FINAL REJECTION AFTER FILING 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 § 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 8, 10-13 and 15 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.
Independent claim 1 is deemed to be very indefinite in regards to the limitation of: “a plurality of polymers, that collectively exhibit tackification when moistened, resistance to aqueous agents, and organic solvent resistance;” Said limitation is deemed to be self-contradictory in that how is it possible for the plurality of polymers, that collectively exhibit tackification when moistened to also at the same time possess resistance to aqueous agents, and organic solvent resistance? Is the sub-limitation of “when moistened” referring to a type of moisture that is not aqueous and not an organic solvent? If so, what type of moisture is this and where in Applicant’s specification is there support for said type of “moisture”?
All other claims are also rejected here because they are either directly or indirectly dependent on a rejected base claim.
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:
Due to the very indefinite nature of Applicant’s independent claim 1 (see 35 U.S.C. 112 second paragraph rejection above), the broadest most reasonable interpretation of the scope of Applicant’s claims will be taken. As such, Applicant’s independent claim 1 sub-limitation of “when moistened” will be held in abeyance for the following prior-art rejections. As such, 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 and a cross-linker component, wherein said composition can by some means (e.g. heat, inorganic solvents, organic solvents, electromagnetic radiation etc.) cause/induce the compositions to become tacky if the compositions are not already tacky.
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 03/20/26 with the amendment, 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.
In light of applicant’s said amendment, deleting the previous requirement for moistened viand being necessary for the plurality of polymers to collectively exhibit tackification, the examiner has made the following prior-art rejections:
1) a new obvious-type prior-art rejection has been made over Mai et al. U.S. Patent Application Publication No.: 2016/0046775,
2) a new obvious-type prior-art rejection has been made 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, and
3) the previously made anticipation type prior-art rejection of claim(s) 1, 8, 10-13 and 15 over CN 108682506 A (see previous final-rejection mailed 09/26/25) has been reinstated.
In applicant’s REMARKS made in the amendment filed 03/20/26, applicant continues to insists that CN 108682506 A: “does not disclose at least a plurality of polymers "that collectively exhibit tackification when moistened and applied to a substrate to bond the adhesive to the substrate" and that "the plurality of polymers, when bonded with the substrate, collectively exhibit resistance to aqueous agents and organic solvent resistance," as recited in Claim 1. There is simply no disclosure of these claim elements in CN 108682506 A.”.
Examiner response: 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 incorporates his comments made in the previous final-rejection mailed 09/26/25.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached on 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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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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