NON-FINAL REJECTION AFTER FILING 2nd RCE
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 .
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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.
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.
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.
Examination Note:
Applicant’s independent claim 1 is drawn to an adhesive composition. Independent claim 1’s many references to “a security document”, are only an intended use limitation for the adhesive composition, and as such said intended use is given no weight in the following prior-art rejections. What is required for the applied prior-art to meet the scope of applicant’s independent claim 1, is that the prior-art compositions contain a plurality of polymer that collectively when moistened exhibit tackification, a thermally activated cross-linker component, and a blocking agent. The subphrase “when moistened” is also a method of use limitation, and as such no prior-art reference needs to explicitly disclose a moistening step for their plurality of polymers. All that is needed is that if the plurality of polymers were somehow subsequently moistened, that tackification would occur.
Claim(s) 1, 8, 10-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Mai et al. U.S. Patent Application Publication No.: 2016/0046775.
Mai et al. discloses a one layer adhesive film including a heat curable adhesive and a second adhesive composition. The heat curable adhesive includes a surface-deactivated solid isocyanate and a polymer (e.g. polyurethane) that includes functional groups that are reactive with isocyanate (encompasses applicant’s polyurethane polymer of dependent claim 11). A method of making an article that includes the adhesive film and article made thereby are also disclosed, see abstract.
The surface-deactivated solid isocyanate functions as a crosslinking agent (reads on Applicant’s crosslinker of dependent claim 15), see paragraph [0049].
The heat curable adhesive composition preferably includes optional adjuvants, such as other polymers and blocking agents, see paragraphs [0058]-[0059].
The preferred other polymer(s) to make the tacky adhesive compositions can be selected from polyurethanes (reads on Applicant’s polymer of dependent claim 11) that are not reactive with isocyanate functionality; vinyl acetate ethylene copolymers (VAE) (reads on Applicant’s polymers of dependent claims 10-11); polyvinyl alcohol (PVOH); polyvinyl acetate (PVAc); polyacrylates that are not reactive with isocyanate functionality (is deemed to encompass acrylic acid of applicant’s dependent claim 8); acrylonitriles (e.g., butadiene acrylonitrile); styrene butadiene rubber (SBR) (reads on Applicant’s tacky polymer of dependent claim 8); polyvinylchloride (reads on Applicant’s polymer of dependent claim 11) and combinations thereof, see paragraphs [0060] and [0068]-[0069].
Mai et al. differ from Applicant’s claimed adhesive composition in that there does not seem to be a direct teaching (i.e. by way of a specific example) to where the heat curable adhesive composition actually comprises a blocking agent.
It would have been obvious to one having ordinary skill in the art to use Mai et al.’s direct disclosure that blocking agents (see paragraphs [0058]-[0059]) are well known optional components in heat curable adhesive compositions that comprise crosslinking agents and various types of aqueous solvent resistance and organic solvent resistant polymers, as strong motivation to actually incorporate a blocking agent into the heat curable adhesive compositions for the benefits such would impart, such as delayed crosslinking, composition stability during storage etc.). It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Claim(s) 1, 8, 10-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over CN 105514304 A in view of either Mai et al. U.S. Patent Application Publication No.: 2016/0046775 or Kulkarni et al. U.S. Patent Application Publication No.: 2016/0312090.
CN 105514304 A discloses lithium battery plastic film package material the package material has a polypropylene layer, first bonding layer, stainless steel foil, second adhesive layer, nylon layer, third adhesive layer and polyethylene terephthalate (PET) layer. The components contains (in parts) epoxy resin (40-60), titanium dioxide (10-15), PTFE (8-15) (reads on at least one of Applicant’s polymer species as set forth in dependent claim 10), polyvinylidene fluoride (3-8) (reads on at least one of Applicant’s polymer species as set forth in dependent claim 11), polyether dihydric ethanol (3-10), carboxymethyl cellulose (5-15) (reads on at least one of Applicant’s polymer species as set forth in dependent claims 8 and 10), glass fiber (3-10), pentaerythritol (5-10), isocyanate (10-20) (reads on one of Applicant’s cross-linker of dependent claim 15), trimethylolpropane (5-10), poly adipate (10-15), ferric oxide (1-3) and graphite (0.1-0.5) based on weight meter. Please note that PTFE is polytetrafluoroethylene and isocyanate is a crosslinking agent.
