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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 22 September 2025 is acknowledged.
Claim 18 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II, there being no allowable generic or linking claim.
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 2 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.
The limitation “the sill” lacks sufficient antecedent basis. Furthermore, as this recitation is one of intended use, the recitation is not given patentable weight.
Claims 7-10 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.
The recitation “virtual L-shape fold line” is indefinite, as it is not clear whether the fold line needs to have shape of upper-case letter “L” or if this is merely a virtual line that should folding to occur at said line, a L-shaped structure would result. For prior art rejection below, the latter interpretation is taken.
As claims 8-10 depend on claim 7, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 7, claims 8-10 are also held to be rejected.
Claim Objections
It is recommended that claim 1 be rephrased to define an entire width of the elastic sheet and further recite that the pressure-sensitive adhesive layer spans only a part of the entire width.
Furthermore, line 6 of claim 1 recites “a pressure-sensitive adhesive layer” after line 4 of claim 1 having already introduced “a pressure-sensitive adhesive layer”. It is required that any subsequent reference to an already-introduced element be preceded with a definite article (e.g. the or said).
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 4, 5, 16, and 19; and claim 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2003/0017292 A1 (“Sieber”).
Considering claims 1, 2, 16, and 19; and claim 7, Sieber discloses a multilayered tape intended to provide air-tight sealing of a building, the multilayered tape comprising a backing 1 made of a plastic material and an acrylate pressure sensitive adhesive material 2 located on the backing, wherein the pressure sensitive adhesive material 2 is only partially coextensive with the entire width of the backing 1 and extends (transversely) from one longitudinal edge of the backing 1. (Sieber ¶¶ 0001, 0002, 0012, and 0034; and Fig. 4, reproduced infra). As connoted by its name, plastic material has inherent elasticity. Sieber, especially as shown in Fig. 4 thereof, anticipates claims 1, 2, 16, 19 and claim 7.
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Considering claims 4 and 5; and claims 8 and 9, Sieber discloses (on the basis of the multilayered tape of Fig. 4) that a plurality of perforations 7 may be provided through the backing, wherein the perforations are arranged in longitudinally extending columns. These opening are considered to read on the limitation of slits. The limitation re: anchor bolt penetration is one of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02.
Claims 1, 2, 6, 13, 15, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2009/0107066 A1 (O’Leary).
Considering claims 1, 2, 6, 13, 15, and 19, O’Leary discloses a gasket tape intended to serve as an air barrier for a house, the gasket tape comprising a gasket portion 30 made of a polyethylene foam (O’Leary ¶¶ 0005, 0006, 0034, 0038, and 0044-0049). In a particular embodiment, O’Leary discloses that the gasket has a lateral portion that covers one surface of a sill and an extension portion covering another surface of the sill. (Id. ¶¶ 0044-0049 and Fig. 4, reproduced infra).
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In particular, O’Leary shows that the adhesives to extend (transversely) from one longitudinal edge of the extension portion, but that no adhesive covers the lateral portion. O’Leary discloses that the adhesives can be in the form of double sided tape. (Id. ¶ 0047). It is noted that double sided tape is well-known to be a structure having a carrier that is coated with PSA on both surfaces thereof. O’Leary further discloses the gasket to have thickness of ~0.25 inch (~6 mm). (Id. ¶ 0044). O’Leary anticipates claims 1, 2, 6, 13, 15, and 19 and claim 7.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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 7 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over O’Leary.
Considering claims 7 and 10, relevant portions of O’Leary are as discussed above. O’Leary is analogous art, for it is directed to the same field of endeavor as that of the instant application (air barrier tape). O’Leary notes that though the gasket tape shown in Fig. 4 thereof has respective adhesives on either major surface of the gasket, a lone adhesive can be alternatively located on just one surface of the gasket. (Id. ¶ 0049). With usage of adhesive on only one side being two of the three possible configurations, this disclosure is considered to be sufficiently specific to anticipate claims 7 and 10. Alternatively, given the express teachings in O’Leary for these configurations, usage of adhesive on only one side of the gasket is obvious.
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 of this title, 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 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sieber, as applied to claim 1 above.
Considering claims 3 and 17, Sieber discloses that the width of the backing 1 is 3 to 4 cm (30 to 40 mm) but can be upwards of 50 cm. (Siber ¶¶ 0031 and 0032). It is abundantly clear that the adhesive spans a portion thereof. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Claims 6 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sieber, as applied to claim 1 above, and further in view of U.S. 2018/0002574 A1 (“Hille”).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sieber, as applied to claim 7 above, and further in view of Hille.
Considering claims 6 and 10, Sieber is analogous art, for it is directed to the same field of endeavor as that of the instant application (air-tight sealing tape). Sieber differs from the claimed invention, as although it discloses usage of plastic backing material, it is silent re: usage of elastic resin foam. However, in the art of adhesive tape materials used to seal houses, it is known to use closed-cell foam plastic to form a carrier (viz. backing) of the adhesive tape. (Hille ¶ 0007). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used a closed-cell foam, as such material is impermeable to gas and water and is suited as a vapor barrier. (Id.).
Considering claims 11-15, Hille discloses that the closed-cell foamed plastic can be made of, inter alia, polyethylene, and having thickness of less than 5 mm. (Id. clm. 19). The thickness range overlaps that as recited in claim 13. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness.
With Hille expressly teaching that the closed-cell foam is impermeable to gas, with the polymeric composition of the foam also being polyethylene, the other recited properties are considered to naturally flow from the teaching of closed-cell polyethylene foam.
Claims 3 and 17 are rejected under 35 U.S.C. 103 as unpatentable over O’Leary, as applied to claim 1 above.
Considering claims 3 and 17, O’Leary discloses that the width of the gasket is ~6 to ~24 inches (~150 to ~600 mm). (O’Leary ¶ 0049). O’Leary also notes that sill plates have thickness of ~2 inch (~51 mm) and width of ~6 inch (~150 mm). (Id. ¶ 0024). The various extension and lateral portions of the gasket are variously shown to be respectively greater than or alternatively less than thickness and width of sill plates. (Id. Figs. 2 and 5). With the adhesive more or less coextensive with the extension portion, and with the lateral portion having width equal to total width less that of the extension portion, it is readily apparent that the claimed ranges are obvious from the workable ranges disclosed in O’Leary. Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”; MPEP 2144.05 II.A.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781