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 .
Response to Amendment
Applicant’s amendment filed on September 29, 2025 has been entered. Claims 1 and 8 have been amended. New Claim 23 has been added. As such, Claims 1-3, 8-13, and 23 are currently pending in the application.
Specification
The use of the terms “Powerlon UltraPerm Air Barrier” and “FLX17/FLX20/FLX57,” which are both trade names or a marks used in commerce, has been noted in this application. However, these terms should be accompanied by the generic terminology for what the materials actually are so that the nature of the product is clear. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The EXAMPLES section of the Specification references “Felix” and “ITP” for nonwoven fabrics used in the invention and “SA 126” for a saturant. However, the Specification does not establish the nature of such fabrics and saturant, such as the composition or material used. Appropriate correction or clarification is required.
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.
Claims 1-3 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2018/0237662 to Widenbrant et al. (“Widenbrant”) in view of U.S. Patent Application Publication No. 2003/0219613 to Boylan (“Boylan”).
With regard to Claim 1, Widenbrant discloses a self-sealing multi-layer article for use in building construction that are water vapor permeable and liquid impermeable. See, e.g., Abstract, paragraphs [0002] to [0010], entire document. Widenbrant teaches that the article is self-wound. Figure 7 and paragraph [0131]. Widenbrant discloses that the article comprises one or more elastic porous layers comprising a nonwoven fabric. Paragraph [0058]. Widenbrant discloses that the article comprises a polymer layer, paragraph [0066], which can be rendered with some degree of hydrophobicity by inclusion of a hydrophobic additive, such as hydrophobic fumed silica. See, e.g., paragraphs [0191], [0207], and [0235]. Widenbrant does not disclose that the hydrophobic additive is selected from paraffin wax, polyethylene wax, fatty acids, carbodiimide, or carbamate. Nonetheless, such a modification is within the purview of a person having ordinary skill in the art. Boylan is also related to barrier polymer layers for use in building materials that are liquid impermeable and water vapor permeable. See, e.g., Abstract, paragraph [0010], entire document. Boylan teaches that a polymer layer can be provided as a hydrophobic barrier coating utilizing paraffin wax as an additive to provide a film that has a hydrostatic head barrier sufficient to prevent passage of fluids through it but allow passage of water vapor, and which can be bonded to a nonwoven fabric. Paragraph [0010]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to use paraffin wax as an additive to the polymer layer disclosed by Widenbrant, since Boylan teaches that such an additive is well known in the same field of endeavor, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). Widenbrant discloses that the article also includes an adhesive layer that can completely coated on the 100% of a surface of the nonwoven layer, paragraphs [0054] and [0105] and Figure 2, and have a thickness of about 3 mils to 25 mils. Paragraph [0106]. 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). With regard to Claim 2, Widenbrant discloses that, in some embodiments, the polymeric material of the polymeric layer is partially impregnated into the nonwoven porous layer. Paragraphs [0066]. In such instances, that portion of polymer that infiltrates the nonwoven layer satisfies the structural limitation of a saturant. With regard to Claim 3, Widenbrant discloses that the polymer layer, which penetrates the nonwoven layer, can contain crosslinks derived from a trialkoxy silane. Paragraph [0052]. With regard to Claims 8 and 23, Widenbrant teaches that the article has a permeability greater than 10 perms, paragraph [0128], and provides examples wherein the elastic porous layer includes a nonwoven fabric and the permeability is greater than 23 perms. Table 1, Examples 6 and 7. With regard to Claim 9, Widenbrant teaches the article satisfies nail sealability testing. Paragraphs [0007] and [0052] and Table 1. With regard to Claim 10, Widenbrant teaches that the adhesive can be acrylic adhesive, paragraph [0098], which is solvent-based or UV-curable. Paragraphs [0097], [0101], and [0102]. With regard to Claim 11, Widenbrant teaches that the polymer layer can be foamed. Paragraph [0079].
