DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on February 10, 2026 has been fully considered. The previous rejections not cited below are withdrawn. The previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
Claim Objections
3. Claim 12 is objected to because of the following. Instant claims 6 and 14 are the identical. Claim 12 recites a Markush type listing of alkyls. When materials recited in a claim are so related as to constitute a proper Markush group, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper (see MPEP 2173.05(h)).
Appropriate correction is required.
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.
4. Claims 1, 4, 7-9, 12-13, 15-16, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wieneke et al (US 2016/0096980).
5. The rejection is adequately set forth on pages 5-11 of an Office action mailed on November 10, 2026 and is incorporated here by reference.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
6. Claims 1, 4, 7-9, 12-13, 15-16, 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 4-5, 9-12, 15, 19-20 of a copending application 16/720,158.
7. The rejection is adequately set forth on pages 7- 14 of an Office action mailed on March 21, 2025 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
In response to Applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Response to Arguments
8. Applicant's arguments filed on February 10, 2026 have been fully considered.
9. With respect to Applicant’s arguments regarding the rejection of Claims 1, 4, 7-9, 12-13, 15-16, 20 under 35 U.S.C. 103 as being unpatentable over Wieneke et al (US 2016/0096980), it is noted that:
1) Wieneke et al discloses a curable liquid precursor of a pressure-sensitive adhesive composition comprising a low Tg (meth)acrylate copolymer and a high Tg (meth)acrylate copolymer ([0097]), specifically comprising (Abstract):
A) 60 pbw or more ([0014]), preferably at least 80 pbw ([0217]) of a low Tg (meth)acrylate polymer having Tg of below 20⁰C or below 0⁰C ([0104], [0118]) and molecular weight of at least 250,000, or at least 500,000 ([0161]) and
B) up to 40 pbw ([0020]), preferably 5-40 pbw ([0217]) of a high Tg (meth)acrylate polymer having Tg of above 50⁰C ([0111]; [0165]) and weight average molecular weight of above 40,000 and less than 100,000 ([0163]-[0164]) and comprising:
i) up to 100 pbw, or 97%wt, of high Tg (meth)acrylic acid ester monomer units,
specifically methyl (meth)acrylate or isobornyl acrylate ([0179], [0173], Table 1, i.e.
ethylenically unsaturated monomer component a1 of instant claim 1);
ii) 0-10 pbw of non-acid functional polar ethylenically unsaturated units such as acrylamide ([0130], [0176], corresponding to component a3 of instant claims 6, 14);
iii) 0-15 or 1-5 pbw of acid functional ethylenically unsaturated monomer units, specifically acrylic acid ([0021]-[0025]; [0044]-[0049], [0174], [0544], corresponding to component a2).
Thus, the low Tg component of Wieneke et al is having molecular weight of at least 250,000 or at least 500,000, wherein said values of “at least 250,000” is within the open-ended range of “at least 200,000” as claimed in instant invention.
The high Tg component of Wieneke et al is having molecular weight of above 40,000 and less than 100,000, which range is well within the claimed range of 35,000-200,000.
2) The claimed range for the molecular weight of low Tg component of “at least 200,000
g/mol” covers all the values from 200,000 g/mol up to infinity, or at least up to several million g/mol, as known for ultra-high molecular weight polymers, which range would definitely include values of 250,000 g/mol and 500,000 g/mol taught by Wieneke et al.
3) In addition, instant specification in paragraph [0089] specifically discloses that the component B may have values of molecular weight from minimum to maximum, i.e. 200,000 to 20,000,000 g/mol, as presented below:
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Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, 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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764