DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 13, 2025 has been entered.
This Office Action is in response to Applicant’s amendments and remarks in response to a Nonfinal rejection filed June 9, 2025.
Claim 3 and 17 are cancelled due to Applicant’s amendments
Claims 1-2, 4-16, and 18-24 are currently pending.
Claim Analysis
Summary of Claim 1:
A hot melt composition comprising:
(A) an amorphous poly-a-olefin,
(B) a crystalline propylene-based polymer,
(C) a tackifier resin,
(D) a Fischer-Tropsch wax, and
(E) a polypropylene wax,
Wherein:
the amorphous poly-a-olefin (A) has a molecular weight of from 60,000 to 90,000 Da,
the crystalline propylene-based polymer (B) has a melt flow rate of from 5 to 100 g/10 min measured at 230 °C under a load of 2.16 kg,
the tackifier resin (C) has a softening point of from 120 to 140 °C,
an amount of the Fischer-Tropsch wax (D) based on 100 parts by weight of the total amount of the hot melt composition is from 1 to 10 parts by weight, and an amount of the polypropylene wax (E), based on 100 parts of the total weight of the hot melt composition is from 1 part to 18 parts by weight.
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 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.
Claims 1-2, 4-16, and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda (JP 2018030918 as listed on IDS dated 12/06/2021) in view of Kakinuma (JP 2009126991 as listed on IDS dated 12/06/2021) and Brant et al. (US 20060020067).
The examiner will refer to the US equivalent US 11149170 B2 as indicated on the IDS dated 12/06/2021 and the machine translation of Kakinuma, which was sent by the Applicant 12/06/2021.
Regarding claim 1, 21, 22, 23, and 24, Matsuda discloses a hot melt adhesive comprising an (A) amorphous poly-α-olefin, (B) crystalline polypropylene (as evidenced by [col 4, line 42-49]), (C) a tackifier resin, and (D) a Fisher-Tropsch wax in an amount of 8 parts by weight (Table 1, Example 3), thereby reading on the claimed composition.
The difference between example 3 of Matsuda and instant claim 2 is that example 3 incorporates a crystalline polypropylene (B1) with a melt flow rate of 2,000 g/10 min, which is out of the instantly claimed range of 5 to 100 g/10 min.
However, Matsuda does teach an exemplary crystalline propylene/ethylene copolymer having a MFR of 20g/10min [col 11, line 14-19], thereby lying within the claimed range. Therefore, one of ordinary skill in the art would have considered it obvious to use a crystalline propylene based polymer with a melt flow rate since Matsuda teaches that both are suitable to be used in a hot melt composition. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute B4 with B1 in example 3 of Matsuda with reasonable expectation of forming a hot melt adhesive because Matsuda teaches that both are useful in the hot melt composition. (See MPEP § 2143.1b).
Matsuda and the instant claim 1 differ in that Matsuda does not teach the amount of polypropylene wax as recited in the instant claim.
Kakinuma teaches a hot melt adhesive used for the manufacture of automotive interior parts comprising an (A) amorphous poly-α-olefin, (B) crystalline polypropylene, (C) a tackifier resin (abstract). Kakinuma et al. Kakinuma teaches the hot melt adhesive may be mixed with polypropylene wax in amount of 20% or less [0013], thereby overlapping with the claimed range of claim 1, 23, and 24. Kakinuma offers the motivation that adding the polypropylene wax adjust adhesive properties at low temperatures [0013]. Matsuda is interested in providing a hot melt adhesive at low temperatures (abstract). Therefore, it would have been obvious to one of ordinary skill in the art to add polypropylene wax as taught by Kakinuma with the composition of Matsuda with reasonable expectation that the adhesive properties at low temperatures can be adjusted.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kakinuma.
Matsuda is further silent on the molecular weight of the amorphous poly-α-olefin and the softening point of the tackifier resin as recited in the instant claim.
Brant et al. teach an adhesive composition capable of being used as a hot melt adhesive comprising an amorphous polyolefin and a tackifier (claim 86 and 87, [0286-0287]). Brant et al. teach the amorphous polyolefin is preferably an amorphous polypropylene with an average molecular weight of 5,000,000 or less [0060-0061] and a softening point for the tackifier is 80°C-150°C [0206], thereby overlapping with the claimed ranges of instant claims 1, 20, and 21. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the amorphous polypropylene and tackifier resin Brant et al. with the composition of Matsuda with reasonable expectation because they are both amorphous poly-alpha-olefins and tackifier resins used in hot melt adhesives.
Regarding claim 2, the difference between example 3 of Matsuda and instant claim 2 is that example 3 incorporates a crystalline polypropylene (B1) with a melt flow rate of 2,000 g/10 min, which is out of the instantly claimed range of 5 to 400 g/10 min.
However, Matsuda teaches a crystalline propylene/ethylene copolymer (B4) with a melt flow rate of 20 g/10 min at 230°C [col 11, lines 4-8], thereby lying within the claimed range of 5 to 50 g/10 min. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute B4 with B1 in example 3 of Matsuda with reasonable expectation of forming a hot melt adhesive because Matsuda teaches that both are useful in the hot melt adhesives (See MPEP § 2143.1b).
Regarding claim 4, Matsuda discloses the hot melt adhesive may be applied to polyolefin substrates (abstract).
Regarding to claim 5 and 6, Matsuda does not disclose a vehicle or vehicle interior material comprising a polyolefin substrate as recited in the instant claims.
