RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1, 10, and 17, filed on 08 October 2025, have been entered in the above-identified application. Claims 1, 3-10, and 17-19 are pending.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 112(b) rejection of claims 17-19, made of record on page 3, paragraph 4 of the office action mailed 09 May 2025 has been withdrawn due to Applicant’s amendment in the response filed 08 October 2025.
NEW AND REPEATED REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
Claims 1 and 10 each refer to “[a] cold environment”. The specification defines “cold/moist conditions” to mean a temperature lower than 10°C and relative humidity of more than 60%, see p. 3, lines 12-13 of the original specification. The Examiner has considered “environment” to be synonymous with “conditions”. The Examiner has thus interpreted the claims to refer to temperatures of lower than 10°C. As the claims do not refer to moist conditions, the Examiner has not interpreted the claims to also require a relative humidity of more than 60%.
Claim Objections
Claim 1 is objected to because of the following informalities. Appropriate correction is required.
Claim 1 at the last line should recite “…when used in a cold environment.” to be grammatically correct and consistent with claim 10.
Claim Rejections - 35 USC § 112
Claims 1, 3-10, and 17-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1 and 10, the claims each recite that the pressure sensitive adhesive composition “has enhanced adhesion properties when used in [a] cold environment.” It is unclear what adhesion properties are being referred to. The specification at p. 1, lines 2-3 provides literal support for this limitation but does not further define enhanced adhesion properties. The specification also describes a cold temperature loop tack test performed at -10°C, see p. 12, lines 9-17. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus the Examiner has not interpreted the claims to require an “enhanced” loop tack in a cold environment. Note that claims are to be given the broadest reasonable interpretation consistent with the specification, see MPEP § 2111.
Furthermore, it is unclear what is intended by “enhanced”. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As “enhanced” is a relative term it is unclear what standard the claimed adhesive composition is being referred to in order to demonstrate “enhanced” properties relative to some other standard or condition. The specification mentions a loop tack test at -10°C, see p. 12, lines 9-17, but it is not clear what value of the loop tack test is considered to be “enhanced”.
Regarding claims 3-9 and 17-19, these claims depend on one or more of the above claims and thus incorporate the above-described indefinite subject matter.
Claim Rejections - 35 USC § 103
Claims 1, 3-10, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Van Es (U.S. Pub. 2006/0024263) in view of EP 1,342,762 A2.
Regarding claims 1 and 10, Van Es discloses an aqueous dispersion of a polymer which is used as a pressure sensitive adhesive, see abstract and p. 1, [0001] and [0012] and p. 5, [0099]. The polymer P is formed form the following monomers:
At least one C1-20 alkyl (meth)acrylate with homopolymers that have a glass transition temperature below -40 °C, preferably 2-ethylhexyl acrylate, in the preferred amount of from 60-70 wt. % based on the total weight of polymer P, see p. 2, [0027-0028];
At least one C1-20 alkyl (meth)acrylate with homopolymers that have a glass transition temperature from about -25 to 0 °C, preferably selected from ethyl acrylate, sec-butyl acrylate, isobutyl acrylate, and isopropyl acrylate, in the preferred amount of from 10-15 wt. % based on the total weight of polymer P, see p. 2, [0029-0030];
At least one C1-20 alkyl (meth)acrylate with homopolymers that have a glass transition temperature from about 0°C to +20 °C, preferably selected from methyl acrylate and n-butyl methacrylate, in the preferred amount of from 10-15 wt. % based on the total weight of polymer P, see p. 2, [0029-0030];
From about 1-15 wt. % based on the total weight of Polymer P of one or more from the groups listed at p. 2, [0035-0039] which include vinylaromatic compounds (preferably styrene) and vinylesters of C1-C20 carboxylic acids, most preferably vinyl acetate and vinyl formate, see p. 2, [0034-0040];
An ethylenically unsaturated compound with a carboxyl group, preferably acrylic acid or methacrylic acid, in a preferable range of about 0.5 to about 5 wt. % of the total weight of polymer P, see p. 2, [0042];
Other monomers described at p. 2, [0043] through p. 3, [0054] which include hydroxyl group-containing monomers.
