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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/26/2025 has been entered.
Drawings
The drawings filed 12/202/2024 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 5, 7, 9-11, 15 and 17-18 (all pending claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The original disclosure does not enable an adhesive which “comprises 0.1-10% by weight of a fire retardant based on a total weight of the adhesive wherein….a force required to peel the roofing membrane from the plywood substrate at 180o at a 2o/min pulling speed in accordance with ASTM D413, is at least 10% greater than a force required for a control adhesive…”
As set forth in MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” They are set forth and analyzed herein:
A) The breadth of the claims-the claims are considered to be extremely broad. Specifically, the claim covers any adhesive that comprises (emphasis added) a polychloroprene, any membrane, any roofing substrate, and any fire retardant that comprises at least one of polyphosphate, a magnesium hydroxide, a chlorinated olefin, or any combination thereof, the claims lack any further compositional or structural limitations for the substrate, fire retardant, adhesive, and membrane.
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(C) The state of the prior art-the state of the prior art is considered low. Applicant has not identified any prior art compositions which suggests an improvement in peel strength could predictably be increased with the addition of a fire retardant. A prior art search also did not result in any references teaching peel strength improvements when the claimed fire retardants are added to an adhesive composition (relative to a control composition). The prior art does not teach or suggests certain fire retardants would expectedly increase the peel strength of a composition to which it is added. The prior art does not teach any result effective variables to consider when adding a fire retardant to a composition in order to increase the peel strength thereof.
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(D) The level of one of ordinary skill- The level of one of ordinary skill in the art is considered low. A prior art search also did not result in any references teaching peel strength improvements when the claimed fire retardants are added to an adhesive composition (relative to a control composition). The prior art does not teach or suggests certain fire retardants would expectedly increase the peel strength of a composition to which it is added. The prior art does not teach any result effective variables to consider when adding a fire retardant to a composition in order to increase the peel strength thereof. Thus, the skilled artisan is understood to have no level of knowledge on how to make the claimed invention satisfying the claimed peel force requirement.
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(E) The level of predictability in the art-The level of predictability in the art is considered low. A prior art search also did not result in any references teaching peel strength improvements when the claimed fire retardants are added to an adhesive composition (relative to a control composition). The prior art does not teach or suggests certain fire retardants would expectedly increase the peel strength of a composition to which it is added. The prior art does not teach any result effective variables to consider when adding a fire retardant to a composition in order to increase the peel strength thereof.
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(F) The amount of direction provided by the inventor-The amount of direction provided by the inventor is considered low. Applicant does not teach any result effective variables to consider when adding the claimed fire retardants to a composition in order to increase the peel strength thereof. Applicant also does not teach any exemplary adhesive compositions which meet the claimed peel strength limitations with sufficient detail to allow one of ordinary skill in the art to duplicate the invention.
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(G) The existence of working examples-While the specification contains examples, the examples are not commensurate in scope with the pending claims. Furthermore, even for the polychloroprene compositions set forth in the examples, applicant fails to identify the solvent, filler, and additives utilized, does not identify the details of the chlorinated polyolefin (e.g. chlorination degree, the particular polyolefin, molecular wt., etc.). It also is not clear if the chloroprene is functionalized or if it is unique/selected based upon other criteria. Given the lack of guidance provided by applicant with regards to variables that can be controlled/optimized in order to obtain the improved adhesion, the working examples in the specification fail to provide clarity/guidance to the skilled artisan with regards to making the claimed adhesive (commensurate in scope with the claimed invention) which exhibit improved peel strength properties.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure- In view of the findings details above, the quality of experimentation needed to make or use the invention based upon the disclosure is considered extremely high.
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Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
With regards to the rejection of claims under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the enablement requirement, applicant argues the amendments to claim 1 obviates this rejection. Said arguments have been fully considered but are not persuasive for the reasons noted above.
Applicant argues the Examples in Tables 1-3 of the Specification demonstrate when the adhesive which comprises “a polychloroprene; and 1% to 10% by weight of a fire retardant based on a total weight of the adhesive, wherein the fire retardant comprises at least one of a polyphosphate, a magnesium hydroxide, a chlorinated olefin, or any combination thereof,” is located between the roofing membrane and plywood substrate, a force required to peel the roofing membrane from the plywood substrate, at 180° at a 2”/min pulling speed in accordance with ASTM D413, is at least 10% greater than a force required for a control adhesive, wherein the control adhesive is same as the adhesive but does not comprise the fire retardant. Said argument is noted but is not persuasive for the reasons noted above. Specifically, the showing is not commensurate in scope with the claims as noted in the rejection above; the claim is not limited with regards to the roofing substrate or membrane utilized, the claim covers any adhesive composition comprising polychloroprene in any amount, it is not clear if the chloroprene is functionalized or if it is unique, the identity and amounts of filler and additives, the amount of water, etc. Furthermore, (contrary to applicant’s arguments) it is not clear the adhesive composition of the control and the samples is kept the same with the only thing changing being the fire retardant or lack thereof. While table 1 shows the percentage of solvent, polychloroprene, chlorinated polyolefin, fire retardant, filler, additive, and water is the same, the specification does not specify the specific specie utilized for each component of the composition (e.g. solvent, polychloroprene, etc.) are the same. The examiner further notes Table 4 demonstrates the peel results are not observed for the same fire retardant (chlorinated olefin) over the claimed amount of fire retardant. Thus, it seems unlikely that a skilled artisan could extrapolate the results of Tables 1-3 over the entire scope of the claimed invention with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP 54-85249 teaches a chloroprene sealant composition comprising zinc hydroxide. US 5,977,222 teaches a chloroprene adhesive composition comprising a metal hydroxide.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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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.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787