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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 15, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on June 15, 2026 has been fully considered. The amendment to instant claims 1 and 15 is acknowledged. In light of the amendment, the new grounds of rejections are set forth below.
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.
4. Claims 1, 4, 6-9, 12-16, 20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
5. Instant claims 1 and 15 recite the polymer component B having a weight average molecular weight of at least 200,000 g/mol. However, instant specification does not provide a support for this limitation in its entirety. Thus, instant specification in multiple places recites the component B having molecular weight of at least 200,000 g/mol without specifying what kind of molecular weight is assumed (see [0057], [0089], [0124] of instant specification). The examples of instant specification do not cite any type or values of molecular weight of the component B. Nowhere in the specification said molecular weight for the component B is cited as being a weight average. It is noted that molecular weight can be expressed as weight average, number average, viscosity average and Z-average. Instant specification does not provide any indication of the component B having a specifically weight average molecular weight of at least 200,000 g/mol.
With respect to Applicant’s arguments (pp. 1-2 of the Arguments filed on 10/29/25 and p. 2 of the Arguments filed on 02/10/26) that weight average molecular weight is cited in paragraphs [00269], [00271] and [00272] of specification, it is noted that said paragraphs [00271] and [00272] of instant specification are silent with respect to weight average molecular weight. Though paragraph [00269] of instant specification and paragraph [00272] of the published application US 2020/0208024 recite that “the weight average molecular weight (Mw) and the polydispersity index (PDI) of the samples are determined via gel permeation chromatography (GPC)”, that citation belongs to Mw of the samples used in examples only. It is noted that in the provided examples molecular weight Mw is cited only for the component A (Table 2). No values for molecular weight of the component B are presented in examples of instant specification.
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.
6. 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) alone, or alternatively in view of Sherman et al (US 2014/0248458).
7. As to instant claims 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 comprising:
i) 85-99.5 pbw ([0126], [0135]) of C1-C32 (meth)acrylic acid ester monomer, specifically esters of (meth)acrylic acid with ethanol, propanol, butanol or isooctyl alcohol ([0121]-[0122]), i.e. having an alkyl group selected from the group consisting of ethyl, propyl, isooctyl (as to instant claims 12-13; corresponding to component b1 of instant claim 1);
ii) optionally 0.5-15 pbw of acid-functional ethylenically unsaturated monomer,
specifically (meth)acrylic acid ([0127], corresponding to component b3 of instant claims 7-8, 20);
iii) 0-10 pbw or 0.5-5 pbw ([0147]) of non-acid functional ethylenically unsaturated monomer, specifically 2-hydroxyethyl (meth)acrylate or acrylamide ([0130], corresponding to component b2 of instant claim 1);
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 pbw ([0174]) of acid functional ethylenically unsaturated monomer units, specifically acrylic acid ([0021]-[0025]; [0044]-[0049], [0174], [0544], corresponding to component a2 of instant claims 1, 4); and
C) 0.1-20 pbw ([0202]) of a hydrogenated hydrocarbon tackifier ([0026]), specifically commercial C9 hydrogenated hydrocarbon tackifiers ([0201], as to instant claim 9, 16).
8. Thus, the component A) of Wieneke et al corresponds to low Tg component B of instant claims; the component B) of Wieneke et al corresponds to the high Tg component A of instant claims.
9. Based on the teachings of Wieneke et al, it would have been obvious to a one of ordinary skill in the art to choose and use the component Biii), i.e. acid-functional ethylenically unsaturated monomer units, corresponding to the component a2 of instant claims 1 and 15, in amount of as high as 15%wt, so to make the component B) as acid-functional, and further choose and use 2-hydroxyethyl (meth)acrylate or acrylamide as comonomers as the component Aiii), so to make the component A) as basic, since it would be obvious to choose material based on its suitability, depending on the specific use of the produced adhesive. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
10. In the alternative, Sherman et al teaches the adhesive compositions comprising a combination of 50-80%wt ([0120]) of a low Tg (meth)acrylic polymer and less than 30%wt ([0083]) of a high Tg (meth)acrylic polymer, wherein the low Tg polymer is having a basic functionality and the high Tg polymer is having an acidic functionality and comprising 2-30%wt of a copolymerizable acidic monomer ([0074]), so that said polymers can form acid-base interaction when mixed (Abstract, [0008]), and wherein said acid-base interaction allows for physical crosslinking by the formation of the acid-base complex, which in turn permits the mixture of the components to be more readily processed through either solvent-borne or solventless methods ([0044]-[0045]).
Thus, Sherman et al explicitly teaches said high Tg and Low Tg polymers used for making adhesive compositions having different functionality, i.e. one of those is acidic and the other- is basic, so to allow for physical acid-base interaction and crosslinking and thus easier processing of said adhesive compositions.