Van Es also teaches including a chain transfer agent in the amount of from 0.01 to 0.8 parts by weight per 100 parts by weight of the monomers to be polymerized, see p. 4, [0089].
Polymer P is obtained by emulsion polymerization, see p. 4, [0079].
Polymer P of Van Es reads on the claimed components (a)-(g), as component (a) reads on claimed component (a) when the preferred monomer 2-ethylhexyl acrylate is selected; component (c) of Van Es reads on claimed component (b) when preferred component n-butyl methacrylate is selected; component (d) of Van Es includes preferred components styrene and vinyl acetate which read on claimed components (c) and (e); component (e) of Van Es reads on claimed component (d) when preferred component acrylic acid or methacrylic acid is selected. The chain transfer agent of Van Es reads on claimed component (g).
Regarding the provisio that the monomeric composition does not include any of the specified materials, polymer P of Van Es need not include any C1-C2 alkyl (meth)acrylate as these materials are listed in the alternative for the monomers that comprise polymer P. For example, component (b) of Van Es may preferably be sec-butyl acrylate or isobutyl acrylate or isopropyl acrylate rather than ethyl acrylate, and component (c) may be n-butyl methacrylate rather than methyl acrylate. Furthermore, no monomers having sulfonic groups are required. Van Es teaches including a surfactant at p. 4, [0081], but polymerizable surfactants are not required. Di-esters of dicarboxylic acids are also not disclosed or required by Van Es.
Although Van Es does not disclose any particular examples that meet the claimed invention, the specified preferred monomers that comprise polymer P include each of the claimed materials in preferred amounts that overlap the claimed amounts, and Van Es does not require the use of any of the excluded materials specified in Claim 1. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Van Es does not specify including a monomer (f) comprising hydroxy ethyl acrylate or hydroxy methyl acrylate as claimed. Van Es also does not specify that the adhesive composition has enhanced adhesion properties when used in a cold environment.
However, EP ‘762 similarly describes an aqueous dispersion useful as a pressure-sensitive adhesive composition (see p. 2, [0001]) which includes a polymer that is a reaction product of a C1-C20 alkyl (meth)acrylate, an ethylenically unsaturated carboxylic acid, a C2-C8 hydroxyalkyl (meth)acrylate, a vinyl aromatic, optionally an ethylenically unsaturated monomer containing sulfonic acid, and optionally a vinyl ester of a carboxylic acid, see p. 2, [0007] and [0010]. Suitable hydroxyalkyl (meth)acrylates include hydroxyethyl (meth)acrylate, see p. 3, [0013]. The amount of this material is from 0 to about 3% of the monomers which are used to form the adhesive copolymer, see p. 3, [0018]. In a preferred embodiment, the adhesive is formed from 0.25-2.5 wt.% acrylic acid, 0-3 wt. % hydroxy propyl acrylate, greater than 0 to 3 wt.% styrene, 0-1 wt. % sodium vinyl sulfonate, from 0-8 wt. % vinyl acetate, and the balance is 2-ethylhexyl acrylate, see p. 3, [0020]. See also the examples described at p. 8, [0075] and Table 1 on p. 9.9. Note that a vinyl sulfonate is not required by the reference, and in fact 0% is among the preferred amounts of this material. It would have been obvious to have substituted hydroxyethyl acrylate for hydroxypropyl acrylate as EP ‘762 discloses each of these as suitable hydroxy-functional monomers for the acrylic copolymer.
Regarding enhanced adhesion properties, EP ‘762 notes that the adhesive polymer can provide adhesion and cohesion in a temperature range of from -30°C to +50 °C, see abstract, and also tested the 180° peel strength of the adhesive on polyethylene film and on corrugated paper at -23.3°C (-10°F), see p. 8, [0071-0072] and Table 1 on p. 9. This is considered to read on the claimed enhanced adhesion properties when used in a cold environment.
