifically copolymer of butadiene and isoprene (claim 5, col. 3, lines 47-62, as to instant claim 12), used to improve rheology of the compositions (col. 3, lines 62-65), i.e. being used as rheology modifiers.
24. Since all of Wojtowicki et al, Moeller et al and Born et al are related to peroxide-curable sealing compositions and therefore, belong to the same field of endeavor, wherein Moeller et al discloses the use of liquid polyisobutylene, specifically commercial product Oppanol, as the plasticizer, and Born et al specifies the used liquid rubbers including liquid copolymer of butadiene and isoprene, to improve adhesion and rheology of the compositions, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Wojtowicki et al, Moeller et al and Born et al and to use, or obvious to try to use, the liquid polyisobutylene such as commercial product Oppanol as the plasticizer in the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm, and further include, or obvious to try to include the liquid copolymer of butadiene and isoprene into the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm, so to improve adhesion properties and the rheology of the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm
as well, and since it would have been 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). “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). 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
25. Since the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm, in further view of Moeller et al and Born et al is substantially the same as that claimed in instant invention, and is used for sealing and in adhesive applications, therefore, the composition of Wojtowicki et al in view of Kohlstrung’888, Greenwood, Huddleston and Malcolm, in further view of Moeller et al and Born et al will intrinsically and necessarily be or would be reasonably expected to be, at least partially, pumpable at temperatures of 50-120⁰C as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
26. Claims 1-6, 8, 11, 13-14, 16-20 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.
27. As to instant claims 1-2, 6, 14, Dobashi discloses an expandable composition for filling and sealing cavities ([0056]-[0058]) comprising:
A) an anhydride-functionalized thermoplastic, specifically ethylene/(meth)acrylate copolymers functionalized with anhydride ([0014]-[0018]);
B) 1-30%wt ([0037], also as to instant claim 11) of an epoxy-functionalized thermoplastic, specifically ethylene/alkyl(meth)acrylate/unsaturated epoxide copolymers, wherein the epoxide is a glycidyl (meth)acrylate ([0035]-[0036]);
C) 5-20%wt (claim 12) of a chemical blowing agent, specifically OBSH and ADCA ([0028]); used in exemplified amounts of 9.5%wt of ADCA and 6%wt of OBSH, with total amount of 15.5%wt (Table 1);
D) 0.1-5%wt of a free radical initiator comprising peroxides ([0039]) and
E) 0.1-5%wt of trimethylolpropane triacrylate (TMPTA, as to instant claims 17-20).
The composition is expandable by heating ([0047]), i.e. thermally expandable.
28. Since the composition comprises components A) and B), which are both terpolymers, therefore, the composition is free from binary copolymers (as to instant claim 13).
29. Alternatively, the composition may further comprise 0.1-15%wt of additional polymers including ethylene-methyl acrylate copolymers and/or ethylene-vinyl acetate copolymers ([0038], as to instant claim 3, 4).
30. It is further noted that, as also confirmed by instant specification (see [072] of instant specification) ADCA is an exothermic blowing agent.
31. The composition further comprises additives including fillers (as to instant claim 8), tackifying resin, plasticizers and antioxidants ([0041]).
32. Dobashi does not specify the tackifying resin being a liquid hydrocarbon polymer, and does not teach the composition further comprising a crosslinked solid butyl rubber having Mooney viscosity of 65-80.
33. However,
1) Kohlstrung’888 discloses a thermally expandable composition comprising:
A) 2-40%wt, in particular 5-30%wt of at least one peroxidically cross-linkable polymer comprising glycidyl (meth)acrylate polymerized monomer, such as terpolymer ([0102], as to instant claims 1-2, 11, 13-14);
B) 0.05-6%wt of at least one peroxide ([0103]);
C) 0.1-40%wt of at least one chemical blowing agent ([0021]);
D) 5-70%wt of an aromatic, cycloaliphatic or aliphatic C5, C9/10 hydrocarbon resin, such as liquid C9/C10 aromatic hydrocarbon resin as tackifying resin to increase the tack of the composition ([0105], [0064]-[0065], as to instant claims 1, 5, 14),
wherein the composition is solid at 22⁰C, heated to temperatures of 70-120⁰C ([0115]) and expandable at temperature of 110-120⁰C ([0109]) and is used for sealing and in adhesive applications ([0111], [0117]).
