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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application Status
This is a first action on the merits. Claims 1-27 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09 May 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings received on 09 May 2024 are acceptable.
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.
Claim 18 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 18, the claim at line 3 refers to “silica type fillers…”. The addition of the word “type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. MPEP § 2173.05(b)(III)(E). The Examiner suggests referring to “silica ”.
The following is a quotation of 35 U.S.C. 112(d):
(d) Reference in Dependent Forms. — Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form.
Claim 8 requires that the adhesive further includes a chloride-containing substance, but claim 1, upon which claim 1 depends, already recites that the adhesive is chlorinated. Accordingly, claim 8 fails to further limit claim 1, and any art that reads on claim 1 necessarily also reads on claim 8.
The Examiner suggests canceling claim 8, and further amending claim 9 to recite “The adhesive of claim 1, wherein the adhesive comprises a chlorine-containing substance ”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 8-11, 13, 15-19, and 21-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Westley (U.S. Pat. 4,581,092).
Regarding claims 1 and 8, Westley discloses an adhesive composition used in bonding vulcanized natural and synthetic rubber goods, see col. 1, lines 5-8. Example 1 at col. 6 includes a chlorinated butyl rubber which reads on an elastomeric material, and also reads on a chlorinated adhesive composition. This anticipates the claimed invention.
Regarding claims 2-4, 9, and 10, the chlorinated butyl rubber of Westley reads on a butyl-based rubber material and chlorobutyl rubber as claimed. See Example 1 at col. 6.
Regarding claim 11, Example 1 at col. 6 includes 100 parts by weight of the chlorinated butyl rubber and 148 weight parts of other components. Thus the chlorine is contained in a material in the amount of 100/(100+148), or about 40.3 wt. % of the adhesive. This anticipates the claimed range.
Regarding claims 13 and 15, Example 1 at col. 6 includes a low-temperature tackifier of Wingtack resin. This necessarily reads on either a phenolic tackifier resin or a non-phenolic tackifier resin. See also the phenolic and non-phenolic tackifier resins disclosed at col. 3, line 40 through col. 4, line 11.
Regarding claims 16 and 18, Example 1 at col. 6 teaches including carbon black which reads on the claimed filler component.
Regarding claim 17, Westley also teaches the use of 2-methyl-5-chloro-1,4-dinitrosobenzene and other chlorinated materials as vulcanizing agents, which also read on the claimed filler. See col. 3, lines 15-22.
Regarding claims 19 and 21, Example 1 at col. 6 includes a polybutene softener which reads on a polybutene plasticizer.
Regarding claim 22, Westley teaches that the adhesive is used to join goods at ambient temperature with light pressure applied, see col. 4, lines 59-68, reading on a pressure-sensitive adhesive.
Regarding claim 23, Westley teaches that the adhesive can be used with ethylene/propylene/non-conjugated diene terpolymer rubbers, see col. 1, line 63 through col. 2, line 10. This reads on being configured for use on a substrate comprising EPDM as claimed.
Regarding claim 24, the claim refers to the intended use of the adhesive to be configured for use on a substate comprising an unprimed thermoplastic polyolefin (TPO). 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 adhesive of Westley are disclosed to be suitable for use with EPDM substrate materials, see col. 1, line 63 through col. 2, line 10, and so are also considered to be suitable to be adhered to an unprimed TPO roofing material.
Regarding clam 25, Westley teaches that the adhesive can be wrapped in a release liner for storage and rolled up for use on site, see col. 4, lines 30-40. The liner reads on the claimed release liner. As shown in FIG. 2, the assembly includes a vulcanized rubber layer 3 reading on the claimed first layer on which the preformed adhesive composition 4 is laminated. The release liner is not shown in the figure as it has been removed prior to installation. See discussion at col. 5, lines 30-49.
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Regarding claims 26 and 27, As shown in FIG. 2, the assembly includes a vulcanized rubber layer 3 and the adhesive composition 4, reading on the claimed tape, and roofing membranes 1 and 1’ which are bonded using the tape. See discussion at col. 5, lines 30-49 teaching this structure and method of bonding the roofing membranes using the adhesive material.
Claim Rejections - 35 USC § 102/103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11, 13, 15-19, and 21-27 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 being unpatentable over Briddell (U.S. Pat. 6,297,324).
Regarding claims 1 and 8, 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.
The Examiner notes that a species disclosed in a reference anticipates a claim to a genus, see MPEP § 2131.02(I) and In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960), and that a reference that clearly names the claimed species anticipates the claim, see MPEP § 2131.02(II), In the alternative, it would have been obvious to have selected a chlorobutyl as the halogenated butyl rubber component as multiple commercial chlorobutyl rubbers are disclosed as suitable for the invention, and thus they are readily obtainable.
Regarding claims 2-5, Briddell also teaches including a butyl terpolymer in the rubbery polymer component, see col. 4, lines 64-66. Butyl terpolymers are copolymers of isobutylene and isoprene which are pre-crosslinked during polymerization with divinylbenzene, see col. 4, line 66 through col. 5, line 2. Examples 6 and 7 in the Table in col. 7 each disclose using butyl terpolymer in the adhesive compositions.
