DETAILED ACTION
This is an Office action based on application number 17/267,794 filed 10 February 2021, which is a national stage entry of PCT/US2019/045521 filed 7 August 2019, which claims priority to US Provisional Application Nos. 62/809,945 filed 25 February 2019, 62/775,811 filed 5 December 2018, and 62/717,942 filed 13 August 2018. Claims 1, 3, 6-7, 10, 29-32, 34-39 and 45. Claims 29-32 and 34-39 are withdrawn from consideration due to Applicant’s election. Claims 2, 4-5, 8-9, 11-28, 33, and 40-44 are canceled.
Amendments to the claims, filed 23 October 2025, have been entered into the above-identified application.
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 November 2025 has been entered.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 7, 10, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Lane et al. (US Patent Application Publication No. US 2006/0251890 A1) (Lane) in view of Hayashi et al. (US Patent Application Publication No. US 2011/0244227 A1) (Hayashi) and Adur et al. (US Patent No. 4,957,968) (Adur).
Regarding instant claims 1, 3, and 7:
Lane discloses pressure sensitive adhesive laminates comprising at least one adhesive base layer comprising at least one adhesive base polymer (paragraph [0006-0008]).
Lane further teaches that the adhesive base polymer is at least one selected from the group inclusive of a block copolymer adhesive base polymer and a synthetic rubber (Claim 16).
Lane further teaches that the block copolymer is inclusive of di-block and tri-block copolymers selected from styrene-containing blocks (e.g., styrene-isoprene-styrene and styrene-butadiene) (Claims 29-30).
Lane further characterizes these block copolymers as thermoplastic elastomers that behave like a rubber at room temperature, but can be processed in the melt as conventional polymers (paragraph [0059]).
Lane teaches that said block styrene copolymers impart cohesive strength (paragraph [0067]).
Lane further discloses that the base polymer of the adhesive base layer is co-extruded onto an outer filmic layer (paragraph [0017]), i.e., the adhesive composition is extrudable.
Lane further teaches that the adhesive base layer contains inorganic fillers to provide desired properties, such as, but not limited to, appearance properties (opaque or colored films), durability, and processing characteristics. Lane further discloses that examples of useful fillers include calcium carbonate, titanium dioxide, and fibers (paragraph [0085]).
Lane does not disclose the relative amounts of rubber, thermoplastic elastomer, and the filler.
As to the relative amounts of thermoplastic elastomer and rubber:
Hayashi discloses an adhesive composition comprising 30 wt% to 95 wt% of a thermoplastic elastomer (paragraphs [0046-0048]).
Hayashi further discloses that the adhesive composition comprises a softening agent that is effective for improving adhesion selected from a polyisoprene (paragraph [0062]) (i.e., a rubber) in an amount of less than 40 wt % (paragraphs [0062; 0064]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the compounding amounts of thermoplastic elastomer and rubber disclosed by Hayashi to produce the composition of Lane. The motivation for doing so would have been to obtain a thermoplastic elastomer-based adhesive base polymer having an increased potential adhesion increased due to a softening effect.
It is noted that the ranges disclosed by Hayashi overlap the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
As to the amount of filler:
Adur discloses adhesive thermoplastic elastomer blends (Title).
Adur further discloses that the blends further include fillers and reinforcing agents in an amount of 0 to 50% (col. 5, line 44-52), which overlaps the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the filler desired by Lane in the amount prescribed by Adur. The motivation for doing so would have been that Adur provides an art recognized compounding amount for fillers in an adhesive thermoplastic adhesive blend.
As to the limitation “cold adhesive”, said limitation is an intended use of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In the instant case, the scope of the prior art encompasses an adhesive base layer composition that obviates the claimed cohesive composition, and one of ordinary skill in the art would readily conclude that such an adhesive base layer composition is at least capable of performing the same intended use.
As to the limitation that the cold seal adhesive “adheres to itself and not substantially to other materials”, Lane teaches that the adhesive base layer is co-extruded with an outer filmic layer to form a non-adhesive laminate (paragraph [0006]). One of ordinary skill in the art would readily conclude that a non-adhesive layer is one that does not substantially adhere to other materials. The co-extruded combination of the outer filmic layer and the adhesive base layer is not construed to be an adhesive-type bond as they are melt welded together via coextrusion.
As to the limitation “such that opposing cohesive layers of material when contacted with one another forms a cohesive-cohesive bond and creates a tight bond or seal”, such a limitation is an intended effect of the claimed cohesive composition. As the prior art combination encompasses an embodiment that is substantially identical to the claimed composition, one of ordinary skill in the art would likely conclude that the encompassed composition would have the same properties as the claimed composition (i.e., the ability to form cohesive-cohesive bonds that create a tight bond or seal when opposing cohesive layers of materials are contacted with one another).
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
While it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on the Applicant to show that any additional ingredients that may be disclosed in the prior art but not encompassed by the scope of the claims, would in fact be excluded from the claims and that such ingredients would materially change the characteristics of the applicant' s invention, See MPEP § 2111.03.
Therefore, it would have been obvious to combine Hayashi and Adur with Lane to obtain the invention as set forth by the claims.
