RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The double patenting rejections made of record in the office action mailed on 04/08/2025 have been withdrawn due to Applicant’s terminal disclaimer filed on 10/06/2025.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 3, 5-6, 8-9, 11 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau (U.S. Pat. No. 6,235,363) in view of Lane et al. (U.S. Pub. No. 2006/0251890).
Regarding claim 1, with respect to the preamble and the limitations “for sealing a transition from a metal facia strip to a PVC membrane on a roof”, Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the basic structure of the prior art reference is capable of “sealing a transition from a metal facia strip to a PVC membrane on a roof” or being “secured to a PVC membrane on a roof creating a step off from [a] metal facia strip”, then the prior art reference meets the claim limitation even if the structure in the prior art is not being applied as described by the intended use.
Bilodeau teaches a composite which may be used as a label or tape comprising a first substrate (20), an adhesive (30), a barrier layer (40) and a release liner (50) wherein the composite is intended to be adhered to a second substrate. (Abstract, Fig.1 and col. 2, lines 48-61). The first substrate may be PVC (see claim 6). The barrier layer is intended to prevent migration of components from the adhesive layer and substrates. (col. 1, lines 52-62, col 3, lines 43-62 and col. 8, lines 50-64). The adhesive layer may be a pressure-sensitive adhesive or heat-activatable adhesive. (col. 4, lines 22-24). As can be seen in Fig. 1, the adhesive layer and barrier layer extend from one edge to an opposing second edge of the first substrate, across both the width and length thereof. Bilodeau teaches that the barrier layer is intended to prevent migration of components from the adhesive layer and substrates, which would include plasticizers. (col. 1, lines 52-62, col 3, lines 43-62 and col. 8, lines 50-64).
Bilodeau does not teach a primer layer between the barrier layer and the adhesive layer.
Lane et al. teaches a pressure sensitive adhesive laminate comprising a first filmic polymer, an adhesive layer and a tackifier layer. (Abstract). Lane et al. teaches applying a barrier layer onto the outer surface of the first filmic layer to prevent migration of constituents into the filmic layer. (par. [0054]). Lane et al. further teaches applying a primer layer between the two layers for enhancing adhesion between the adhesive and filmic layer. (Id.).
It would have been obvious to one of ordinary skill in the art to apply a primer layer onto the surface of the barrier layer.
One of ordinary skill in the art would have found it obvious to provide a primer layer on the surface of the barrier layer in order to improve adhesion between the adhesive and the barrier layer.
Regarding claim 3, Bilodeau et al. teaches that the adhesive material may include polyisobutylene. (col. 4, lines 33-40).
Regarding claim 5, Bilodeau teaches that the barrier layer is intended to prevent migration of components from the adhesive layer and substrates, which would include plasticizers. (col. 1, lines 52-62, col 3, lines 43-62 and col. 8, lines 50-64).
Regarding claim 6, the barrier layer may be selected from polar polymers derived from epoxides and polyols. (col. 8, lines 51-64).
Regarding claim 8, the limitation “edge treatment for a roof comprising a PVC cover strip” is rejected for substantially the same reasons as claim 1 above, since the limitations do not impart additional structural features to the PVC cover strip of claim 1.
Regarding claim 9, with respect to the preamble limitation “for sealing a metal facia strip secured to a PVC membrane on a roof creating a step-off from the metal facia strip to the PVC membrane”, Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the basic structure of the prior art reference is capable of “sealing a transition from a metal facia strip to a PVC membrane on a roof” or being “secured to a PVC membrane on a roof creating a step off from [a] metal facia strip”, then the prior art reference meets the claim limitation even if the structure in the prior art is not being applied as described by the intended use.