11. Since both Sherman et al and Wieneke et al are related to adhesive compositions comprising a combination of a major amount of a low Tg (meth)acrylic polymer with a minor amount of a high Tg (meth)acrylic polymer, and thus belong to the same field of endeavor, wherein Sherman et al explicitly teaches the importance of said polymers having different acid and base functionality which allows the acid-base physical crosslinking of the composition, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sherman et al and Wieneke et al, and to choose and use the comonomers in the polymers A) and B) of Wieneke et al so that the component A) is having highly basic functionality and the component B) is having highly acidic functionality, such as by using 2-30%wt, or 15%wt of the acidic ethylenically unsaturated monomer, thereby allowing the adhesive composition of Wieneke et al to be physically cross-linked through said acid-base interaction, which in turn allows easier processing of said adhesive composition, as taught by Sherman et al, as well, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
12. The component A) of Wieneke et al, which corresponds to the component B of instant claims, comprises 2-hydroxyethyl (meth)acrylate or acrylamide as comonomers, which comonomers are basic. Instant specification defines the term “basic” as containing a basic monomer in the component B ([0031] of instant specification). Therefore, the component A) of Wieneke et al will intrinsically and necessarily be, at least partially, basic as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
13. The component B) of Wieneke et al, which corresponds to the component A of instant claims comprises acid functional ethylenically unsaturated monomer units, specifically acrylic acid, as comonomers, which comonomers are acidic. Instant specification defines the term “acidic” as containing an acid functional monomer in polymeric component in amount greater than about 1% by weight ([0028] of instant specification). Therefore, the component A) of Wieneke et al will intrinsically and necessarily be, at least partially, acidic as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
14. Wieneke et al further teaches that for both the high and the low Tg (meth)acrylate copolymers, a useful predictor of interpolymer Tg for specific combinations of various monomers can be computed by application of Fox equation ([0189]), which provides Tg values based on weight fractions of the specific monomers and Tg values of the specific monomers. Thus, based on the teachings of Wieneke et al, it would have been obvious to a one of ordinary skill in the art to choose and use the specific comonomers for making each of the high Tg copolymer and the low Tg copolymer, and further to make variations and optimize by routine experimentation the specific types and amounts of said comonomers used, and thereby specific Tg values of said high Tg and low Tg copolymers, molecular weight of the produced low Tg and high Tg copolymers, and the relative amounts of the components A), B) and C) in the composition of Wieneke et al, depending on the specific level of adhesiveness desired, which in turn depends on the specific end use of the product, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
15. As to instant claims 15-16, 20, the low Tg (meth)acrylate copolymer A) is prepared as a syrup copolymer, wherein the syrup polymer technique comprises partially polymerizing monomers to produce a syrup polymer comprising the low Tg (meth)acrylate copolymer and unpolymerized monomers ([0153]). The method for making the composition comprises combining the free-radically polymerized high Tg (meth)acrylate copolymer ([0181]) with said syrup low Tg copolymer and further the tackifier ([0216]), wherein the composition is further polymerized ([0153], [0216]).
16. All ranges in the composition of Wieneke et al are overlapping with the corresponding ranges of those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
17. It is further noted that instant specification does not provide sufficient evidence of criticality of instant invention.
Thus,
i) instant claims 1 and 15 are extremely broad and include enormous number of possible combinations of components/copolymers, providing enormous number and variety of possible compositions;
ii) instant claims are silent with respect to any properties of the claimed compositions;
iii) the examples provided in instant specification are based on very specific copolymers of: isobornyl (meth)acrylate with methacrylic acid as component A and very specific copolymers of 91%wt of 2-ethylhexyl acrylate; 6%wt of NVP; 2 or 3%wt of 2-hydroxyethylacrylate and 0-1%wt of 2-hydroxyethyl acrylamide as component B (Tables 1 and 2 of instant specification). The scope of instant claims is significantly broader.
iv) On the other hand, Wieneke et al discloses a curable liquid precursor of a pressure-sensitive adhesive composition comprising both a low Tg (meth)acrylate copolymer and a high Tg (meth)acrylate copolymer, similar to that claimed in instant invention, wherein the exemplified high Tg (meth)acrylate polymer is a copolymer of isobornyl acrylate with acrylic acid (Table 1 of Wieneke et al), which is substantially the same as the high Tg component A exemplified in instant invention. Further, the exemplified low Tg acrylic syrup of Wieneke et al comprises 2-ethylhexyl acrylate with acrylic acid (Table 3, corresponding to components b1 and b3 of the component B of instant claims 7-8), wherein Wieneke et al further teaches that the acid-functional monomer is optional ([0016]), i.e. may or may not be used, and the low Tg copolymer comprises 0-10 pbw or 0.5-5 pbw ([0147]) of non-acid functional ethylenically unsaturated monomer, specifically 2-hydroxyethyl (meth)acrylate or acrylamide ([0130], corresponding to component b2 of instant claims).
Therefore, the compositions disclosed by Wieneke et al are substantially the same as those claimed in instant invention.
v) It is further noted, that though Wieneke et al does not exemplify the use of low Tg (meth)acrylate copolymer comprising 2-hydroxyethyl (meth)acrylate or acrylamide units, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
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).
18. Claims 1, 4, 7-9, 12-13, 15-16, 20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of US 12,522,756 (previously rejected over claims 4-5, 9-12, 15, 19-20 of a copending application 16/720,158).
19. 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 (see p. 1 of the Arguments filed on 06/15/26) 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
20. Applicant's arguments filed on June 15, 2026 have been fully considered but they are moot in light of the new grounds of rejections and discussion set forth above.
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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