DETAILED ACTION
This Office Action is in response to Applicant’s response to a Nonfinal rejection filed May 14, 2026.
Claims 14-18 are withdrawn due to a previous restriction requirement.
Claims 1-4, 6-10, 12-13, 19, and 20 are currently pending.
This Office Action is FINAL.
Claim Rejections - 35 USC § 112
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.
Claim 3 and 20 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 3 recites “the sum of the amounts of a)+b)+d)+e) comprises 15-65 wt.-%”, which causes confusion. It is unclear if component e) is required in the acoustic damping material. For purposes of examination, the claim is interpreted to include e) in the acoustic damping material.
Claim 20 recites “at least one polyolefin P3 in an amount of from 25 wt.% to 75 wt.%”. It is unclear what the basis for the percentage is. The claim is interpreted as based on the total weight of the at least one thermoplastic polymer P in view of instant specification page 18, lines 1-3.
Claim Analysis
Summary of Claim 1:
An acoustic damping material comprising:
At least one thermoplastic polymer P,
At least one hydrocarbon resin HR,
At least one solid particulate filler F,
e) optionally at least one plasticizer PL,
f) optionally at least one paraffin wax PW,
wherein the at least one thermoplastic polymer P is present in an amount of 1.5 20 wt. %1.5- 15 wt.-%of the total weight of the acoustic damping material,
the at least one solid particulate filler F comprises at least 35 wt.-% of the total weight of the acoustic damping material.
wherein the at least one thermoplastic polymer P comprises:
a1) at least one hard thermoplastic polymer P1 having a melt flow index (MFI) determined according to ISO 1133 (190°C/2.16 kg) of not more than 50 g/10 min,
a2) at least one soft thermoplastic polymer P2 having a melt flow index (MFI) determined according to ISO 1133 (190°C/2.16 kg) of at least 75 g/10 min, and
a3) at least one polyolefin P3, and
wherein the at least one solid particulate filler F is selected from the group consisting of calcium carbonate, magnesium carbonate, talc, kaolin, wollastonite, feldspar, montmorillonite, dolomite, silica, cristobalite, iron oxide, iron nickel oxide, barium ferrite, strontium ferrite, barium-strontium ferrite, hollow ceramic spheres, hollow glass spheres, hollow organic spheres, glass spheres, mica, barium sulfate, and graphite.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 6-10, 12, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wheeler (US 20130043091) in view of Bai et al. (US 20180247632).
Regarding claim 1, 6, and 8, Wheeler et al. disclose in Example 1 a damping layer comprising thermoplastic polymers Elvax 4310 and Excorcene ultra LD 720, having a MFI of 500 g/10 min and 1.6 g/10min respectively (as evidenced by datasheets provided in this Office Action and the Office Action dated March 17, 2025), an aromatic petroleum hydrocarbon resin Wingtack 86, and a talc filler Mistron Vapor R, and plasticizer Indopol H-1500 (see Table 1, [0027], see also datasheet for Elvax 4310 and Mistron Vapor R provided in this Office Action and Excorcene Ultra LD 720 provided in the Office Action dated September 10, 2025), thereby reading on P2, P1, HR, F, and PL as recited in the instant claim.
The paraffin wax PW is optional and need not be present.
Wheeler discloses the amount of thermoplastic P is in a total amount of 8.0 wt% and filler F is 24 wt% based on the total composition, thereby lying within the claimed range of P, but lying outside the range of F.
However, Wheeler broadly teaches the amount of filler may be present in an amount of about 10 to about 50 weight percent (claim 5), thereby overlapping the claimed range. 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Wheeler.
Wheeler is silent on the thermoplastic polymer further comprising a polyolefin P3 as described in the instant claim 1, 6, and 8.
Bai et al. teach a damping hot melt composition comprising a poly alpha olefin (claim 1). Bai et al. further teach in Table 1 example 1 Vistamaxx 6202 was used, which has a propylene content of 85 wt% and an ethylene content of 15 wt% as evidenced by the data sheet provided in the Office Action dated March 17, 2025, thereby lying within the claimed range of claim 8. Bai et al. offer the motivation that the composition provides good sound deadening performance for the automotive industry [0001]. Wheeler is also interested in providing a damping material with noise reduction [0017]. Therefore, it would have been obvious to one of ordinary skill in the art to use the polyolefin with the amounts of propylene and ethylene of Bai et al. with the damping material of Wheeler et al. with reasonable expectation that the sound deadening performance would improve.
Regarding claim 2, Wheeler does not disclose the damping material comprises bitumen (Example 1), thereby reading on the claim.
Regarding claim 3, Wheeler discloses in Example 1 8 wt% of thermoplastic P, 16.0 wt% of hydrocarbon HR, and 11.5 wt% of plasticizer P (Table 1), equivalent to a sum of 35.5 wt% based on the total weight of the damping material and thereby lying within the claimed range.