Bilodeau teaches a composite which may be used as a label or tape comprising a first substrate (20), an adhesive (30), a barrier layer (40) and a release liner (50) wherein the composite is intended to be adhered to a second substrate. (Abstract, Fig.1 and col. 2, lines 48-61). The first substrate may be PVC (see claim 6). The barrier layer is intended to prevent migration of components from the adhesive layer and substrates. (col. 1, lines 52-62, col 3, lines 43-62 and col. 8, lines 50-64). The adhesive layer may be a pressure-sensitive adhesive or heat-activatable adhesive. (col. 4, lines 22-24). As can be seen in Fig. 1, the adhesive layer and barrier layer extend from one edge to an opposing second edge of the first substrate, across both the width and length thereof. Bilodeau teaches that the barrier layer is intended to prevent migration of components from the adhesive layer and substrates, which would include plasticizers. (col. 1, lines 52-62, col 3, lines 43-62 and col. 8, lines 50-64).
With respect to the limitation “a pressure-sensitive adhesive layer coating the primer layer and extending between opposing edges a distance sufficient to span the step-off and be bondable to each of the metal facia strip and to the PVC membrane”, the composite disclosed in Bilodeau meets the structural limitations of the invention as claimed and would therefore “bondable” to whatever surface or combination of surfaces containing a “step-off” as presently claimed, including two surfaces proximate to one another which spawn the width or length of the adhesive layer. The present claimed intended uses do not impart any structural limitations to the PVC cover strip as claimed.
Bilodeau does not teach a primer layer between the barrier layer and the adhesive layer.
Lane et al. teaches a pressure sensitive adhesive laminate comprising a first filmic polymer, an adhesive layer and a tackifier layer. (Abstract). Lane et al. teaches applying a barrier layer onto the outer surface of the first filmic layer to prevent migration of constituents into the filmic layer. (par. [0054]). Lane et al. further teaches applying a primer layer between the two layers for enhancing adhesion between the adhesive and filmic layer. (Id.).
It would have been obvious to one of ordinary skill in the art to apply a primer layer onto the surface of the barrier layer.
One of ordinary skill in the art would have found it obvious to provide a primer layer on the surface of the barrier layer in order to improve adhesion between the adhesive and the barrier layer.
Regarding claim 11, Bilodeau et al. teaches that the adhesive material may include polyisobutylene. (col. 4, lines 33-40).
Regarding claim 20, Bilodeau teaches that the barrier layer is intended to prevent migration of components from the adhesive layer and substrates, which would include plasticizers. (col. 1, lines 52-62, col 3, lines 43-62 and col. 8, lines 50-64).
Regarding claim 21, the barrier layer may be selected from polar polymers derived from epoxides and polyols. (col. 8, lines 51-64).
Claims 2, 4, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau (U.S. Pat. No. 6,235,363) in view of Lane et al. (U.S. Pub. No. 2006/0251890), further in view of Alexander et al. (U.S. Pat. No. 5,985,981).
Bilodeau and Lane are relied upon as described in the rejection of claim 1, above.
Regarding claims 2, 4, 10 and 12, Bilodeau in view of Lane et al. does not teach that the primer layer is based on one of butyl, polyisobutylene or halobutyl polymers with reduced solids content relative to the pressure sensitive adhesive material. Bilodeau et al. does disclose that the adhesive material may include polyisobutylene. (col. 4, lines 33-40).
Alexander et al. discloses elastomeric primers for use with elastomeric membranes such as EPDM. (Abstract). Alexander et al. discloses the use of adhesive tapes or solvent based adhesives are applied to these elastomeric materials and that primers are often used on such membranes. (col. 1, lines 14-18). Alexander et al. discloses that primers and adhesives are similar in composition, serve similar purposes but typically contain a lower solids content. (col. 1, lines 20-24).
It would have been obvious to one of ordinary skill in the art to use a primer material having a similar composition as the adhesive selected in Bilodeau but with a lower solids content as disclosed in Alexander et al.