Specifically exemplified composition comprises:
12.5 pbw of ethylene-acrylate-glycidyl methacrylate terpolymer;
8.3 pbw of a pre-cross-linked butyl rubber (as to instant claim 1, 14)
a liquid aromatic C9/C10 hydrocarbon resin;
a dicumyl peroxide;
3 pbw of TMPTMA (i.e. a low molecular weight multifunctional acrylate, [0073], as to instant claims 1-2, 14);
5.3 pbw of polyisobutylene ([0136], as to instant claim 5).
Thus, the composition of Kohlstrung’888 is a thermally expandable sealing/adhesive composition based on a combination of ethylene-acrylate-glycidyl methacrylate, peroxide, TMPTMA, chemical blowing agent, similar to that of Dobashi, but further comprising a pre-crosslinked butyl rubber and a liquid hydrocarbon resin as a tackifying resin to increase tack. Though Kohlstrung’888 does not specify said pre-crosslinked butyl rubber as an adhesion modifier, since said pre-crosslinked butyl rubber of Kohlstrung’888 is the same as the pre-crosslinked butyl rubber of instant claims 1 and 14, therefore, said pre-crosslinked butyl rubber of Kohlstrung’888 will intrinsically and necessarily act, at least partially, as the adhesion promoter as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
2) 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% (col. 2, lines 50-67) and expanding agent (Table 1).
Thus, 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. Greenwood exemplifies the butyl rubber being used in amount of about 12 pbw (col. 4, lines 11-12).
3) 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, as to instant claims 1, 14, 16) in adhesive compositions (Abstract).
34. Since both Dobashi and Kohlstrung’888 are related to thermally expandable sealing/adhesive compositions based on a combination of ethylene-acrylate-glycidyl methacrylate, peroxide, TMPTMA, chemical blowing agent, and thereby belong to the same field of endeavor, but wherein
i) Kohlstrung’888 further discloses such compositions comprising a pre-crosslinked butyl rubber in amount of about 8 pbw and a liquid hydrocarbon resin in amount of 5-70%wt as a tackifying resin to increase tack,
ii) Greenwood specifically teaches the crosslinked butyl rubber as being solid butyl rubber cross-linked in amount of as high as 75%, providing the sealing properties, and iii) Huddleston teaches the use of commercial pre-crosslinked butyl rubber having crosslinking degree of as high as 75%, specifically commercial product Kalar 5264 having Mooney viscosity (ML1+3 at 127⁰C) of 55-65 (col. 6, lines 8-26) in adhesive compositions, therefore,
it would have been obvious to a one of ordinary skill in the art to combine the teachings of Dobashi, Kohlstrung’888, Huddleston and Greenwood, and to include, or obvious to try to include both a) the solid butyl rubber crosslinked in amount of as high as 75% and having Mooney viscosity (ML1+3 at 127⁰C) of 55-65 (i.e. Kalar 5264) as taught by Huddleston and Greenwood, in amounts as taught by Kohlstrung’888 and/or Greenwood and b) the liquid hydrocarbon resin in amount as taught by Kohlstrung’888 in the composition of Dobashi, so to further improve sealing/adhesive properties and tack of the composition of Dobashi as well, i.e. at least partially as an adhesion promoter as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
35. Since the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston is substantially the same as that claimed in instant invention, and is specified as being solid, being heated to expand and is used for sealing and in adhesive applications, therefore, the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston will intrinsically and necessarily be or would be reasonably expected to be, at least partially, pumpable at temperatures of 50-120⁰C as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
36. The ranges in the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
37. Claims 1-8, 11, 13-14, 16-20 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.
38. The discussion with respect to 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), set forth in paragraphs 26-36 above, is incorporated here by reference.