Regarding instant claim 10:
Lane further discloses that the block copolymers are represented by a di-block structure A-B, wherein A represents a hard thermoplastic phase (e.g., styrene), and B represent a soft-block that is rubber or elastomeric at room temperature (e.g., polyisoprene, polybutadiene, ethylene-butylene, and ethylene-propylene) (paragraphs [0060-0063]).
Lane teaches that said block copolymers are thermoplastic elastomers that behave like a rubber at their use temperature, but can be processed in the melt as conventional polymers (paragraph [0059]). From this, one of ordinary skill in the art would readily glean that the desired properties (i.e., rubber character and melt processibility) are readily controlled by the selection of the content of thermoplastic and elastomeric blocks, and that such control can be accomplished through, at least in part, the selection of the type and amount of block copolymer (e.g., di-block and tri-block copolymers).
Since the instant specification is silent to unexpected results, the specific amount of diblock copolymers is not considered to confer patentability to the claims. As the rubbery characteristics and melt processability of the adhesive are variables that can be modified, among others, by adjusting the selection of the type and the amount of the block copolymer components, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the type and amount of the block copolymer component in Lane to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 45:
As discussed in the rejection of claim 1, above, the adhesive base layer of Lane forms a non-adhesive laminate, and only exhibits adhesive properties once a tackifier migrates into the adhesive base layer from the tackifier layer applied thereon. Therefore, one of ordinary skill in the art would readily conclude that the adhesive base layer, without having tackifier migrated therein, is non-tacky to touch at ambient temperatures in the same way as the claimed composition.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lane in view of Hayashi and Adur, as applied to claim 1 above, and further in view of Habeck et al. (US Patent No. 4,037,016) (Habeck).
Regarding instant claim 6:
Lane in view of Hayashi and Adur discloses the adhesive composition comprising a synthetic rubber as cited in the rejection of claim 1 above. Lane further teaches that said synthetic rubber is inclusive of polyisoprene (paragraph [0058]). Similarly, Hayashi discloses a polyisoprene softening agent as cited above.
Lane does not explicitly disclose that the rubber is 1,4 cis polyisoprene
However, Habeck discloses an adhesive composition comprising at least a synthetic rubber selected from cis-1,4-polyisoprene (col. 1, lines 38-42).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art references before him or her, to use the specific cis-1,4-polyisoprene synthetic rubber of Habeck as the synthetic polyisoprene desired by Lane. The motivation for doing so would have been that cis-1,4-polyisoprene synthetic rubber is an art-recognized synthetic rubber polyisoprene usable in the production of adhesive compositions, and the replacement of a general “polyisoprene” with a specific cis-1,4-polyisoprene would yield predictable results (i.e., the production of a rubber-based adhesive composition). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Habeck with Lane in view of Hayashi and Adur to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive. Applicant’s relies upon the same arguments presented in the after-final response filed 23 October 2025. The responses to said arguments presented in the proceeding advisory action are provided below.
Applicant broadly points out the lack of teaching in Lane and Hayashi and why one of ordinary skill in the art would not combine these references to obtain a cold seal adhesive. Applicant alleges that there is no teaching, suggestion, or motivation in Lane for blends of rubbers and thermoplastic elastomers. Applicant contends that the Examiner is stretching the terminology in Lane by focusing on the statement that the base adhesive comprises at least one base adhesive polymer, and among the listed polymers are rubbers and thermoplastic elastomers. Applicant, however, contends that if one looks at the polymer description in Lane, it would be clear that Lane is not teaching blends of different classes of polymers.
Applicant’s arguments are unpersuasive. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP §2123(I). It is the Examiner’s position that the cited disclosure of Lane (i.e., at least one selected from the group inclusive of block copolymer adhesive base polymer and synthetic rubber) is inclusive of the claimed combination. While Lane may favor and disclose embodiments wherein only one base polymer is used, these specific embodiments do not teach away from an embodiment wherein a combination of a copolymer and synthetic rubber are used.
Applicant further traverses the teachings of Hayashi in its disclosure of the claimed amounts of the two components of the claimed blend. Applicant argues that Hayashi is not teaching the addition of rubber as a softening agent, rather low molecular weight diene polymers are being used as plasticizers to soften the compositions. Applicant contends that while Hayashi discloses polyisobutylene, the polyisobutylene of Hayashi is low molecular weight and is not used in the same way as a rubber.
Applicant’s arguments regarding Hayashi are unpersuasive. Hayashi teaches that a composition comprising a polyisoprene softening agent in an amount less than 40% is effective for improving adhesion. The passage cited by Hayashi teaches a softening agent inclusive of at least “a low-molecular weight diene based polymer” and “a polyisobutylene” (i.e., two different components). Applicant has not persuasively argued that the polyisobutylene component of Hayashi is not inclusive of polyisobutylene rubbers.
Applicant further traverses that the reliance on the remaining prior art references by stating that they do not remedy the deficiencies of those references discussed above. As the alleged deficiencies are addressed, Applicant’s arguments are unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
/TAM/Examiner, Art Unit 1788 11/21/2025