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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Vick GB 2123919A in view of Madaj US 2004/0198900 A1.
Regarding claims 1 and 5, Vick teaches a pipe sealant material which cures to form a closed-cell foam (see reference claims 1 and 2). Vick notes that the preferred sealant composition is a polyurethane foam-forming formulation (page 2, line 25), and highlights a typical two-part polyurethane composition (with polyols and a diisocyanate) which is suitable as the inventive sealant (page 2, lines 42-65). Vick discloses that the polyurethane composition may be further modified by inorganic fillers such as silica, etc. (page 3, line 1). In order to further optimize the sealant composition a skilled artisan would look to analogous art which also teaches polyurethane composition-based sealants.
Reference Madaj also teaches a two-part curable polyurethane sealant composition (title, reference claims 1 and 30) and further discloses that the polyurethane comprises fillers which can be selected to be silica or polymers in the form of granules or powders such as micronized polyethylene (page 7, para [0064]). Thus, Madaj recognizes both silica and micronized polyethylene to be equivalents for the polyurethane sealant compositions. Obvious embodiment of Vick in view of Madaj would be where in Vick’s two-part curable polyurethane, micronized polyethylene (corresponding to plastic pellets) are substituted for silica fillers. It is prima facie obvious to substitute equivalents known for the same purpose, when the equivalency is recognized in the prior art, See MPEP 2144.05 II.
The micronized polyethylene dispersed throughout the polyurethane matrix would inherently provide the points of weakness in the sealant composition, meeting the claimed requirement.
Regarding claim 2, as discussed when addressing claim 1, obvious pipe sealant composition of Vick and Madaj, derived from two-part polyurethane and micronized polyethylene, the two components inherently are in possession of a hardness that would be measured on the D scale given their resemblance to favored permutations of the curable plastic and pellets in the specification.
Regarding claim 3, primary reference Vick does not provide the amount of filler that can be present in the polyurethane composition, however reference Madaj teaches ([0031]) that the polyurethane reaction product may comprise about 20 to about 80 percent by weight of fillers, which overlap with the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Obvious composition of Vick in view of Madaj would be where 80 weight percent of polyurethane is combined with 20 weight percent of a filler, which can be micronized polyethylene, which meets the claimed requirement.
Regarding claim 6, Madaj teaches that the filler can be selected to be micronized polyethylene (page 7, para [0064]). Since polyethylene can be either LDPE or HDPE, in the process of optimizing one of ordinary skill is well acquainted that HDPE has improved chemical resistance and therefore would select micronized HDPE, making the claimed requirement obvious.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Vick in view of Madaj, as applied to claim 1, and further in view of Yudong CN101108984A.
Regarding claim 4, as discussed when addressing claims 1, Vick in view of Madaj, teach micron sized polyethylene powder, which meets the claimed diameter requirement. Madaj fails to mention that the polyethylene micron sized powders are spherical in nature.
One of ordinary skill would take guidance from disclosures related to micronized polyethylene to ascertain their shape characteristics. Reference Yudong teaches the creation of micronized polyethylene (para [0004]) and notes that the micropowder are spherical in nature (para [0020]), and notes that the spherical nature of the particles provides the benefit of improved dispersibility (para [0016]), thereby encouraging a skilled artisan to select a spherical micron sized polyethylene as the preferred filler for combination of Vick and Madaj’s polyurethane pipe sealant composition.
Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Vick and Madaj, as applied to claim 1, and further in view of Markusch et al. US 6,602,025 B2.
As discussed, when addressing claim 1, the combination of Vick and Madaj’s disclosure renders the claimed composition obvious.
Regarding claims 7 and 8, Vick teaches a cartridge system to deliver the polyurethane composition (page 2, lines 4-5 and reference claim 16), however does not emphasize the separation of the two parts of the polyurethane from one another. Madaj, however discloses (para [0022]) that polyurethane sealant are generally supplied as multicomponent formulation which comprise a base component and an activator component, and further teaches that the additional component (such as micronized polyethylene filler, page 7, para [0064]) may be incorporated separately or combined with either the base or activator or both (para [0076]), and application technique of gunning with a caulk gun (corresponding to the kit) can be used for applying the sealant (para [0078]). Madaj however does not explicitly disclose the design of the caulk gun, but highlights (para [0088]) that one skilled in the art may make variations and modifications.
In order to optimize the caulking gun design, a skilled artisan would look to analogous art such as Markusch who teaches a process for lining pipes with polyurethane based compositions (title). Markusch teaches (col 9, lines 47-54) that the polyurethane components can be stored in separate cartridges until the polyurethane composition is to be applied, and then applied using a two-component caulking gun. Advantageously, Markusch appropriately notes that the cure time of the polyurethane is dependent on the application techniques (col 10, lines 1-3). A skilled artisan also understands that the separation of the reactive components offers more control over the start of the reaction, which can be initiated at the point of sealant application. It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized a two-component caulking gun with two separate cartridges to house Vick and Madaj’s reactive polyurethane components (base and activator, along with micronized polyethylene) as taught by Markusch, for dispensing a sealant suitable for a duct joint.
Regarding claim 9, Markusch teaches (col 9, lines 33-40) a cartridge with a membrane separating the two components of the polyurethane and a plunger to break the membrane prior to application of the composition, thus making the claimed requirement obvious.
Regarding claims 10 and 11, as discussed above when addressing claim 7, Markusch teaches the use of two separate cartridges for the two polyurethane components (base and activator). When the base and activator are separated in two cartridges, Madaj’s teaching that the micronized polyethylene filler may be incorporated separately or combined with either the base or activator or both (para [0076]), makes the claimed requirement obvious.
Response to Arguments
Applicant's arguments filed 06/05/2025 have been fully considered, please see the response below:
Applicant disagrees that Madaj’s micronized polyethylene are plastic pellets, since they provide different functionality as compared to instant specification’s plastic pellets.
This argument is not convincing since the micronized polyethylene would inherently provide the same surface chemistry as the instant specification’s polyethylene pellets and therefore Madaj continues to serve as a secondary reference to teach micronized polyethylene corresponding to the required plastic pellets.
Applicant’s notes that Madaj does not teach the cellular structure of the sealant. While it is recognized that Madaj does not explicitly state the creation of cellular or foamed polyurethane based sealant, some polyurethane formulations of Madaj could have a cellular structure. Since it is difficult to establish the cellular vs non cellular state of Madaj’s polyurethane sealants, the prior rejection over Madaj (as the primary reference) is withdrawn and the new rejection now relies on primary reference Vick to teach the pipe sealant with a cellular structure.
Applicant adds that Madaj does not disclose Shore “D” hardness. Neither the instant claims nor the instant specification recite any values of Shore “D” hardness. Claim 2 simply requires that there should be difference in hardness between the curable plastic and plastic pellets. Since the polyurethane matrix and the micronized polyethylene are substantially identical to instant specification’s curable plastic and plastic pellets respectively, they would be expected to have intrinsic Shore “D” values which will be different from each other. Therefore, applicant’s arguments are not convincing.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. The amended claims 1-2 are now rejected over the reference combination of Vick and Madaj.
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 Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi (Riviere) Kelley can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.M.D./
Examiner
Art Unit 1765
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765