CN 105514304 A differ from Applicant’s claimed adhesive composition in that there does not seem to be a direct disclosure to the further incorporation of a blocking agent into CN 105514304 A’s adhesive composition.
Mai et al. has been described above and discloses heat curable adhesive compositions that may optionally contain blocking agents.
Kulkarni et al. discloses a process of applying an adhesive to an elastomer includes the application to the elastomer of a two part adhesive formulation. The adhesive having a part A including at least a polyol, an adhesion promoter, a chain extender, a catalyst, a water scavenger and optional additives, such as cross-linkers/toughening agents, see paragraph [0038]; and a part B comprising: polyurethane prepolymer, adhesion promoter, a plasticizer and optionally additives, such as blocking agent(s), see paragraph [0042]. The two part adhesive formulation is admixed together, generally in a weight ratio of 1:1 to 1:1.75, and when activated, cured to form the adhesive. In contrast to the prior art, no priming or surface activation is required to obtain a high strength bond to the elastomer. The resulting article of an elastomer with the resultant adhesive is sufficiently strong to result in surface peel off of the elastomer. A kit is provided for the repair of an elastomer without resort to priming the elastomer, see abstract, TABLE 1 and paragraphs [0020], [0039] and [0042].
It would have been obvious to one having ordinary skill in the art to use Mai et al.’s direct disclosure that blocking agents (see paragraphs [0058]-[0059]) are well known optional components in heat curable adhesive compositions that comprise crosslinking agents and various types of aqueous solvent resistance and organic solvent resistant polymers, as strong motivation to actually incorporate a blocking agent into CN 105514304 A’s adhesive compositions for the benefits such would impart, such as delayed crosslinking, composition stability during storage etc.). It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Likewise it would have been obvious to one having ordinary skill in the art to use Kulkarni et al.’s direct disclosure that blocking agents (see paragraph [0042]) are well known optional components in curable adhesive compositions that comprise crosslinking agents and various types of aqueous solvent resistance and organic solvent resistant polymers, as strong motivation to actually incorporate a blocking agent into CN 105514304 A’s adhesive compositions for the benefits such would impart, such as delayed crosslinking, composition stability during storage etc.). It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Claim(s) 1, 8, 10-13 and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by CN 108682506 A.
CN 108682506 A discloses compositions for making tensile cables and jackets. Preferred compositions comprise: 32-35 pts. wt., preferably 33 pts. wt. vinyl silicone rubber, 8-13 pts. wt., preferably 11 pts. wt. dibutyltin dichloride, 1-2 pts. wt., preferably 1 pts. wt. zinc methacrylate, 3-6 pts. wt., preferably 5 pts. wt. pine tar, 0.6-3.1 pts. wt., preferably 2.1 pts. wt. of sodium carboxymethyl cellulose (reads on at least one of Applicant’s polymer species as set forth in dependent claims 8 and 10); methyl 2.6-3.2 pts. wt., preferably 2.8 pts. wt. chromium chloride acrylate complex, 5-17 pts. wt., preferably 13 pts. wt. polytetrafluoroethylene fiber, 2.9-3.7 pts. wt., preferably 3.2 pts. wt. modified nano-silica, 1.9-3.7 pts. wt., preferably 2.5 pts. wt. cross-linking agent, and 2.9-3.2 pts. wt., preferably 3.0 pts. wt. antioxidant. Preferred Conditions: The ball milling rotating speed is 400-600 revolution per minute for 8-12 minutes. The antioxidant is phosphite ester antioxidant. The crosslinking agent is a mixture of an aziridine crosslinking agent and a crosslinking agent stabilizer in a ratio of 3:2. Please note that aziridine is deemed to read on applicant’s cross-linker component of dependent claim 15.
Applicant’s claims are deemed to be anticipated over said preferred compositions when combined with an aqueous solvent and/or melted.
Please note that CN 108682506 A’s carboxymethyl cellulose component, is direct taught and claimed in Applicant’s dependent claim 8, as a component that exhibits tackification (when activated e.g. by water). Also note that that CN 108682506 A’s polytetrafluoroethylene fiber, directly reads on one of Applicant’s polymers that exhibits resistance to organic solvents, as set forth in dependent claim 10 and also exhibits resistance to aqueous agents, as set forth in Applicant’s dependent claim 11.
