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 .
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 September 2026 has been entered.
Application Status
Amendments to claims 1, 26, and 28, filed on 02 September 2026, have been entered in the above-identified application. Claims 7 and 8 have been previously cancelled by applicant. Claims 1-6 and 9-29 are pending.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 102 and 103 rejections of the claims from the office action mailed 30 June 2026 have been withdrawn due to Applicant’s amendment in the response filed 25 August 2026 and 02 September 2026. In particular, applicant’s arguments that Milliman (U.S. Pub. 2022/0220347) does not include a blend of non-halogenated rubber-based material and halogenated rubber-based material within the claimed range is persuasive. Furthermore, as noted by applicant, neither Huddleston (U.S. Pat. 6,033,776) nor Rust (U.S. Pub. 2006/0029797) disclose a blend of non-halogenated and halogenated rubber components in the newly recited range.
NEW 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 § 102
Claims 1-5, 9-13, 15-19, 21-25 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 110066628 A as evidenced by Milliman (U.S. Pub. 2022/0220347). A machine translation of CN ‘628 was relied upon for analysis.
Regarding claims 1 and 28, CN ‘628 describes a butyl adhesive obtained by mixing and extruding 100 parts by mass of butyl rubber, 10-30 parts of halogenated butyl rubber, 8-30 parts of tackifier, 0.1-0.3 parts of crosslinking agent, 2-10 parts of silane-modified olefin polymer, 2-8 parts of reinforcing filler, 20-40 parts of filler, and 0.1-0.5 parts antioxidant, see paragraphs [0009-0010].
Example 1 shown in the table at paragraph [0023] of the original document combines 100 parts by mass of butyl rubber with 20 parts by mass of halogenated butyl rubber, for a weight ratio of non-halogenated rubber to halogenated rubber of 100:20 or 5:1 which is within and anticipates the claimed range.
Regarding claim 2, the adhesive of CN ‘628 further includes a silane-modified olefin polymer which reads on a polymeric material. See paragraph [0010].
Regarding claim 3, the non-halogenated butyl rubber and halogenated butyl rubber described at [0010] are both butyl-based materials.
Regarding claim 4, CN ‘628 describes a halogenated butyl rubber component, see [0010].
Regarding claim 5, CN ‘628 teaches the use of butyl rubber, see [0010]. Milliman is relied upon for the limited evidentiary purpose of teaching that butyl rubber is a chemical copolymer of polyisobutylene and isoprene as a comonomer. See Milliman at p. 1, [0004].
Regarding claim 9, CN ‘628 teaches the use of chlorinated butyl rubber at [0011], reading on chlorobutyl. The reference also teaches zinc chloride crosslinking agent reading on “chlorinated silicates and other fillers”, see [0013].
Regarding claim 10, CN ‘628 teaches the use of chlorinated butyl rubber at [0011] reading on chlorobutyl.
Regarding claim 11, in Example 1, the halogenated butyl rubber is 20 parts by weight out of a total of 154.5 parts by weight of the components. This is 12.9 wt. % and is within the claimed range.
Regarding claim 12, while CN ‘628 does not expressly teach the glass transition temperature of the adhesive composition, the adhesive includes the same elastomeric components as claimed and thus the resulting glass transition property is considered to be implicitly taught.
Regarding claim 13, CN ‘628 teaches using a tackifier component, see paragraph [0010].
Regarding claim 15, CN ‘628 teaches that the tackifier may be a phenolic resin or a terpene resin or petroleum resin, reading on non-phenolic resins. See [0012].
Regarding claim 16, CN ‘628 teaches using a filler component, see [0010].
Regarding claim 17, suitable components in the composition include zinc chloride, reading on a chlorinated filler, see [0013].
Regarding claim 18, other suitable fillers include silica, mica, talc, carbon black, and other materials, see paragraphs [0015-0016], reading on silica fillers and electrically and/or thermally conducting particles as claimed.
Regarding claims 19 and 21, CN ‘628 also teaches including a polyisobutylene component, see [0012] and [0014] which read on the claimed polyisobutylene plasticizer.
Regarding claim 22, the presence of a tackifier in the adhesive composition (see paragraphs [0010] and [0012]) provides a pressure-sensitive adhesive as claimed.
Regarding claims 23 and 24, CN ‘628 teaches extruding the adhesive onto a 50 micron thick polyethylene film, see paragraph [0040]. Polyethylene reads on a thermoplastic olefin and unprimed thermoplastic polyolefin as claimed.
Regarding claim 25, CN ‘628 teaches forming the adhesive between a polyethylene film (reading on the first layer) and a release film (reading on the release liner), see paragraph [0040].
Claim Rejections - 35 USC § 103
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over CN 110066628 A as applied above. A machine translation of CN ‘628 was used for analysis.
Regarding claim 6, CN ‘628 is relied upon as described above to teach the adhesive composition of claim 1, see paragraph [0010]. CN ‘628 does not teach using 15-40 wt. % of elastomeric material in the adhesive composition. However, CN ‘628 also teaches that undisclosed amount of solvent may be added to the adhesive to make an adhesive liquid for brushing or spraying, see paragraph [0018] and [0019]. Using a suitably large quantity of solvent to dissolve the adhesive composition of CN ‘628 would result in an amount of elastomeric material within the recited range. It would have been obvious to have used sufficient solvent to arrive at this weight amount of elastomeric material based on the desired brush application or spray application properties of the solvent-containing adhesive.