Kakinuma teaches a hot melt adhesive used for the manufacture of automotive interior parts comprising an (A) amorphous poly-α-olefin, (B) crystalline polypropylene, (C) a tackifier resin (abstract). Kakinuma offers the motivation that the hot melt adhesive can provide adhesion to olefin materials and heat resistance [0005]. Matsuda is also concerned about the adhesion to olefin substrates [0013]. Therefore, one of ordinary skill in the art at the time of the invention would have found it obvious to have a vehicle interior material as demonstrated by Kakinuma using the hot melt adhesive of Matsuda with reasonable expectation that the adhesion to olefin substrates would improve.
Regarding claim 7, Matsuda discloses in Table 1, Example 3 the amorphous poly-α-olefin is polypropylene, thereby reading on the instant claim.
Regarding claim 8-10, Matsuda discloses the amount of amorphous poly-α-olefin is from 30 to 50 parts by weight, the amount of crystalline propylene based polymer is 10 to 50 parts by weight, and the amount of tackifying resin is 5 to 30 parts by weight [col 8; line 24-38], thereby overlapping the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Matsuda.
Regarding claim 11-14, Matsuda discloses an additive may be added to the hot melt agent such as a stabilizer, ultraviolet absorber, an antioxidant and fine particle filler, thereby reading on claim 11. Matsuda further discloses examples of the antioxidant includes a sulfur based antioxidant and a phosphorous based antioxidant and examples of the ultraviolet absorber includes benzotriazole and benzophenone based [col7, line 51-58], thereby reading on claim 12 and 13. Matsuda et al. further discloses examples of the fine particle filler include mica, calcium carbonate, kaoline, among others [col 8, line 5-16].
Regarding claim 15, Matsuda discloses Matsuda discloses a hot melt adhesive comprising 30 to 50 parts by weight of amorphous poly-α-olefin, 10 to 50 parts by weight is from the amount of crystalline propylene based polymer is, and 5 to 30 parts by weight of tackifying resin [col 8; line 24-38], thereby overlapping the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Matsuda.
Matsuda is silent on the melt flow rate of the crystalline propylene based polymer as recited in the instant claims. However, in Table 3, example 7, Matsuda teaches a crystalline propylene/ethylene copolymer (B4) with a melt flow rate of 20 g/10 min at 230°C [col 11, lines 4-8], thereby lying within the claimed range of 5 to 50 g/10 min. thereby lying within the claimed range.
Matsuda and the instant claims differ in that Matsuda does not teach the amount of polypropylene wax as recited in the instant claim.
Kakinuma teaches a hot melt adhesive used for the manufacture of automotive interior parts comprising an (A) amorphous poly-α-olefin, (B) crystalline polypropylene, (C) a tackifier resin (abstract). Kakinuma et al. Kakinuma teaches the hot melt adhesive may be mixed with polypropylene wax in amount of 20% or less [0013], thereby overlapping with the claimed range. Kakinuma offers the motivation that adding the polypropylene wax adjust adhesive properties at low temperatures [0013]. Matsuda is interested in providing a hot melt adhesive at low temperatures (abstract). Therefore, it would have been obvious to one of ordinary skill in the art to add polypropylene wax as taught by Kakinuma with the composition of Matsuda with reasonable expectation that the adhesive properties at low temperatures can be adjusted.
Matsuda is further silent on the molecular weight of the amorphous poly-α-olefin and the softening point of the tackifier resin as recited in the instant claim.
Brant et al. teach an adhesive composition capable of being used as a hot melt adhesive comprising an amorphous polyolefin and a tackifier (claim 86 and 87, [0286-0287]). Brant et al. teach the amorphous polyolefin is preferably an amorphous polypropylene with an average molecular weight of 5,000,000 or less [0060-0061] and a softening point for the tackifier is 80°C-150°C [0206], thereby overlapping with the claimed ranges. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the amorphous polypropylene and tackifier resin Brant et al. with the composition of Matsuda with reasonable expectation because they are both amorphous poly-alpha-olefins and tackifier resins used in hot melt adhesives.
Regarding claim 16, Matsuda is silent on the melt flow rate of the crystalline propylene based polymer as recited in the instant claims. However, in Table 3, example 7, Matsuda teaches a crystalline propylene/ethylene copolymer (B4) with a melt flow rate of 20 g/10 min at 230°C [col 11, lines 4-8], thereby lying within the claimed range of 5 to 50 g/10 min. thereby lying within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Matsuda.
Regarding claim 18, Matsuda discloses in Table 3, Example 1 the amorphous poly-α-olefin is a polypropylene/polyethylene/1-butene copolymer, thereby reading on the instant claim.
Regarding claim 19, Matsuda discloses an additive may be added to the hot melt agent such as a stabilizer, ultraviolet absorber, an antioxidant and fine particle filler, thereby reading on the instant claim.
Regarding claim 20, Matsuda discloses the hot melt adhesive is applied to a substrate material such as a polyolefin [col 2; line 28-34].
Response to Arguments
Applicant's arguments filed June 9, 2025 have been fully considered but they are not persuasive.
The applicant states “For example, when the tackifier resin had a lower softening point of 103°C… there was more creep length and failure modes achieved at 100g x 90°C x 24 hours”.
The examiner responds that the Applicant’s argument is not persuasive because the relied upon data do not support Applicant’s conclusions. Applicant relies on a single example (Ex-1) to support its assertion that the claimed ranges are critical. It is not clear from Example 1 that the upper or lower limit of the softening point of the tackifying resin are indeed critical. For instance, Example 2 clearly shows a creep length and failure modes, it is not clear what the lower limit actually is. Without more data points, the examiner is unpersuaded that the lower limit of 120°C and the upper limit of 140°C is indeed critical. Similar points can be made with the average molecular weight of the amorphous poly-α-olefin and the melt flow rate of the crystalline propylene-based polymer.
Conclusion
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 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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie 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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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763