Van Es and EP ‘762 are analogous as they are similar in composition and function, as each discloses pressure-sensitive adhesive materials in the form of an aqueous dispersion which is a polymer formed from primarily 2-ethylhexyl acrylate as well as acrylic acid, vinyl acetate, and styrene and other minor components. Each reference teaches using the adhesive for labels, see p. 4, [0088] of Van Es and p. 3, [0023] of EP ‘762. It would have been obvious to have included the hydroxyethyl (meth)acrylate component as disclosed in EP ‘762 into the monomer mix to form the polymer of Van Es to arrive at the claimed invention to provide an adhesive that has sufficient adhesion and tack for a broad temperature range while maintaining cohesion at a high level, see p. 2, [0006] of EP ‘762. Furthermore, it would have been obvious to have excluded the ethylenically unsaturated monomer containing sulfonic acid described in EP ‘762 as this component is disclosed to be optional.
Regarding claim 3, Van Es teaches using styrene as a preferred material for component (d), see p. 2, [0036]. EP ‘762 similarly teaches using styrene in the monomer mixture, see p. 3, [0021].
Regarding claim 4, Van Es teaches using acrylic acid or methacrylic acid as a preferred material for component (e), see p. 2, [0041]. EP ‘762 similarly teaches using acrylic acid in the monomer mixture, see p. 3, [0021].
Regarding claim 5, Van Es teaches using vinyl acetate as a preferred material for component (d), see p. 2, [0039]. EP ‘762 similarly teaches using vinyl acetate in the monomer mixture, see p. 3, [0021].
Regarding claims 6, 7, and 8, Van Es teaches using preferably from 0.05 to 0.5 wt. % of chain transfer agent, and n-dodecyl mercaptan is the preferred chain transfer agent, see p. 4-5, [0089] and p. 5, [0096].
Regarding claim 9, Van Es discloses that the polymer composition may also include a tackifier resin (see p. 5-6, [0100]), but Van Es does not disclose the quantity of tackifier to include in the composition.
EP ‘762 teaches including a tackifier in the composition, preferably in the amount of 10 to 50 parts by weight based on 100 parts by weight of polymer on a solids basis, se p. 7, [0052-0058].
Van Es also teaches that optionally other additives such as pigments and fillers may be included (see p. 5, [0099]). EP ‘762 teaches including fillers or coloring agents in the amount of 5-50 wt. % based on the total weight of the composition, see p. 7, [0062].
Regarding claims 17 and 18, Van Es teaches that the pressure-sensitive adhesive may be applied to a suitable surface or substrate such as a to a polymeric film used as a facestock for labels, see p. 4, [0088]. EP ‘762 similarly teaches applying the adhesive to a substrate for label and tape applications, see p. 3, [0023].
Regarding claim 19, Van Es discloses that the pressure-sensitive adhesive may be applied to a suitable surface or substrate such as a to a polymeric film used as a facestock for labels, see p. 4, [0088]. However, Van Es does not specify using a paper substrate to form a paper label.
EP ‘762 teaches that the adhesive polymer may be applied to a substrate that is paper or a film to formulate a label, see p. 3, [0023].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 08 October 2025 regarding the 35 U.S.C. § 103 rejection of claims 1, 3-10, and 17-19 of record over Van Es and EP ‘762 have been carefully considered but are deemed unpersuasive.
Applicant argues that the specification teaches that the claimed adhesive has surprisingly good compromise between adhesion and cohesion without using a C1-C2 alkyl (meth)acrylate or a monomer containing sulfonic groups or polymerizable surfactants and/or a diester of an unsaturated dicarboxylic acid in the monomeric composition (emphasis supplied). Applicant further argues that the claimed composition shows good values of loop tack when applied to substrates at low temperatures including temperatures as low as -10°C. See paragraphs [0008-0009] of the published application and p. 6 of the remarks.