Additionally, the presence of chlorobutyl reads on the rubber-based material and butyl-based material of claims 2, 3, and 4.
Regarding claim 6, Example 1 in the Table in col. 7 discloses using 10.5 weight percent of EPDM rubber and 19.1 wt. % of halogenated butyl rubber and 6.1 wt. % of polyisobutylene. These elastomeric components thus comprise 35.7 wt. % of the adhesive composition.
Regarding claims 7, 9, and 10, Briddell teaches the use of chlorobutyl at col. 4, lines 33-40.
Regarding claim 11, the halogenated butyl component is from 14.3 to 29.6 wt. % of the examples in Table in col. 7, which is within the claimed range of chlorine-containing material.
Regarding claims 13 and 15, Briddell teaches using a polybutene tackifier, see Table at col. 7. See also col. 5, lines 28-44 which teaches both polybutene tackifiers and phenolic resin tackifiers and various commercial products.
Regarding claims 16 and 18, Briddell teaches using carbon black and zinc oxide fillers in the adhesive compositions shown in the Table at col. 7.
Regarding claim 17, the chlorobutyl rubber component of Briddell also reads on a filler. See the Table at col. 7 and col. 4, lines 33-40.
Regarding claims 19 and 21, Briddell teaches including a plasticizer such as liquid isobutylene or naphthenic process oils, see col. 5, lines 7-28. EPDM rubbers are also disclosed, see col. 4, lines 20-25.
Regarding claims 22 and 23, Briddell teaches forming a pressure-sensitive seaming tape to be applied to a roof, such as an EPDM rubber roofing material, see col. 1, lines 5-9 and col. 6, lines 27-39.
Regarding claim 24, the claim refers to the intended use of the adhesive to be configured for use on a substate comprising an unprimed thermoplastic polyolefin (TPO). 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 adhesive tapes of Briddell are disclosed to be suitable for use with EPDM roofing materials, see col. 1, lines 5-9, and so are also considered to be suitable to be adhered to an unprimed TPO roofing material.
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.
Claim Rejections - 35 USC § 103
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Briddell (U.S. Pat. 6,297,324) as applied above, and further in view of Ackermann (U.S. Pub. 2021/0172174).
Regarding claim 12, Briddell is relied upon as described above to disclose an adhesive composition with a chlorinated component used for bonding to rubber materials in which the composition includes elastomeric components. However, Briddell 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 Briddell consists largely of these or similar elastomeric components, the overall adhesive is expected to have a glass transition temperature within the claimed range.
Briddell 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 the same roofing membrane sealing adhesive service.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Briddell (U.S. Pat. 6,297,324) 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, Briddell is relied upon as described above to disclose an adhesive composition with a chlorinated component used for bonding to rubber materials in which the composition includes elastomeric components. However, Briddell 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.
Briddell 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 Briddell with a chlorinated olefin tackifying resin or have included the chlorinated olefin resin along with the tackifier of Briddell 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 20 is rejected under 35 U.S.C. 103 as being unpatentable over Briddell (U.S. Pat. 6,297,324) in view of Anderson (U.S. Pat. 11,142,594).
Regarding claim 20, Briddell is relied upon as described above to disclose an adhesive composition with a chlorinated component used for bonding to rubber materials in which the composition includes a plasticizer. However, Briddell does not specify a chlorinated plasticizer.
Anderson describes a rubber mixture which includes a silane functionalized resin, see col. 1, lines 27-40. The material is capable of being used as an adhesive, see col. 2, lines 41-51 and col. 5, lines 52-61. The adhesive composition includes a plasticizer, and suitable plasticizers include chlorinated paraffins, see col. 31, lines 11-22. The composition can also include a chlorinated rubber such as halobutyl rubber, see col. 31, line 64 through col. 32, line 5.
Briddell and Anderson are analogous as they each disclose adhesive composition that include chlorobutyl rubber and a plasticizer component. It would have been obvious to have substituted a chlorinated plasticizer such as those disclosed in Anderson for the plasticizers of Briddell to arrive at the claimed invention, as Anderson teaches that such are suitable plasticizers known in the art and thus would be known to one having ordinary skill in the art. See col. 31, lines 11-22.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Miller (U.S. Pub. 2015/0337534) also describes a roofing system with a reactive adhesive used to seal overlapping portions of roofing membranes. The adhesive may include chlorinated components, see p. 2, [0017]. The reference is cumulative.
Onozuka (U.S. Pub. 2020/0190374) describes a chloroprene rubber latex adhesive composition. Chloroprene is a chlorinated component. The reference is cumulative.
Duffy (U.S. Pub. 2022/0002598) describes adhesive compositions suitable for securing building materials such as unprimed TPO (thermoplastic polyolefin) to a roof deck. A chlorinated polyolefin may be used in the adhesive. The reference is cumulative.
Conclusion
All claims are rejected.
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