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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-20 in the reply filed on October 30, 2025 is acknowledged. The traversal is on the ground(s) that there will not be any serious burden in examination of the subject matter of Group I, claims 1-20 and Group II, claims 21-22. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in paragraph 4 on page 3 of the previous Office Action.
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The requirement is still deemed proper and is therefore made FINAL.
Claims 21 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 30, 2025.
Specification
The use of the terms Sarnafil, TransLink, DuploOLL, S-4615 AC PO80, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 10 and 18 are objected to because of the following informalities:
As to claim 10, at line 4, delete “and” before “bitumen-based”. Appropriate correction is required.
As to claim 18, this claim recites “at least one at 25°C liquid polyolefin resin”. The recitation “at least one at 25°C” is grammatically incorrect.
Appropriate correct is required.
Information Disclosure Statement
The listing of references in the specification (e.g. EP 3662014 A1 in paragraph 0079 of the published application) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-3, 5, 6, and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishikawa et al. (US 20060240208 A1).
As to claim 1, Ishikawa teaches a waterproof and airtight double-sided pressure sensitive adhesive (PSA) tape (sealing element) (0001) comprising a substrate made of rubber 2 having a thickness of from 0.4 to 2.0 mm (carrier layer having a first and a second major surface; the carrier comprises a polymer component comprising at least one elastomer E; the carrier layer has a thickness of at least 0.2 mm) (Figure 1A, Figure 1B, 0023-0033, 0064, 0069), and a PSA layer (3a, 3b) each having a thickness of from 0.3 (300 µm) to 1 mm (1,000 µm) (Figure 1A, 0080). The examiner submits that the release liner recited in claim 1 is optional (see “optionally, a release liner….).
As to claim 2, Ishikawa teaches a substrate formed of 50 parts by weight of a butyl rubber (elastomer), 50 parts by weight of EPDM (elastomer), 120 parts by weight of calcium carbonate, 15 parts by weight of process oil, and 10 parts by weight of carbon black (0108). As such, the polymer component of Ishikawa comprises at least one elastomer in the amount of (50/100) * 100 or 50 wt% based on the total weight of the polymer component.
As to claim 3, Ishikawa discloses that the rubber is used in combination with two or more kinds thereof. Further, Ishikawa discloses ethylene-propylene rubber (EPR) (0064), which is a propylene copolymer given that the claim does not set forth specific propylene copolymer.
As to claim 5, Ishikawa discloses ethylene-propylene rubber (0064).
As to claim 6, Ishikawa discloses butyl rubber and EPDM (0064 and 0108).
As to claim 8, Ishikawa discloses a substrate formed of 50 parts by weight of a butyl rubber (polymer component), 50 parts by weight of EPDM (polymer component), 120 parts by weight of calcium carbonate, 15 parts by weight of process oil, and 10 parts by weight of carbon black (0108). As such, the carrier layer of Ishikawa comprises (100/245) * 100 = 40.81 wt% of the polymer component, based on the total weight of the carrier layer.
As to claim 9, Ishikawa discloses that the substate layer has a thickness of 0.45 mm (0108).
As to claims 10-12, Ishikawa discloses natural rubber, synthetic rubber (0078), and acrylic PSAs (0075).
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 (i.e., changing from AIA to pre-AIA ) 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.
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 4-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al. (US 20060240208 A1) as applied to claim 1 above, and further in view of Ouhadi (US 20060100377 A1).
Ishikawa is silent as to disclosing claims 4-5 and 7.
Ouhadi discloses a high strength thermoplastic vulcanizate (TPV) composition (abstract) that is used to form articles such as gaskets and seals such as tailgate seals, cowl seals, gap fillers, cut line seals, door seals etc. (0071).
The TPV composition of Ouhadi includes a rubber component, a polyolefinic thermoplastic resin component, a propylene copolymer (PP copolymer), and a mineral filler (0007).
As to claim 4, the propylene copolymer of Ouhadi is present in the amount of 50 wt% or more based on the total weight of the TPV (0064). Given that the PP copolymer of Ouhadi is present in the amount of 50 wt% or more based on the total weight of the TPV, a person having ordinary skill in the art would recognize that the PP component would comprise 5-80 wt% of the at least one PP copolymer based on the total weight of the polymer component. Further, Ouhadi discloses a blend of TPV and 16.98 wt% of PP copolymer KWDA 372 (0082).
As to claim 5, Ouhadi discloses propylene copolymer including propylene units and ethylene units (0041).