Regarding claim 4 and 19, Wheeler discloses in Example 1, the damping material comprises 8 wt% of thermoplastic P, thereby lying within the claimed ranges.
Regarding claim 7, Wheeler discloses in Example 1 thermoplastic polymers Elvax 4310 and Excorcene ultra LD 720 which are both ethylene vinyl acetate copolymers. Excorcene ultra LD 720 has a vinyl acetate content of 18.5 wt% and Elvax 4310 has a vinyl acetate content of 25 wt%, thereby lying within the claimed ranges (as evidenced by datasheets provided in this Office Action and the Office Action dated September 10, 2025).
Regarding claim 9, Wheeler discloses in Example 1 Wingtack 86 as the hydrocarbon resin, which has a softening point of 87°C, thereby lying within the claimed range (see datasheet provided in this Office Action). The average molecular weight and glass transition temperature are considered optional and therefore are obvious.
Regarding claim 10, Wheeler discloses in Example 1, the damping material comprises 16 wt% of HR and 24 wt% of F, thereby lying within the claimed range of HR but lying outside the range of F.
However, Wheeler broadly teaches the amount of filler may be present in an amount of about 10 to about 50 weight percent (claim 5), thereby overlapping the claimed range. 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Wheeler.
Regarding claim 12, Wheeler discloses a talc filler as recited in the rejection for claim 1 above.
Wheeler does not teach additional solid particulates F2 and F3 are present in Example 1.
However, Wheeler broadly teaches one or more filler may be used such as calcium carbonate, magnesium carbonate, clay, silica, or mica [0026]. Therefore, it would have been obvious to one of ordinary skill in the art to add additional fillers F2 and F3 to Example 1 as taught by Wheeler.
Regarding claim 20, Wheeler does not disclose the amount of polyolefin P3 as recited in the instant claim.
However, Bai et al. teaches the amount of polyolefin in the damping material composition is 10-40 wt% based on the total weight of the composition. Bai et al. also teaches at least one additive such as thermoplastic compounds is present in an amount of 10-70 wt% based on the total weight of the composition [0009-0056]. Therefore, Bai et al. teaches the amount of polyolefin P3 present in the total amount of thermoplastic P ranges from 12.5 wt% to 100 wt%, thereby overlapping the claimed range (calculated from taking a basis of 100 g of the total composition, 10 g of polyolefin and 70 g of additive that is thermoplastic, calculated to be 10 g of polyolefin/80 g of total thermoplastic*100 = 12.5 wt% of polyolefin of the total thermoplastic composition. 100 wt% of polyolefin is under the assumption no other thermoplastic compounds are present since the additive can be other compounds). Bai et al. offer the motivation that the composition provides good sound deadening performance for the automotive industry [0001]. Wheeler is also interested in providing a damping material with noise reduction [0017]. Therefore, it would have been obvious to one of ordinary skill in the art to use the polyolefin with the amounts of propylene and ethylene of Bai et al. with the damping material of Wheeler et al. with reasonable expectation that the sound deadening performance would improve.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Wheeler (US 20130043091) in view of Bai et al. (US 20180247632) in further view of Engels et al. (DE 102014226677).
The examiner will refer to the English translation provided in the Office Action dated March 17, 2025.
The damping material disclosed in claim 1 is incorporated herein by reference.
Regarding claim 13, Wheeler discloses plasticizer Indopol H-1500 is present in an amount of 11.5 wt% (Table 1), thereby lying within the claimed range of PL.
Wheeler is silent on the acoustic damping material comprising paraffin wax PW in the amount recited in the instant claim.
Engels et al. teach the amount of plasticizer present is between 0 and 35% by weight [0027], thereby overlapping the claimed range. Engels et al. teach paraffin waxes between 0 to 30% may be added. Engels et al. offer the motivation that the viscosity may be reduced to a desired viscosity [0029]. Wheeler is also interested in modifying the viscosity of the damping layer [0025]. Therefore, it would have been obvious to one of ordinary skill in the art to use the paraffin wax as taught by Engels et al. with the damping materials of Wheeler with reasonable expectation that the viscosity may be reduced.
Response to Arguments
Applicant’s arguments, see page 7-10, filed May 14, 2026, with respect to the rejection(s) of claims 1-4, 7, 9-10, 12 and 19 under 35 U.S.C. 103 over Wheeler have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Wheeler in view of Bai et al.
Applicant states “In view of the disclosure of Bai, one of ordinary skill in the art would have no motivation to take Bai’s primary base polymer and somehow repurpose it as a minor third thermoplastic component in Wheeler’s butyl rubber system.”
The examiner disagrees. Both Wheeler and Bai et al. teach compositions comprising thermoplastic resins used to form a damping materials. Furthermore, Bai et al. does teach a mixture of thermoplastics may be present (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art to try the combination of the thermoplastic resins of Wheeler with the polyolefin of Bai et al. since both are related to damping materials. (See MPEP 2143.E).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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