Claims 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over CN 110066628 A as applied above, and further in view of WO 2018/181192 A1. Machine translations of CN ‘628 and WO ‘192 were used for analysis.
Regarding claim 14, CN ‘628 is relied upon as described above to disclose an adhesive composition of claim 1 having with a chlorinated component in which the composition includes elastomeric components. See paragraph [0010]. However, CN ‘628 does not specify a chlorinated tackifier component.
WO ‘192 describes a pressure-sensitive adhesive for a sealing sheet comprising a rubber resin component such a butyl rubber, a tackifying agent, and a crosslinking agent, see p. 2, first paragraph of the translation. The rubber may also be a halogenated material, see p. 3, first through third paragraphs. The tackifier component may be selected from various resins including a chlorinated olefin resin, see p. 5, seventh paragraph. Other tackifiers including alicyclic and aliphatic petroleum resins, terpene resins, phenolic resins, and others are also disclosed as suitable, see id.
CN ‘628 and WO ‘192 are analogous as they each disclose butyl rubber-based adhesives which include tackifier components. Thus they are similar in composition and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have either substituted the tackifier of CN ‘628 with a chlorinated olefin tackifying resin or have included the chlorinated olefin resin along with the tackifier of CN ‘628 to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to do so as WO ‘192 teaches that such tackifiers are suitable for use with butyl rubber based adhesive compositions and may be used alone or in combination. There is thus also a reasonable expectation of success in the combination.
Regarding claim 20, the chlorinated tackifier of WO ‘192 also reads on a chlorinated plasticizer component as it is compatible with the adhesive elastomer resins.
Claims 26-27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over CN 110066628 A) as applied above, and further in view of Briddell (U.S. Pat. 6,297,324).
Regarding claims 26-27, CN ‘628 is relied upon as described above to teach the adhesive of claim 1, see components in paragraph [0010]. CN ‘628 teaches forming the adhesive between a polyethylene film and a release film, see paragraph [0040]. This reads on the claimed tape. However, CN ‘628 does not specify a roofing structure with a roof membrane and the adhesive tape.
Briddell discloses a cured adhesive tape composition for adhering together roofing materials such as EPDM rubber, see abstract and col. 1, lines 5-10. The adhesive includes a rubbery polymer component which is a blend of ethylene-propylene-diene terpolymer, a halogenated butyl rubber or halogenated copolymer of p-methylstyrene and isobutylene, and polyisobutylene, see col. 4, lines 21-25. Suitable halogenated butyl rubbers include chlorobutyl 1240 or 1255 commercial products from Polysar, Inc. or chlorobutyl HT-1065, HT-1066, or HT-1068 commercial products from Exxon Chemical, see col. 4, lines 33-40. Commercial bromobutyl rubbers are also disclosed The Examples shown in the Table in col. 7 each include halogenated butyl rubber but do not specify using either chloro- or bromo-butyl rubber.
Briddell discloses applying the pressure sensitive seaming tape to a roofing sheet and then removing a release liner, followed by overlapping edges of the roofing sheets and pressing them together. See col. 6, lines 27-32. This results in a roofing structure of a roof membrane and a tape with adhesive bonding the tape to the roof membrane as in claim 26 and the product produced by the process described in claim 27.
Briddell and CN ‘628 are analogous because they are similar in structure and composition as each discloses adhesive components formed from a blend of non-halogenated and halogenated polymers.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have applied the adhesive to a roofing structure as in Briddell in order to arrive at the claimed invention, as Briddell uses similar adhesive components and thus one could reasonably consider using the CN ‘628 adhesive tape for roofing structures.
Regarding claim 29, CN ‘628 teaches only a single non-halogenated rubber component at [0010]. However, Briddell teaches the use of a non-halogenated ethylene-propylene-diene terpolymer elastomer as a rubbery component along with a halogenated butyl rubber, see col. 4, lines 20-45. Thus it would have been obvious to have also included a second non-halogenated rubber component in the adhesive composition. Furthermore, there is a reasonable expectation of success as both the non-halogenated butyl rubber of CN ‘628 and the non-halogenated EPDM rubber of Briddel are disclosed to be combined with halogenated butyl rubber, thus the combination of these non-halogenated rubbers is also expected to be compatible with halogenated butyl rubber.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 25 August 2026 regarding the 35 U.S.C. § 102 and 103 rejections of the claims of record over have been considered but are moot due to the new grounds of rejection.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
WO 91/09083 A1 describes an adhesive used for roofing which includes halogenated elastomeric components and non-halogenated elastomeric components, see abstract and p. 5-7. However, the maximum ratio of non-halogenated rubber components to halogenated rubber components is 110 parts by mass to 30 parts by mass, or 3.67:1, which is outside of the claimed range.
Conclusion
All claims are rejected.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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