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 .
Application Status
Amendments to claims 1-3, 9, 11, and 18, filed on 13 April 2026, have been entered in the above-identified application. Claims 28-29 have been added and claims 7 and 8 have been cancelled by applicant. Claims 1-6 and 9-29 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 23 February 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 112(b) and (d) rejections of claims 8 and 18, made of record on page 3 paragraphs 7-9 of the office action mailed 13 January 2026 have been withdrawn due to Applicant’s amendments in the response filed 13 April 2026.
The 35 U.S.C. § 102 rejection of claims 1-4, 8-11, 13, 15-19, and 21-27 over Westley (U.S. Pat. 4,581,092), made of record on page 4, paragraph 11 of the office action mailed 13 January 2026 has been withdrawn due to Applicant’s amendment in the response filed 13 April 2026. Westly does not specify the use of both a halogenated rubber and a non-halogenated rubber in the claimed ratio.
The 35 U.S.C. § 102/103 rejection of the claims as over Briddell (U.S. Pat. 6,297,324) and other references, made of record on pages 8-14, paragraphs 15-18 of the office action mailed 13 January 2026 has been withdrawn due to Applicant’s amendment in the response filed 13 April 2026, as Briddell does not disclose amounts within the recited ratio of non-halogenated rubber to halogenated rubber components.
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, 3, 4, 5, 22, 23, 24, 25, and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Milliman (U.S. Pub. 2022/0220347).
Regarding claims 1 and 28, Milliman describes butyl rubber passed pressure-sensitive adhesives, see title and abstract. Example 1 in Table 1 on p. 9 includes 75 parts by weight of TPC 1350 which is an isobutylene oligomer reading on a non-halogenated rubber material, see p. 3, [0019]. The concentration of polyisobutylene oligomers is higher than that of the halogenated rubber in the composition, see p. 3, [0021]. Example 1 also includes 25 parts by weight of EXXPRO 3433 which is a halogenated butyl rubber, see p. 3, [0016]. This is a weight ratio of 3:1 which is within the claimed range. This example anticipates the claims.
Regarding claims 3 and 4, Milliman teaches that EXXPRO 3433 is a halogenated butyl rubber, see p. 3, [0016].
Regarding claim 5, Milliman teaches that butyl rubber includes a small amount of isoprene as a comonomer along with isobutylene, see p. 1, [0004].
Regarding claim 22, Milliman teaches that the adhesive is a pressure-sensitive adhesive, see title and abstract and p. 1, [0002].
Regarding claims 23-24, the claim refers to the intended use of the adhesive to be configured for use on a substate comprising a polyvinyl chloride, EPDM, a thermoplastic olefin, or thermoplastic polyolefin. This is deemed to be a statement with regard to the intended use and is not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use 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. See MPEP § 2111.02. In this case, the adhesives of Milliman are disclosed to be suitable for use with substrates such as PVC and thermoplastic olefins such as low density polyethylene, polypropylene, and others, see p. 6, [0042].
Regarding claim 25, Milliman disposes the adhesive between two release liners, see p. 6, [0044] and the examples at p. 9, [0088-0089].
Claims 1-6, 9-11, 13, 15-24, 28, and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huddleston (U.S. Pat. 6,033,776) as evidenced by Milliman (U.S. Pub. 2022/0220347).
Regarding claim 1, Huddleston describes an adhesive tape having a rubber mix and a tackifying resin, see abstract. Example 2 employs 27 parts by weight of chlorobutyl rubber, 18 parts by weight of reclaimed butyl rubber, and 18 parts by weight or virgin butyl rubber for a total of 36 parts by weight of non-halogenated rubbers. See col. 10. Thus the ratio of non-halogenated rubber to halogenated rubber is 36:27 or 1.5:1. This is within the range specified in the claim.
Regarding claim 2, Example 2 in col. 10 also includes a wood rosin which reads on a polymeric material.
Regarding claims 3 and 4, the chlorobutyl rubber (EXXON CHLOROBUTYL 1066) used in Example 2 reads on a chlorobutyl rubber as claimed. See col. 10.
Regarding claim 5, Milliman is relied upon as evidence to teach that butyl rubber includes a small amount of isoprene as a comonomer along with isobutylene, see p. 1, [0004]. Thus the butyl rubber components of Huddleston have these materials.