The Examiner is not persuaded. As noted in the rejection above, Van Es does not require the use of C1-C2 alkyl (meth)acrylate monomer components, nor monomers with sulfonic groups nor any polymerizable surfactant nor any diester of an unsaturated carboxylic acid. Additionally, the claims refer to “enhanced adhesion properties when used in a cold environment” which is indefinite as noted in the 35 U.S.C. § 112(b) rejection above and do not require a particular loop tack result.
Applicant also refers to the accompanying Declaration under 37 C.F.R. §1.132 by inventor Mario Lugli filed on 08 October 2025 (“the Lugli Declaration”), which shows that implementing a monomeric composition devoid of any C1-C2 alkyl (meth)acrylate has shown an unexpected enhancement of adhesion properties in a cold environment.
The Lugli Declaration under 37 CFR 1.132 is insufficient to overcome the rejection of the claims as set forth in the last Office action because: Regarding the provisio that the monomeric composition does not include any of the specified materials, polymer P of Van Es need not include any C1-C2 alkyl (meth)acrylate as these materials are listed in the alternative for the monomers that comprise polymer P. For example, component (b) of Van Es may preferably be sec-butyl acrylate or isobutyl acrylate or isopropyl acrylate rather than ethyl acrylate, and component (c) may be n-butyl methacrylate rather than methyl acrylate. Furthermore, no monomers having sulfonic groups are required. Van Es teaches including a surfactant at p. 4, [0081], but polymerizable surfactants are not required. Di-esters of dicarboxylic acids are also not disclosed or required by Van Es.
Additionally, the alleged unexpected results are not commensurate in scope with the claims. MPEP § 716.02 describes the requirements to rebut a prima facie case of obviousness by relying upon unexpected results. In particular, MPEP § 716.02(d) notes that the unexpected results must be commensurate in scope with the claimed invention. To establish criticality of a claimed range, applicant should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed range. See In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960); MPEP § 716.02(d)(II).
In the instant case, the data provided is not commensurate in scope with the claims. Inventive examples 3-7 use narrower ranges of monomers than the claims and use specific monomers styrene, acrylic acid, vinyl acetate, and N-dodecylmercaptan for components c), d), e), and g). Thus the examples do not provide evidence that the alleged unexpected results at the example conditions are demonstrated over the entire scope of the claims. See table below. As the evidence of unexpected results is not commensurate in scope with the claims, the evidence of nonobviousness is insufficient to overcome the prima facie case of obviousness.
Monomer
Claimed Range (wt. %)
Range in Examples 3-7
(wt. %)
Comparative Examples outside claimed range?
a) 2-ethylhexyl acrylate
60 - 95 %
87.3 - 88.7%
None
b) butyl methacrylate
0.1 - 15 %
2.3 - 4.3%
Yes, Examples 1 and 2 use 0 % of BMA
c) vinyl aromatic monomer (claims 1 and 10), styrene (claim 3)
0.5 – 5%
1.0 – 2.5% styrene
Yes, Example 1 uses 0% styrene
d) ethylenically unsaturated acid (claims 1 and 10), (meth)acrylic acid (claim 4)
0.1 – 2%
0.6% acrylic acid
None
e) vinylic ester of C2-C8 carboxylic acid (claims 1 and 10), vinyl acetate (clam 5)
1 – 20%
4.0 – 6.6% vinyl acetate
None
f) Hydroxy ethyl (meth)acrylate
Present
0.8% hydroxyethyl methacrylate
None
g) Chain transfer agent (claim 1), n-dodecyl mercaptan (claim 7)
At least 0.005 wt. % (claims 1 and 10), 0.005-0.2% (claim 8)
0.06-0.11% n-dodecylmercaptan
None
C1-C2 alkyl (meth)acrylate
Not present
Not present
Yes, 4.3 wt. % of methyl methacrylate or ethyl acrylate in Examples 1-2
Polymerizable surfactant
Not present
Not present
None
Monomer with sulfonic groups
Not present
Not present
None
Diester of an unsaturated carboxylic acid
Not present
Not present
None
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Conclusion
All claims are rejected.
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 extension fee 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.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759