One of ordinary skill in the art would have found it obvious to use a primer composition as disclosed in Alexander et al. since one of ordinary skill in the art would have a reasonable expectation of successfully being able to use a primer the composition of which is similar to the adhesive but with a lower solids content in Bilodeau. Furthermore, using such a primer would be advantageous from the standpoint of simplifying the manufacturing process of the composite since one of ordinary skill in the art would be able make the primer by diluting the adhesive composition which would already be used as the adhesive layer. One of ordinary skill in the art would therefore not require additional specialized primer composition.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau (U.S. Pat. No. 6,235,363) in view of Lane et al. (U.S. Pub. No. 2006/0251890), further in view of Bieber et al. (U.S. App. Pub. No. 2016/0145406).
Bilodeau in view of Lane et al. is relied upon as described in the rejection of claim 1, above.
Bilodeau et al. does not disclose an adhesive that is bromobutyl rubber.
Bieber et al. teaches a pressure sensitive adhesive foam material for holding, marking and sealing which have improved peel adhesion, tack and shear strength. (Abstract and par. [0004]-[0005] and [0016]-[0017]). The adhesives may be used in a variety of final products including labels and tapes. (par. [0167]). Bieber et al. discloses that suitable pressure sensitive adhesive foam materials include rubber-based elastomeric material including bromobutyl rubbers (par. [0020]-[0024]).
It would have been obvious to one of ordinary skill in the art to use bromobutyl adhesive foams as the adhesive layer material in Bilodeau.
One of ordinary skill in the art would have found it obvious to use a bromobutyl adhesive foam material in Bilodeau et al. in view of their improved properties with respect to adhesiveness, tack and shear strength which makes them suitable for use in applying to a variety of substrates. Furthermore, one of ordinary skill in the art would have a reasonable expectation of success in using these types of adhesives in Bilodeau et al. for use in a label in view of the explicit disclosure in Bieber et al. regarding the suitability thereof for that purpose.
Allowable Subject Matter
Claim 13 is allowed.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 10/06/2025 regarding the 35 U.S.C. § 103 rejections of claims 1-12 and 20-21, made of record in the office action mailed on 04/08/2025, have been carefully considered but are deemed unpersuasive.
Applicant argues that the language in par. [0054] of Lane describes the use of a primer layer for enhancing adhesion between the adhesive base layer (B) and the outer filmic layer (A) but that the presence of the primer layer is in the alternative to, rather than together with, the barrier layer described in the same paragraph. Applicant therefore argues that it is not contemplated by the disclosure in Lane that a primer layer is applied onto the surface of a barrier layer by use of the language “to enhance adhesion of the adhesive base polymer layer to the outer filmic layer”
The Examiner disagrees. Paragraph [0054] states that the “inner surface of the outer filmic layer may be coextruded with a barrier layer”. The language therefore suggests that the barrier layer structure with the inner surface containing the barrier layer is being referred to as the “outer filmic layer” in the phrase “to enhance adhesion of the adhesive base polymer layer to the outer filmic structure”. The language “there may also be included” in the context of the previous sentence in the paragraph is being read as “in addition to” the presence of the barrier layer, the primer layer may also be provided. This makes sense in the context that the barrier layer would potentially disrupt adhesion between the outer filmic layer and the adhesive.
Furthermore, even if Applicant’s interpretation of the language is correct, when combined with the teachings of Bilodeau et al. one of ordinary skill in the art would have found it obvious to include a primer layer between the “barrier layer” and the “adhesive layer” in the primary reference. This is because the primer layer is of Lane et al. is taught to enhance adhesion between a non-adhesive substrate (the outer filmic layer) and an adhesive structure (the adhesive layer). Bilodeau et al. has the same structure as found in Lane et al. with the “barrier layer” and the “adhesive layer” disclosed therein. Therefore, even if the a “barrier layer” isn’t present in Lane et al. when the primer layer is, as suggested by Applicant, one of ordinary skill in the art would still have found it obvious to include a primer layer between a non-adhesive substrate/layer and an adhesive layer, should adhesion between the two be a problem.
The rejection of claims 1-12 and 20-21 are therefore maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 10/24/2025