DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 24, 2025 has been entered.
Response to Amendment
The amendments filed on October 14, 2025 have been entered. Claims 1-4, 6, 8-9, 11-13, and 15-19 are pending in the application.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-4, 6, and 8-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Grasse et al (US 2009/0155472 A1).
Regarding Claims 1, 4, and 6: Grasse teaches a sealant composition comprising a sealant binding composition/polymer dispersion, hollow synthetic microspheres, and hollow ceramic microspheres (abstract), wherein the ceramic microspheres may be replaced with hollow glass microspheres (para. 0048) and the synthetic hollow microspheres are polymer-based (para. 0049). Grasse further teaches that the composition is curable/hardenable and displays substantially no shrinkage after hardening (para. 0087).
Regarding Claim 3: Grasse teaches a latex (para. 0025).
Regarding Claim 8: Grasse teaches inorganic fillers and mineral aggregates (para. 0058).
Regarding Claim 9: Grasse teaches additives comprising pigments, dispersing agents, and thickeners (para. 0058).
Claims 11 and 13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Grasse et al (US 2009/0155472 A1).
Regarding Claim 11: Grasse teaches a method making a sealant composition comprising a sealant binding composition/polymer dispersion, hollow synthetic microspheres, and hollow ceramic microspheres (abstract), wherein the ceramic microspheres may be replaced with hollow glass microspheres (para. 0048) and the synthetic hollow microspheres are polymer-based (para. 0049). Grasse further teaches that the composition is curable/hardenable and displays substantially no shrinkage after hardening (para. 0087), wherein the method comprises forming a mixture and mixing the mixture (para. 0078).
Regarding Claim 13: Grasse teaches additives comprising pigments, dispersing agents, and thickeners (para. 0058).
Claims 15-16 and 19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Grasse et al (US 2009/0155472 A1).
Regarding Claims 15-16: Grasse teaches a method of using a sealant composition comprising a sealant binding composition/polymer dispersion, hollow synthetic microspheres, and hollow ceramic microspheres (abstract), wherein the ceramic microspheres may be replaced with hollow glass microspheres (para. 0048) and the synthetic hollow microspheres are polymer-based (para. 0049). Grasse further teaches that the composition is curable/hardenable and displays substantially no shrinkage after hardening (para. 0087), wherein the method comprises applying the composition to a work surface such as a wall (para. 0085).
Regarding Claim 19: Grasse teaches additives comprising pigments, dispersing agents, and thickeners (para. 0058).
Claim 17 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Grasse et al (US 2009/0155472 A1), as evidenced by Wallender (12 Roofing Materials to Consider for Your House, Updated Feb 4 2019, https://www.thespruce.com/).
Grasse teaches the limitations of claim 15, as set forth above. Grasse further teaches that the work surface may be a roof (para. 0085). However, Grasse is silent to the work surface material.
Wallender teaches that aluminum is a standard and common roofing material (p. 6). Therefore, one of ordinary skill in the art would be able to envision a sealant formulated for use on roofs as being able to be used on aluminum.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Grasse et al (US 2009/0155472 A1) in view of Zook et al (US 2002/0013428 A1).
Grasse teaches all of the limitations of claim 1, as set forth above. However, Grasse is silent to the sealant binder composition comprising a first sealant polymer and a second sealant polymer, wherein the first sealant polymer has a glass transition temperature lower than that the second sealant polymer.
Zook teaches a sealant composition comprising a multimodal polymer (para. 0002), which reads on the first and second sealant polymers. The two components of the multimodal polymer have different glass transition temperatures (para. 0015, ratio of each mode may be determined by average Tg). Zook teaches that the multimodal polymer system improves the strength and toughness of the sealant composition, even with high loadings of lightweight fillers (abstract). Zook and Grasse are analogous art because they are directed toward the same field of endeavor, namely sealant compositions comprising lightweight fillers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a multimodal polymer system, wherein the two modes of the polymer system have different glass transition temperatures, as the sealant binder polymer in the composition taught by Grasse, and they would have been motivated to do so for the purpose of improving the strength and toughness of the sealant.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Grasse et al (US 2009/0155472 A1) in view of Zook et al (US 2002/0013428 A1).
Grasse teaches all of the limitations of claim 11, as set forth above. However, Grasse is silent to the sealant binder composition comprising a first sealant polymer and a second sealant polymer, wherein the first sealant polymer has a glass transition temperature lower than that the second sealant polymer.
Zook teaches a sealant composition comprising a multimodal polymer (para. 0002), which reads on the first and second sealant polymers. The two components of the multimodal polymer have different glass transition temperatures (para. 0015, ratio of each mode may be determined by average Tg). Zook teaches that the multimodal polymer system improves the strength and toughness of the sealant composition, even with high loadings of lightweight fillers (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a multimodal polymer system, wherein the two modes of the polymer system have different glass transition temperatures, as the sealant binder polymer in the composition taught by Grasse, and they would have been motivated to do so for the purpose of improving the strength and toughness of the sealant.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Grasse et al (US 2009/0155472 A1) in view of Zook et al (US 2002/0013428 A1).
Grasse teaches all of the limitations of claim 15, as set forth above. However, Grasse is silent to the sealant binder composition comprising a first sealant polymer and a second sealant polymer, wherein the first sealant polymer has a glass transition temperature lower than that the second sealant polymer.
Zook teaches a sealant composition comprising a multimodal polymer (para. 0002), which reads on the first and second sealant polymers. The two components of the multimodal polymer have different glass transition temperatures (para. 0015, ratio of each mode may be determined by average Tg). Zook teaches that the multimodal polymer system improves the strength and toughness of the sealant composition, even with high loadings of lightweight fillers (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a multimodal polymer system, wherein the two modes of the polymer system have different glass transition temperatures, as the sealant binder polymer in the composition taught by Grasse, and they would have been motivated to do so for the purpose of improving the strength and toughness of the sealant.
Response to Arguments
Applicant’s arguments with respect to claims 1-4, 6, 8-9, 11-13, and 15-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767