Applicant’s attention is also drawn to the fact that CN 108682506 A’s pine tar component, is a collection of polymeric components, and is notoriously well known to exhibits tackification when in a fluid state, and also exhibits resistance to aqueous agents. Likewise CN 108682506 A’s vinyl silicone rubber component would exhibits tackification when melted, exhibits resistance to aqueous agents and exhibits resistance to most organic solvents.
Response to Arguments
Applicant's arguments filed 06/30/26 with the amendment and entered with the RCE filed 07/21/26, have been fully considered but are not persuasive to put the claims in condition for allowance for the reasons set forth above. Additional examiner comments are set forth next.
Applicant’s amendment to independent claim 1, has overcome the previously made 35 U.S.C. 112 indefiniteness rejection.
In applicant’s REMARKS made in the amendment filed 06/30/26, applicant continues to insists that CN 108682506 A: “does not disclose at least a plurality of polymers "that collectively, when moistened, exhibit tackification to form a wet tack for application to a substrate of a security document to bond the adhesive to the substrate” and that "the plurality of polymers, after bonding with the substrate of the security document, collectively exhibit resistance to aqueous agents and organic solvent resistance;" as recited in Claim 1. Applicant insists that there is simply no disclosure of these claim elements in CN 108682506 A.
Examiner response: Please see the Examination Note above. Applicant independent claim 1 is drawn to an adhesive composition and CN 108682506 A teaches compositions that comprise all of applicant’s claimed components. It is well established that a composition and its properties are in separatable. As such, when CN 108682506 A is moistened, it would inherently exhibit tackification properties. There is no need for the CN 108682506 A reference to explicitly disclose this fact. Furthermore, the composition of CN 108682506 A is directly disclosed to be used as an insulating layer and sheath for power cables. There is no incompatibility with such a use and the composition having adhesive properties. Afterall, a composition with tackification properties, would be highly beneficial to keep the composition in direct contact with the inner power cores elements.
Applicant continues to argue that CN 108682506 A’s crosslinking stabilizer component is not the same as applicant’s blocking agent.
Examiner response: The examiner wholly disagrees with applicant’s position because it goes without saying that CN 108682506 A’s crosslinking stabilizer prevents the crosslinking agent from reacting with the rest of the composition until some action is done to deactivate it. This is the same function that applicant’s claimed blocking agent performs.
Applicant argues that CN 108682506 A is drawn to a tensile cable having a sheath coating, whereas applicant’s invention has been newly amended to be an adhesive for a security document.
Examiner response: It must be pointed out that applicant’s said amendment of wherein the adhesive is for a security document, is an intended method of use limitation, and as such it is being given NO patentable weight since applicant’s claims are drawn to an adhesive not to a method of using the adhesive.
Finally, in regards to the anticipation prior-art over CN 108682506 A, the examiner also incorporates his comments made in the previous final rejection mailed 05/05/26.
The Examiner notes Applicant’s additional arguments traversing the prior-art rejections made over: 1) Mai et al. U.S. Patent Application Publication No.: 2016/0046775, and 2) CN 105514304 A in view of either Mai et al. U.S. Patent Application Publication No.: 2016/0046775 or Kulkarni et al. U.S. Patent Application Publication No.: 2016/0312090. Nevertheless, said Applicant’s additional arguments traversing the prior-art rejections made over said prior-art references, are basically identical to Applicant’s traversal arguments made over Examiner’s prior-art rejection made over CN 108682506 A. As such, the Examiner’s rebuttal to Applicant’s said traversal arguments are the same as made in the Examiner’s rebuttal to applicant’s traversal argument over CN 108682506 A.
Finally, in light of Applicant’s continual arguments that the claimed adhesive composition is intended to be used for “security documents” and how “important” this intended use is, Applicant might want to consider filing divisional application(s) drawn to said security documents and/or a method of imparting the adhesive composition to security documents. If said types of divisional applications were actually filed by Applicant, then yes, a claimed limitation requiring the presence of an actual “security document” would be an actual limitation that the prior-art would need to meet, which is presently NOT the situation with the Present Application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
