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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of claims 1-12 without traverse in the reply filed on 10 Sep. 2025 is acknowledged.
Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 Sep. 2025.
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.
Claims 8-10 are 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 8 recites “functional filler” in line 3. There is no guidance in the claims or the specification of the current invention as to what constitutes a “functional filler.” Claim 9 lists some “functional fillers”; however, it is not clear what other fillers are to be considered as functional fillers.
Claims 9 and 10 recite the limitations "the at least one functional filler” and “the general filler" both in line 2, respectively. There is insufficient antecedent basis for this limitation in these claims. These claims should depend on claim 8, rather than claim 7.
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 6, 8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher and Asthana (US Patent Application 2004/0033354 A1, published 19 Feb. 2004, hereinafter Fisher).
Regarding claims 1-3, 6, 8, and 10-12, Fisher teaches a self-adhesive vibration damping tape comprising a vibration damping composition comprising a synthetic rubber, thermoplastic polymer, plasticizer, and organic filler, with the tape further comprising a release liner and an aluminum foil (constraining layer) (Abstract), and Fisher teaches the synthetic rubber is a mixture of butyl rubber and polyisoprene (butyl rubber composite) (paragraph 0007). Fisher teaches the thermoplastic polymer component is a polypropylene homopolymer (paragraph 0022); thus, Fisher teaches embodiments free of ethylene copolymers. Fisher teaches embodiments free of acceleration agents, since Fisher does not disclose the use of any acceleration agents. Fisher teaches his composition includes rosin ester resins and/or aliphatic hydrocarbon resins (paragraph 0026). Fisher teaches his composition contains coloring agents (paragraph 0030).
Fisher teaches his composition contains mixtures of inorganic fillers (filler composite), such as barium sulfate, mica, and calcium carbonate (paragraph 0025).
It is the examiner’s position that barium sulfate and mica would be considered by one of ordinary skill in the art to be functional fillers.
In light of the overlap between the improved constrained layer vibration dampening patch and that disclosed by Fisher, it would have been obvious to one of ordinary skill in the art to use an improved constrained layer vibration dampening patch that is both disclosed by Fisher and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher and Asthana (US Patent Application 2004/0033354 A1, published 19 Feb. 2004, hereinafter Fisher) in view of Fuller (“Kalar 5246 Technical Data Sheet,” published 2019, hereinafter Fuller) and further in view of Matsuda (EP 2821666 A1, published 07 Jan. 2015, hereinafter Matsuda) and evidence provided by Timco Rubber (“Material Breakdown: What is Butyl Rubber,” published 25 Aug. 2023, hereinafter Timco).
Regarding claims 4-5, Fisher teaches the elements of claim 1. Fisher teaches the synthetic rubber is a mixture of butyl rubber and polyisoprene (butyl rubber composite) (paragraph 0007).
As evidenced by Timco, butyl rubber is a copolymer of isobutylene and isoprene (page 2, What is Butyl Rubber Made Of? Section, 1st paragraph).
Fisher does not disclose the inclusion of a partially crosslinked butyl rubber.
Fuller teaches the advantages of partially cross-linked butyl rubber in a tape (page 1)
Given that Fisher and Fuller are drawn to tapes containing butyl rubber, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate some of the partially cross-linked butyl rubber as taught by Fuller into the tape taught by Fisher. Since Fisher and Fuller are both drawn to tapes containing butyl rubber, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the partially cross-linked butyl rubber as taught by Fuller into the tape taught by Fisher. Further, Fuller teaches that the partially cross-linked butyl rubber provides an excellent base for tapes, and this material has creep and slump resistance, does not require vulcanization, can be used with high levels of fillers and plasticizers, and is compatible with a wide choice of compounding ingredients (page 1, Features and Benefits section).
Fisher teaches the inclusion of recycled automative paint powder as an organic filler in his composition.
However, Fisher does not disclose the inclusion of recycled butyl rubber (isobutylene-isoprene copolymer) in his composition.
Matsuda teaches a damping sheet comprising isobutylene-isoprene rubber and/or regenerated (recycled) rubber (paragraph 0030).
Given that Fisher and Matsuda are drawn to vibration damping tapes/sheets containing elastomers and given that Matsuda discloses the equivalence and interchangeability of using isobutylene-isoprene rubber and recycled rubber, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate some recycled isobutylene-isoprene rubber as taught by Matsuda in the vibration damping tape taught by Fisher. Since Fisher and Matsuda are both drawn to vibration damping tapes/sheet containing elastomers, one of ordinary skill in the art would have a reasonable expectation of success in using some recycled isobutylene-isoprene rubber as taught by Matsuda in the vibration damping tape taught by Fisher, since Matsuda teaches that damping sheets comprising isobutylene-isoprene rubber are functionally equivalence and interchangeability with damping sheets comprising recycled rubber. Therefore, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to incorporate some recycled isobutylene-isoprene rubber into the vibration damping tape taught by Fisher.
Claims 1-3, 6-9, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fiero and Foukes (US Patent Application 2019/0299571 A1, published 03 Oct. 2019, hereinafter Fiero).
Regarding claims 1-3, 6-9, and 11-12, Fiero teaches a butyl-based constrained layer patch comprising an elastomer layer and a constraining layer, in which the composition in his elastomer layer comprises at least one polybutene, at least one butyl rubber, and fillers (Abstract). Fiero teaches his composition contains tackifiers, rheology modifying fillers, and pigments (colorants). Fiero teaches his composition contains polyisobutylene (isobutene homopolymer) as a plasticizer (paragraph 0016), tackifying resins, such as rosin ester resins and aliphatic hydrocarbon resins (paragraph 0023), and fillers, such as silica (general filler) and kaolin clay (functional filler) (paragraph 0037). Fiero teaches his composition is extruded onto a coated release liner (paragraph 0029). Fiero teaches embodiments that do not contain an acceleration agent (no mention in Fiero) nor ethylene copolymers (paragraphs 0007 and 0019).
In light of the overlap between the improved constrained layer vibration dampening patch and that disclosed by Fiero, it would have been obvious to one of ordinary skill in the art to use an improved constrained layer vibration dampening patch that is both disclosed by Fiero and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Li et al. (“Development of high damping natural rubber/butyl rubber composites compatibilized by isobutylene-isoprene block copolymer for isolation bearing,” eXPRESS Polymer Letters, Vol. 13, pp. 686-696, published 2019) teaches the use of a blend of rubbers for an isolation bearing. Mase (JP 2015/047827 A, published 16 Mar. 2015) teaches a vibration damper comprising reclaimed (recycled) rubber. Okuda et al. (JP H08/34089 A, published 06 Feb. 1996) teaches a damping sheet comprising a viscoelastic layer, a self-adhesive layer, and a release layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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, Callie Shosho can be reached on 571-272-1123. 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.
/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787
Prosecution Insights