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.
Claims 1-20 are pending.
Election/Restrictions
Applicant’s election of Group I, claims 1-16, in the reply filed on 05/22/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim(s) 17-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/22/26.
Claim Rejections - 35 USC § 103
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.
If 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.
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.
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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Claim(s) 1-9, 14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Becker (U.S. 2011/0048509).
Regarding claims 1-9, 14, and 16, Becker teaches a hot melt sealant comprising overlapping amounts ([0033]-[0036], as in claims 2-3, 6-8, and 16) of silane modified polymer (including amorphous alpha olefin polymer as in claim 14, [0041]), butene component as in claim 9 ([0040]), carbon black and desiccant ([0042], [0046]). Given the overlapping types of ingredients and amounts between the disclosure of Becker and the present specification, the density and thermal conductivity properties of those embodiments that overlap the present specification will inherently be the same as the overlapped embodiments of the present disclosure, and thus within claims 4 and 5.
Claim(s) 10-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Becker (U.S. 2011/0048509), as applied to claim 1 above, and further in view of Technology of Pressure-Sensitive Adhesives and Products (2009) and Suen (U.S. 2014/0027056).
Regarding claims 10-13, and 15, Becker teaches all of the above subject matter but does not explicitly disclose the limitations of these claims. However, the Technology… NPL document discloses that a mixture of different MW polyisobutylene as the butene component as claimed (in claims 10 and 11) allows for cohesive strength from the high MW polyisobutylene and lower viscosity (i.e., improved mixing and therefor dispersing properties as in claim 15) and tack from the lower MW polyisobutylenes (with the low MW being medium MW as claimed compared to even lower MW polyisobutylenes) (see chapter 4), such that it would have been obvious to have used a mixture of different polyisobutylenes in Becker of different MW as taught by the Technology NPL document to provide cohesive strength, improved viscosity (for mixing and dispersion) and tack. The relative amount and particular MW’s of these polyisobutylenes would have been obvious to adjust as part of optimizing the cohesive improvement vs the viscosity and tack improvements imparted to the composition.
Furthermore, Suen is also directed to hot melt adhesives and discloses that the silane modification should include at least one silane group per molecule (overlapping claim 13) to provide the curing network formed by those water curing groups ([0022]) and also discloses silane adhesion promoters for substrate adhesion ([0039] as in claim 12) such that the amount of silane groups in the silane modified polymer of Becker would have been obvious to adjust to the amount from Suen to provide the curing network formed by the water curing groups and to have included the silane coupling agents in Becker as taught by Suen to improve substrate adhesion.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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