39. Dobashi in view of Kohlstrung’888, Greenwood and Huddleston
do not recite the solid rubber having a molecular weight of 100,000 or greater.
40. However, as evidenced by Kohlstrung’164, solid rubbers including butyl rubber are having molecular weight of 100,000 or higher ([0042], as to instant claim 7).
Thus, based on the evidence provided by Kohlstrung’164, the cross-linked solid butyl rubber in the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston will intrinsically and necessarily have, or would be reasonably expected to have molecular weight of 100,000 or higher as well (as to instant claim 7). 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
41. Claims 1-6, 8, 11-14, 16-20 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.
42. The discussion with respect to 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), set forth in paragraphs 26-36 above, is incorporated here by reference.
43. Dobashi in view of Kohlstrung’888, Greenwood and Huddleston
do not recite the plasticizer used in the composition (see [0041] of Dobashi) being liquid polyisobutylene, and further use of liquid butadiene-isoprene copolymers as an additive in said composition.
44. However,
1) Moeller et al discloses radiation cross-linkable hot-melt adhesives, wherein such compositions comprise 5-20%wt of polyisobutylene as plasticizer, specifically commercial product Oppanol, wherein said plasticizers are having viscosity of as low as 100 mPas ([0049]-[0051]), i.e. liquid. It is noted that commercially available polyisobutylene product Oppanol is used in instant invention (Table 1 of instant specification, as to instant claim 12).
2) Born et al discloses a curable composition/sealant for sealing seams, pumpable at temperatures of 60-110⁰C (Abstract; col. 3, lines 38-45) comprising peroxide-crosslinkable copolymers, peroxides and further 5-40%wt of liquid rubbers, specifically copolymer of butadiene and isoprene (claim 5, col. 3, lines 47-62, as to instant claim 12), used to improve rheology of the compositions (col. 3, lines 62-65), i.e. being used as rheology modifiers.
45. Since all of Dobash, Moeller et al and Born et al are related to peroxide-curable sealing compositions and, therefore, belong to the same field of endeavor, wherein Moeller et al discloses the use of liquid polyisobutylene, specifically commercial product Oppanol as the plasticizer, and Born et al specifies the used liquid rubbers including liquid copolymer of butadiene and isoprene, to improve adhesion and rheology of the compositions, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Dobash, Moeller et al and Born et al and to use, or obvious to try to use, the liquid polyisobutylene such as commercial product Oppanol as the plasticizer in the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston, and further include, or obvious to try to include the liquid copolymer of butadiene and isoprene into the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston, so to improve adhesion properties and the rheology of the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston
as well, and since it would have been 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). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). “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). 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
46. Since the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston, in further view of Moeller et al and Born et al is substantially the same as that claimed in instant invention, and is used for sealing and in adhesive applications, therefore, the composition of Dobashi in view of Kohlstrung’888, Greenwood and Huddleston, in further view of Moeller et al and Born et al will intrinsically and necessarily be or would be reasonably expected to be, at least partially, pumpable at temperatures of 50-120⁰C as well. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
47. Applicant's arguments filed on January 21, 2026 have been fully considered but they are moot in light of the new grounds of rejections and discussion set forth above.
48. In addition, it is further noted that:
1) Kohlstrung et al (WO 2017/055329, Kohlstrung’888), Greenwood (US 4,320,076), Huddleston (US 4,946,529), Malcolm (US 5,635,562), Moeller et al (US 2008/0039594) and Born et al (US 6,448,338) are all secondary references, each of 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).
2) Wojtowicki et al clearly teaches the composition being used for sealing and baffling cavities ([0018]), which is substantially similar to sealing composition of Greenwood. Greenwood exemplifies the butyl rubber being used in amount of about 12 pbw (col. 4, lines 11-12).
Conclusion
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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764