Regarding claim 6, the elastomeric components in Example 2 in col. 10 comprise (27+18+18+27) = 90 parts by weight. The total weight parts of Example 2 is (209.24 + 50 + 10) = 269.24 parts by weight, see col. 10, lines 47-49. Thus the amount of elastomer is about 90/269.24, or about 33.4 wt. % of the adhesive composition.
Regarding claims 9, 10, and 11, Example 2 of Huddleston uses chlorobutyl rubber, see col. 10. This is present in the amount of 27 parts by weight out of 269.24 parts by weight of the entire composition, which is 10.0 wt. % and is within the claimed range.
Regarding claim 13, Example 2 includes Escorez 1102 which is a tackifier, see col. 10, lines 47-49. See also col. 7, lines 15-34.
Regarding claim 15, Huddleston discloses the use of phenolic tackifier resins as well as non-phenolic tackifier resins, see col. 7, lines 15-34.
Regarding claims 16 and 18, Example 2 employs a clay filler, see col. 10. This reads on a silica filler as in claim 18.
Regarding claim 17, the chlorobutyl rubber component of Huddleston also reads on a filler.
Regarding claims 19, 20, and 21, Huddleston teaches that the rubber mix of the invention acts as a plasticizer at temperatures of 200 °F or higher, see col. 12, lines 23-39. Thus the mix butyl rubber and chlorinated butyl rubber used in Example 2 is itself a plasticizer and reads on a chlorinated plasticizer and a hydrocarbon resin as in claims 20 and 21, respectively.
Regarding claims 22, 23, and 24, Huddleston teaches forming the adhesive layer onto a polyethylene backing reading on a substrate of thermoplastic polyolefin. See col. 10, lines 59-63. The tape has a shear adhesive strength at 70°F as described at col. 11, lines 21-38 and the table in col. 11. This reads on being a pressure-sensitive adhesive tape.
Regarding claims 28 and 29, Example 2 of Huddleston also includes a radial block copolymer of styrene and isoprene, VECTOR DPX 552, see col. 10 and table at the bottom of col. 8. This reads on another non-halogenated rubber material. The non-halogenated materials comprise 27 parts of VECTOR DPX 552, 18 parts of virgin butyl rubber, and 18 parts of reclaimed butyl rubber for a total of 63 parts by weight. The halogenated rubber is present in the amount of 27 parts by weight. The weight ratio of these components is 63:27 or about 2.33:1 which is within the claimed range.
Claim Rejections - 35 USC § 102/103
Claims 1-4, 6, 13, 16, and 28 are rejected under 35 U.S.C. 102(a)(1) or 35 U.S.C. § 103 as being anticipated by or obvious over Rust (U.S. Pub. 2006/0029797).
Regarding claims 1 and 28, Rust describes adhesive tapes which employ a blend of rubber components. See p. 1, [0015]. A halogenated rubber component is present in the amount of 10-25 wt. % of the total blend, see p. 2, [0024]. Polybutene, reading on a non-halogenated rubber material, is present in the amount of 20-30 wt. % of the mixture, see p. 2, [0022]. While Rust does not provide an example composition, the amounts of these materials provide a ratio of from 4:5 to 3:1 of the non-halogenated component to the halogenated component. This substantially overlaps the claimed range. The Examiner has considered this disclosure to either anticipate the claimed range, or overlap the claimed range as to render it obvious.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, Rust teaches that the tape composition may include additional polymers such as ethylene/propylene copolymers, see p. 1, [0017].
Regarding claims 3-4, Rust teaches the use of halogenated butyl rubber, see p. 1, [0017].
Regarding claim 6, the amounts of elastomer materials in the adhesive is 10-25 wt. % of halogenated rubber and 20-30 wt. % of polybutene for a total of 30-55 wt. % of elastomeric materials which overlaps the claimed range. See discussion above in regards to claim 1.
Regarding claim 13, Rust teaches using a tackifier in the adhesive composition, see p. 2, [0028].
Regarding claim 16, Rust teaches including a filler in the composition, see p. 2, [0027].
Claim Rejections - 35 USC § 103
Claims 9-11, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Milliman (U.S. Pub. 2022/0220347).
Regarding claims 9-10, Milliman describes butyl rubber passed pressure-sensitive adhesives, see title and abstract. Example 1 in Table 1 on p. 9 includes 75 parts by weight of TPC 1350 which is an isobutylene oligomer reading on a non-halogenated rubber material, see p. 3, [0019]. Example 1 also includes 25 parts by weight of EXXPRO 3433 which is a halogenated butyl rubber, see p. 3, [0016].