As to claim 7, Ouhadi discloses that the TPV is characterized by finely divided rubber particles dispersed within a plastic matrix, wherein the rubber particles are crosslinked (at least partially vulcanized) to promote elasticity (0004, 0011).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a polymer component comprising at least one PP copolymer such as ethylene-propylene, in the amount as disclosed by Ouhadi given that Ishikawa desires propylene copolymer in the formation of the carrier layer.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the TPV of Ouhadi in the invention of Ishikawa to form the carrier layer of Ishikawa given that Ishikawa desires a rubber made sheet in formation of the carrier layer.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al. (US 20060240208 A1) as applied to claims 1 and 12 above, and further in view of Nakada et al. (US 9963617 B2).
Ishikawa is silent as to disclosing claims 13 and 14.
Nakada discloses a PSA composition which is excellent in durability, whitening resistance, hot-melt processasibility, PSA properties, holding power at high temperature, heat resistance, weather resistance, compatibility with tackifying resins, low temperature properties and transparency (abstract). The PSA of Nakada is useful in sealing (column 15, lines 9-10 and column 16, lines 55-60).
As to claim 13, the PSA of Nakada includes acrylic polymer formed of a monomer mixture having an acrylic monomer of the claimed formula (R1=H, and R2 is e.g. unbranched alkyl group having 4-6 C atoms or 7-12 C atoms e.g. n-butyl acrylate and 2-ethylhexyl acrylate) (column 4, lines 19-25, column 6, lines 45-47 and lines 50-53). Further, Nakada discloses that the acrylic monomer is used in the amount of 60% by mass or more (column 6, lines 30-35 and column 7, lines 50-53).
As to claim 14, Nakada discloses that the PSA is cured using UV curing agent (column 12, lines 5-10).
As to claims 13 and 14, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the acrylic PSA of Nakada and use it in the invention of Ishikawa because Ishikawa desires acrylic PSA (0075), and the PSA of Nakada is excellent in durability, whitening resistance, hot-melt processasibility, PSA properties, holding power at high temperature, heat resistance, weather resistance, compatibility with tackifying resins, low temperature properties and transparency
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al. (US 20060240208 A1) as applied to claim 1 above, and further in view of Wada et al. (US 20100255297 A1).
Ishikawa is silent as to disclosing claims 15-17.
Wada discloses a PSA sheet comprising a substrate such as rubber sheet and a layer of PSA on the substrate (abstract and 0092). The PSA sheet of Wada can be used for sealing or filling holes and gaps (0099). Wada further disclose that a known or conventional surface treatment such as primer coating can be applied to the substrate surface, in particular, the surface on the side where the PSA layer is provided in order to increase the anchorability of the PSA layer to the substrate (0093). The examiner submits that the claimed invention does not set forth any specific composition of an adhesive sealant layer. As such, the primer layer of Wads equates to the claimed adhesive sealant layer.
It would have been obvious to provide the primer layer of Wada between the carrier layer and the PSA layer in the manner as claimed in claims 15-17, motivated by the desire to increase the anchorability of the PSA layer to the carrier layer.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al. (US 20060240208 A1) in view of Wada et al. (US 20100255297 A1) as applied to claim 15 above, and further in view of Herbert et al. (EP 3593988 A1).
Ishikawa is silent as to disclosing the claimed sealant layer.
Herbert discloses a sealing device comprising a waterproofing membrane and an adhesive sealant layer, wherein the sealant layer comprises at least one elastomer, at least one polyolefin resin that is liquid at 25°C, and an inert inorganic mineral filler (abstract, 0018, and 0066).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the sealant layer of Herbert and use it in the double-sided PSA sheet of Ishikawa, motivated by the desire to adhere the PSA layer and the carrier layer.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al. (US 20060240208 A1) as applied to claim 1 above, and further in view of Macuga (US 20040180195 A1).
Ishikawa is silent as to disclosing claims 19-20.
Macuga discloses a housewrap for attachment to a building (abstract). The housewrap of Macuga comprises an adhesive layer that can be pattern coated as series of dots and/or series of longitudinally extending strips (Figure 8G, Figure 8H, 0043).
It would have been obvious to provide the PSA layer in a pattern as claimed and as rendered obvious by Macuga given that such pattern is known in the art for use with sealing element, and further doing so would be obvious for the purpose of e.g. saving the amount of the adhesive needed for adhesion of the sealing element to a surface.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2020075179A1 discloses a weather proof PSA tape. EP 3662014 A1 discloses a polymer composition with improved properties.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 February 2, 2026