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Widenbrant in view of Boylan, as applied to Claim 1 above, and further in view of Yen et al., “Effect of Addition of Polyethylene Glycol on the Moisture Transfer and Waterproof Properties of Foam-Finished Nylon Fabrics,” J. Polym. Res., Vol. 4, No. 4, 253-260, October 1997 (“Yen”).
With regard to Claims 12 and 13, the combination of Widenbrant with Boylan does not disclose that the polymer layer further includes a hydrophilic additive. Yen is related to waterproof, moisture vapor-permeable polymer solutions that can be foamed into a film and bonded to a fabric. See, e.g., Abstract, entire document. Yen teaches that micropore distribution in a foamed polymer film can be improved by increasing viscosity, page 253, which can be achieved by incorporating a hydrophilic additive, such as polyethylene glycol, into the foaming solution. Page 254. Yen concludes that improved water vapor permeability can be created by incorporation of hydrophilic polyethylene glycol into the film. Page 259. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a hydrophilic additive, such as polyethylene glycol, into the polymer layer disclosed by the combination of Widenbrant with Boylan in order to improve micropore distribution and increase water vapor permeability, as shown to be known by Yen.
Response to Arguments
Applicant’s arguments with respect to Claims 1-3, 8-13, and 23 have been considered but are moot because of the new ground of rejection. To the extent that some of the arguments do apply to the references used in the new ground of rejection, then those arguments are addressed below.
Applicant argues that a substituted specification accompanies the response to address the use of trade names in the specification. However, the amendments made to the specification in the response are insufficient to overcome the objection. As noted above, the trademarked terms should be accompanied by the generic terminology for what the materials actually are so that the nature of the product is clear. Applicant’s amendment did not provide the required generic terminology. The scope of a trademark or trade name can change over time, and Applicant’s amendments do not clarify the materials actually used outside the scope of what the trademark purports to represent, which again, is subject to any whim of the trademark holder. Moreover, the amendment does not address the EXAMPLES section of the specification to denote the compositions or materials represented by the references “Felix,” “ITP,” or “SA 126.” It is unclear what these materials actually are. As such, the objection to the specification is maintained.
Applicant argues that Widenbrant does not provide a clear teaching of a hydrophobic polymer. Applicant argues that the exemplary polymeric materials listed in paragraphs [0066] to [0078] is not limited to hydrophobic polymers. The Examiner disagrees. First, the polymers listed in paragraphs [0066] to [0078] are generally substituted with silicon-containing groups, which is a clear sign of hydrophobicity. Second, Widenbrant teaches that their invention functions as a “water barrier,” Abstract, so it is unclear how the material would be able to function as a water barrier if it did not have some degree of hydrophobicity. Third, Widenbrant discloses that the polymer layer includes hydrophobic fumed silica as an additive. See, e.g., paragraphs [0191], [0207], and [0235]. This would necessarily provide some degree of hydrophobicity to the polymer layer. There is no claim limitation related to the quantity of hydrophobicity required. As such, Widenbrant satisfies the claim limitation.
Applicant argues that Widenbrant does not teach 100% adhesive coverage, and that paragraphs [0054] and [0105] specifically teach 90% coverage as an upper limit. The Examiner disagrees. The disclosure of 90% coverage in Widenbrant is specifically directed to embodiments where the adhesive is applied discontinuously or in a pattern. However, Widenbrant specifically discloses that the adhesive, in another embodiment, is applied continuously. Paragraphs [0054] (“In some embodiments, the pressure sensitive adhesive is a permeable pressure sensitive adhesive that is continuously disposed on at least one of a second major surface 124 of the elastic porous layer 120”) and [0105] (“If a water vapor permeable pressure sensitive adhesive is used, the self-sealing article may be completely coated on one side.”).
Applicant argues that Widenbrant lacks a motivation to incorporate a hydrophobic additive in the polymer layer. The Examiner disagrees. Widenbrant discloses that hydrophobic fumed silica is added to the polymer layer. Paragraphs [0191], [0207], and [0235]. The new rejection is based upon selection of a different hydrophobic additive based upon the teachings Boylan.
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.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789