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 (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.
Election/Restrictions
Claims 16-24 and 31-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 May 29, 2026.
The traversal is on the ground(s) that there is no burden on the examiner to search all claims. This is not found persuasive because the waterproofing article has a very specific structure, whereas claim 1 is directed only to a curable composition.
The requirement is still deemed proper and is therefore made FINAL.
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 3, 6, 8, 10-13, 15, 26, 28 and 30 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.
In claim 3, applicants claim “wherein at least one silane-modified polymer comprises…”.
In claims 6 and 26, applicants claim “wherein the at least one latex emulsion…, and comprising…”.
In claims 8 and 28, applicants claim “wherein the tackifier comprises…”.
In claim 10, applicants claim “…wherein the filler comprises…”.
In claim 11, applicants claim “…wherein the at least one dispersant comprises…”.
In claim 12, applicants claim “…wherein the plasticizer comprises…”.
In claim 13, applicants claim “…wherein the rheology modifier comprises…”.
In claim 15, applicants claim “…wherein the catalyst comprises…”.
Please consider the following:
A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group comprising” or the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
The terms “high” and “low” in claims 11 and 12 are relative terms which renders the claim indefinite. The terms “high” and “low” are 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.
In claim 27, applicant claim the first composition as comprising the silane-modified polymer and the second composition comprising the latex emulsion; however, in claim 25, from which it depends, the second composition is optional. Therefore, it is unclear as to whether the second composition is required or optional.
33In claim 30, applicants claim mixing the first and second composition; however, in claim 25, from which it depends, the second composition is optional. Therefore, it is unclear as to whether the second composition is required or optional.
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 1-15, 25-26, 28 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Georgeau (US 2007/0088137).
Georgeau exemplifies a moisture-curable adhesive composition comprising the following (p. 5, Table 1, Materials A-B):
about 60 wt% of a combination of Wacker STP-E30 and Wacker STP-E35, which are both silane-terminated polyethers (p. 3, [0037]);
Benzoflex 50 (benzoate plasticizer) or DINP plasticizer (diisononyl phthalate);
6-21 wt% tackifier/adhesion promoter, which includes Schenectady Int. SP-103, an alkylphenol formaldehyde resin and/or Revelli A-100, a C9 hydrocarbon resin;
catalyst, such as SUL-11A (mixture of di-n-butyltin oxide and dioctyl phthalate) and DBTDL (dibutyltin dilaurate);
a filler, which is described as JM Huber Q-3, a known calcium carbonate; and
thixatrope Crazyvallac SLX, which is a known amide wax rheology modifier; and
an antioxidant.
Georgeau discloses that when the adhesives are used to bond EPDM rubber sheet to a high density particleboard, a peel strength of at least 2.5-4 pli after 30 day ambient cure, and after 30 days curing at 150°F peel strengths as high as 7.8 pli were obtained (p. 5, [0048]).
Georgeau anticipates instant claims 1-5, 7-10 and 12-15.
Claim 6 can be rejected, as claim 6 only limits the latex emulsion when it is present, and in claim 1, from which claim 6 depends, the latex is listed as an optional component.
Claim 11 can be rejected, as claim 11 only limits the dispersant when it is present, and in claim 9 from which it depends, the dispersant is listed as an optional additive.
As to claims 25 and 28, Georgeau also exemplifies a two part composition comprising the following (Table 1):
F1 which comprises a silane-terminated polyether STP-E30, a silylated polyurethane 1015LM, 6 wt% SP-103 of an alkylphenol formaldehyde resin as a tackifier and
F2 which comprises a silane-terminated polyether S227H and 4 wt% SP-103 of an alkylphenol formaldehyde resin.
Claim 26 can be rejected, as claim 26 only limits the latex emulsion when it is present, and in claim 25 from which it depends, the latex emulsion is listed as optional.
As to claim 31, the two part composition also contains a catalyst, a moisture scavenger, and a plasticizer.
Claims 1, 3-15, 25-29 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 113388345, as evidenced by EP 2907832; however, for convenience, the machine translation will be cited below.
CN ‘345 discloses a sealant comprising component A and component B in a weight ratio of 2-10:1, comprising the following:
Component A:
10-50 parts silane modified polyether resin, 0.5-4 parts water removing agent, 5-60 parts plasticizer (dioctyl phthalate or diisononyl phthalate), 0.1-5 parts thixotropic agent (polyamide wax), 20-70 parts filler (calcium carbonate, talc, barium sulfate or silica fume), 0.1-1 parts catalyst (dibutyltin dilaurate, dibutyltin, stannous octoate and tetraphenyl tin), 0.2-2 parts crosslinking agent (silane coupling agent), 0.5-15 parts pigment, 0.1-3 parts light stabilizer and 0.1-10 parts chain extender; and
Component B:
1 to 50 parts of rubber latex (neoprene latex, acrylic emulsion, styrene-butadiene latex and butyronitrile latex, exemplified as Acronal ECO 7653 with a 46% solids), 5 to 50 parts of emulsified asphalt and 5 to 40 parts of anti-freezing agent which comprises glycerol, glycol, plasticizer and polyvinyl alcohol thickening agent, and can also include 0.1-5 parts dispersant as a second additive, specifically BYK-190 organic silicon dispersant.
Silylated polymers are known and are an established state of art in building waterproofing, as evidenced by EP ‘832.
CN ‘345 anticipates instant claims 1, 3, 5-6, 9-15, 25-27, 29 and 31.
As to claim 4, CN ‘345 exemplifies a combination of STP-E15 (polyether resin terminated by trimethoxy silane) and STP-E30 (polyether resin terminated by dimethoxysilane).
Claims 7-8 can be rejected, as claims 7-8 limit the tackifier when it is present in claim 1, where this component is claimed as optional when a latex emulsion is present.
Claim 28 can be rejected, as claim 25 from which it depends claims the tackifier as an optional component when the polymeric component is present, and the polyvinyl alcohol thickening agent meets applicants’ polymeric additive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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