DETAILED ACTION
The examiner assigned to the current application has been changed. The new examiner's name and contact information are stated at the end of this action. Applicant is requested to take note of the change.
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 without traverse of claims 1-6 in the reply filed on 12/4/25 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/4/25.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that the composition comprises “high” molecular weight polyisobutylene and “medium” molecular weight polyisobutylene. Note that all dependent claims depend upon 1 and thus have the same issues. The terms “high” and “medium” are relative terms which render the claims indefinite. The terms “high” and “medium” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is noted that the specification (page 2) further limits the high and medium molecular weight to 80,000 to 90,000 and 30,000 to 50,000 respectively (corresponding to dependent claims 3 and 4). However, these are not definitions and are further embodiments. Further, it cannot be said that these relative terms are with respect to each other because it still raises a question about what molecular weights constitute “high” and “medium” even if one is higher or lower than the other polyisobutylene.
Moreover, the type of molecular weight is not defined. Claim 1, which all dependent claims depend upon, limits the molecular weight, however the type of molecular is not defined. Is molecular weight intended to mean weight average molar mass (Mw)? Number average molar mass (Mn)? Viscosity average molar mass (Mv)? Z-average molar mass (Mz)? Absolute molecular weight? Or some other type. The specification does not give guidance to the type of molecular weight.
This issue appears to be similar to Teva Pharms. U.S., Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015), wherein the term “average molecular weight” was held to be indefinite; and stating that “molecular weight” or average molecular weight can be ascertained by any of three possible measures: Mp, Mn, and Mw. The claims do not indicate which measure to use. The specification never defines molecular weight or even mentions Mp, Mw, or Mn. And the term "average molecular weight" does not have a plain meaning to one of skill in the art.
In summary, both 1) the relative terms “high” and “medium” of claim 1 are relative terms that render the claims indefinite and 2) the term “molecular weight” found in claims 1, 3, and 4 render the claim indefinite because it is unclear what type of molecular weight is intended.
Claim Rejections - 35 USC § 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, 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.
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN101935500A (herein Xu) in view CN112760060A (herein Zeng) as evidenced by the Physical Properties of Polypropylene Fibers News website (13 Dec 2021, https://www.weavertex.com/news/the-physical-properties-of-polypropylene-fiber-52415429.html).
In setting forth the instant rejection, a machine translation of both Xu and Zeng have been relied upon. The machine translation of Xu and Zeng were mailed on 11/12/25.
As to claims 1-2 and 5, Xu teaches an adhesive composition comprising, by weight, 3-10% butyl rubber, 5-10% high molecular weight polyisobutylene, 25-35% medium molecular weight polyisobutylene, 30-45% inorganic powder, and 0.5-1% anti-aging agent (See [0007]-[0025]; [0049]), all of which substantially overlap the instantly claimed ranges. The adhesives are taught as elastic and anti-corrosion (see [0001], [0002] and [0031]). Xu does teach the option of a polypropylene mesh (see [0045]).
However, Xu does not disclose 5-10% by weight elastic fibers in the composition.
Zeng teaches that the addition of 1-15% by weight of fibers, including elastic fibers such as polypropylene (polyolefin fiber), was known in the art to improve the strength of a viscoelastic anticorrosive adhesive (See [0016]; [0020]; [0025]). Note that the fiber is added to improve elongation. See examples. Polypropylene fiber is known to be an elastic fiber. See the Physical Properties of Polypropylene Fiber News Website.
It would have been obvious to one of ordinary skill in the art at the time of filing to include elastic fibers as taught by Zeng in the composition of Xu in order to improve strength of the adhesive.
As to claim 6, Xu teaches that the powder is calcium carbonate, talcum (talc) powder, etc. See [0044].
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN101935500A (herein Xu) in view CN112760060A (herein Zeng) and CN 110872477 (herein Dong) as evidenced by the Physical Properties of Polypropylene Fibers News website (13 Dec 2021, https://www.weavertex.com/news/the-physical-properties-of-polypropylene-fiber-52415429.html).
The discussion with respect to Xu and Zeng set-forth above is incorporated herein by reference.
In setting forth the instant rejection, the English abstract of Dong is relied upon. The English abstract and Dong were supplied with the IDS filed on 5/9/24.
As to claims 3-4, Xu is silent on the molecular weights of the high and medium molecular weight polyisobutylene.
Dong teaches similar adhesive compositions comprising butyl rubber, two different molecular weight polyisobutylene (PIB), inorganic filler (powder), etc. See abstract. Dong teaches the molecular weight of the higher PIB as 90,000 and the lower (medium) as 50,000. See abstract. The adhesive is said to have improved adhesion and anticorrosion. See abstract.
It would have been obvious at the time of the invention to have utilize the molecular weights of Dong as examples of high and medium molecular weight PIB as taught by Dong in the compositions of Xu because one would want to utilize molecular weights taught as suitable for similar adhesive compositions taught to have improved adhesion and anticorrosion.
Related Prior Art
CN21269969 teaches elastic tapes that comprise several layers including a rubber layer (which may be polyisobutylene and butyl rubber) and a reinforcing layer (inter alia). The reinforcing layer may have terylene fibre, which is an elastic fiber.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764