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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/24/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites "a thermoplastic hot-melt adhesive sealant formulation" in line 1. Applicant has not pointed out where the amended claim is supported, nor does there appear to be a written description of the claim limitation "thermoplastic" sealant formulation in the application as filed. See 2163.04.
Additionally, claim 1 recites "substantially free of vulcanizing agents" in line 2. Any negative limitation or exclusionary proviso must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion. See MPEP 2173.05(i). The application as filed does not recite vulcanizing agents or disclose their exclusion from the sealant formulation.
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 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (CN 112280233, with English machine translation).
Regarding claim 11, Liu discloses an adhesive sealant formulation for tires ([0002]) that reads on the claimed composition comprising:
- from a minimum of 20% to a maximum of 35% by weight of the total formulation of block copolymers chosen from the group consisting of: polyisobutadiene (PIB), styrene-isoprene-styrene (SIS), styrene-butadiene-styrene (SBS), styrene-isoprene-butadiene-styrene (SIBS), styrene-ethylene-butadiene-styrene (SEBS), styrene-ethylene-propylene-styrene (SEPS), thermoplastic elastomers (TPE) (Liu discloses 30 wt% polymer rubber elastomer that includes SBS, SIBS, SEBS, SEPS [0039,0040]);
- from a minimum of 55% to a maximum of 75% by weight of the total formulation of resins chosen from the group consisting of: rosin resins, esterified rosin resins and other rosin derivatives, hydrocarbon resins, hydrogenated cycloaliphatic hydrocarbon resins, phenolic resins, styrene resins, or mixtures thereof (Liu discloses 55 wt% tackifier that includes rosin resins, petroleum resins, phenolic resins, [0039,0041]);
- from a minimum of 0.2% up to a maximum of 2.0% by weight of the total formulation of a mixture of stabilizers and antioxidants, wherein the quantity of stabilizers within the mixture varies from 0 up to a maximum of 1.50% by weight of the total formulation, and the amount of antioxidants varies from 0 up to a maximum of 1.50% by weight of the total formulation (Liu discloses 1 wt% antioxidant, [0039,0043])
- from a minimum of 5% up to a maximum of 35% by weight of the total formulation of paraffinic or naphthenic plasticizers (Liu discloses 11 wt% compatibilizer that includes hydrogenated cyclohexane oil, [0039,0042]); and
- from a minimum of 2% up to a maximum of 5% by weight of the total formulation of mineral fillers, including calcium carbonate and carbon black (2 wt% filler that includes calcium carbonate, carbon black, or a mixture thereof ([0039,0044]).
While Liu discloses multiple elastomers, resins, tackifiers and does not expressly disclose a specific combination, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the composition with the claimed components since Liu discloses the claimed weight percentages and suggests elastomers, resins, tackifiers, and mineral fillers that satisfy the claimed composition.
As to the adhesive sealant formulation being a thermoplastic hot-melt that is substantially free of vulcanizing agents, Examiner notes that Liu does not disclose vulcanization, cross-linking, or sulfur additives. While Applicant argues that zinc oxide is a vulcanization agent, Liu discloses DOP, liquid hydrogenated rosin ester, and liquid modified petroleum resin as alternatives to zinc oxide ([0045]) and thus suggests formulations without zinc oxide. Examiner notes that the instant application includes resins in the formulation (pg 3). As to the formulation being thermoplastic, "[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." See MPEP 2112.01. Here, the claimed and prior art compositions are substantially identical (both disclose a mixture of block copolymers, resins, plasticizers and filler and Liu does not disclose vulcanization) such that the thermoplastic characteristic is considered to be inherent or rendered obvious to a person having ordinary skill in the art at the time of the invention. Examiner notes that Liu discloses the material is designed to melt at high temperatures for application to the tire ([0055]).
Regarding claim 12, Liu does not expressly disclose the melting temperature of the formulation as 160C to 180C; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention for the formulation to satisfy the claimed melting temperature since Liu discloses a formulation having weight percentages and components that are substantially identical to the components of the claimed composition and thus the formulation is presumed to have a substantially identical melting temperature. See MPEP 2112.01 (I,II).
Response to Arguments
Applicant's arguments filed 3/24/2026 have been fully considered but they are not persuasive. Applicant argues that Liu discloses a composition that includes an "activator" which is explicitly identified in the reference as zinc oxide. Applicant states that zinc oxide is a well-known and widely used vulcanizing agent or activator the promotes the chemical cross-linking of elastomers. Applicant argues that Liu's processing conditions are highly indicative of a reactive process designed to induce chemical vulcanization or cross-linking. Therefore, the formulation disclosed by Liu is not a true thermoplastic hot-melt but, is by its very design and processing, a partially thermosetting or vulcanized system.
Applicant's arguments are unpersuasive. Liu is not limited to zinc oxide. Liu discloses an activator as one of or a mixture of four different additives. Besides zinc oxide, Liu discloses DOP, liquid hydrogenated rosin ester, and liquid modified petroleum resin ([0045]). DOP (dioctyl phthalate), rosin ester and petroleum resin are not considered vulcanization agents. As to the composition of Liu being thermoplastic, Liu discloses the composition is designed to melt at high temperature so that it can be sprayed onto a tire during application ([0055]). Liu does not disclose vulcanization or cross-linking (e.g., addition of sulfur). Further, because the composition of Liu and the claimed composition appear to be substantially identical (both disclose a mixture of block copolymer, resin/rosin, stabilizer/antioxidants, and filler), the composition of Liu is presumed to similarly possess the thermoplastic characteristic. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." See MPEP 2112.01.
Additionally, arguments presented by the applicant cannot take the place of evidence in the record. See MPEP 2145(I). Applicant states that the conditions are "high indicative of a reactive process" but has not provided factual evidence demonstrating that the composition of Liu is vulcanized or cross-linked. Examiner notes that while zinc oxide is a cure activator in sulfur-based vulcanization of rubber, Liu does not disclose sulfur added to the composition. Examiner also emphasizes that Liu does not necessarily require zinc oxide ([0045]) and that the material must melt at high temperature for application ([0055]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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