EXXPRO 3433 is a brominated butyl rubber, however Milliman teaches that chlorinated products such as EXXON CHLOROBUTYL 1066 are suitable halogenated rubber materials for the invention, see p. 3, [0016]. It would have been obvious to have substituted a chlorobutyl rubber for a bromobutyl rubber to arrive at the claimed invention, as Milliman discloses these materials in the alternative.
Regarding claim 11, Milliman teaches that the amount of halogenated butyl rubber is from 10-40 wt. % of the adhesive which is within the claimed range.
Regarding claim 16, Milliman teaches that fillers and other additives may be included in the adhesive composition, see p. 5, [0031].
Regarding claim 18, suitable fillers include powdered silicates and carbon black, see p. 5, [0031], reading on silica fillers and electrically and/or thermally conducting particle fillers.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Huddleston (U.S. Pat. 6,033,776) as applied above, and further in view of Ackermann (U.S. Pub. 2021/0172174).
Regarding claim 12, Huddleston is relied upon as described above to disclose an adhesive composition with a chlorinated component in which the composition includes elastomeric components. However, Huddleston does not specify the glass transition temperature of the adhesive.
Ackermann describes a roofing membrane with a functional layer that includes an adhesive component, see abstract and p. 2, [0018] and FIG. 4. The adhesive is further described at p. 7, [0085] et seq. and in an embodiment includes a styrene block copolymer with an elastomeric α-olefin block such as polybutadiene, polyisoprene-polybutadiene, poly(ethylene-propylene), or others described at p. 8, [0092]. These elastomeric α-olefin blocks have a glass transition temperature in the range of -55°C to -35°C, which is fully within the claimed range of -60°C to 0°C.
As the adhesive of Huddleston consists largely of these or similar elastomeric components, the overall adhesive is expected to have a glass transition temperature within the claimed range.
Huddleston and Ackerman are analogous as they each disclose roofing membranes and sealing adhesives which include elastomeric 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 used elastomeric components with a glass transition temperature within the claimed range in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to do so as Ackermann teaches that such a glass transition range is preferable for elastomeric polymers and suitable in an adhesive material.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Huddleston (U.S. Pat. 6,033,776) as applied above, and further in view of WO 2018/181192 A1. A machine translation of WO ‘192 was used for analysis.
Regarding claim 12, Huddleston is relied upon as described above to disclose an adhesive composition with a chlorinated component in which the composition includes elastomeric components. However, Huddleston 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.
Huddleston and WO ‘192 are analogous as they each disclose butyl rubber-based pressure-sensitive sealing 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 Huddleston with a chlorinated olefin tackifying resin or have included the chlorinated olefin resin along with the tackifier of Huddleston 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.
Claim 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Huddleston (U.S. Pat. 6,033,776) as applied above, and further in view of Briddell (U.S. Pat. 6,297,324).
Huddleston teaches forming the adhesive layer onto a polyethylene backing reading on a substrate of thermoplastic polyolefin. See col. 10, lines 59-63. The tape has a shear adhesive strength at 70°F as described at col. 11, lines 21-38 and the table in col. 11. This reads on being a pressure-sensitive adhesive tape. The adhesive component is described above in regards to claim 1.
However, Huddleston does not specify a release liner removably coupled to the adhesive layer, and 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.
Regarding claim 25, 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. The roofing sheet reads on the claimed first layer, the adhesive of the seaming tape reads on the adhesive, and the release liner is removably coupled to roofing sheet prior to its removal.
Regarding claims 26 and 27, 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 Huddleston are analogous because they are similar in structure and function as each discloses adhesive tapes comprising a blend of rubber components.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include a release liner on the adhesive of Huddleston to protect the adhesive layer prior to use. It further would have been obvious to have applied the adhesive to a roofing tape 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 Huddleston adhesive tape for roofing structures.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 13 April 2026 regarding the 35 U.S.C. § 102 and 103 rejection of claims of record 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 2019/036085A1 teaches an adhesive with a blend of rubber components, however the ratio of natural rubber to bromobutyl disclosed at examples 6C-1 through 6C-4 are each less than 1:1 as claimed.
Conclusion
All claims are rejected.
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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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