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 .
DETAILED ACTION
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/20/2026 has been entered.
Review of RCE Claim Status
Claims 1-7, and 13-14 were pending in the prior Office Action.
Claims 8-12 and 15-20 remain withdrawn from consideration.
Claims 21-25 were added.
Claims 1-7, 13-14 and 21-25 are pending examination.
Priority Status
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NO foreign priority is claimed; the EFD is acknowledged as 08/06/2020.
Information Disclosure Statement
Examiner acknowledged prior IDS submission in Office Action of 03/09/2026.
Examiner Responses to Arguments/Amendments
The issues raised in the Office Action, are addressed below:
I. Claim Amendments –
Upon amendment entry, Claim 1 was amended to clarify the hot melt adhesive composition with support from the Instant Specification.
In view of the Applicant’s amendment, Claim 1 was amended with the following:
“A hot melt adhesive composition, comprising:
a matrix comprising metallocene polyethylene (mPE), or ethylene vinyl acetate (EVA); and a polyethylene wax,
wherein the polyethylene of the polyethylene wax comprises at least a portion of ethylene that is obtained from a renewable source of carbon and
the polyethylene wax exhibits a melt flow rate, measured according to American Society for Testing and Materials (ASTM) D1238 at 190 ℃, between 10,000 and 75,000 g/10 min.”
II. Response to 35 USC § 112 –
Claims 1-7, 13, and 14 are rejected under 35 U.S.C § 112(a) as being indefinite.
Upon entry amendment, the 35 U.S.C § 112(a) rejection over Claims 1-7, 13, and 14 is maintained.
The specification fails to teach sufficient disclosure that the inventor possessed it.
Applicant has stated, in their remarks: The claimed MFR range is not a product of routine optimization. Even if one were to equate Delevati's EVA with the currently claimed wax solely for the sake of argument, the rheology does not match. The claimed wax must exhibit a melt-flow rate in the range of 10,000-75,000 g/10 min (ASTM D1238 at 190 °C). Delevati discloses melt index for its EVA base polymer of 1.5-50 g/10 min in the abstract and summary.
As indicated above, this is correct. This statement though supports the lack of structure/function correlation between this functional limitation and the structure allowed by the claims. Also stating that polymers within the class do and don’t have these properties, calls into question the possession of the knowledge of which polymers would or would not have these rheology properties.
Polymers used in hot melts (like EVA, Polyamides, or Polyurethanes) are highly hygroscopic. Moisture causes hydrolytic degradation during the MFR test, artificially inflating the resulting value. Applicant has not demonstrated differences using this MFR on its compounds or others of similar molecular weights (MW), since polymers used in hot-melts adhesive are commonly known in the art. Applicant does not provide a means to determine this difference in comparison to other composition(s) which would show unexpected results.
This information does not aid in establishing a single, well-delineated example of the invention. In fact, the Instant Specification only provides the Applicant’s demonstration of using the known ASTM standard without introducing its role in improving surface properties.
The product of the Instant Case (a hot melt adhesive comprising: a matrix comprising metallocene polyethylene (mPE), or ethylene vinyl acetate (EVA); and a polyethylene wax, wherein the polyethylene is bio-based) contains the general formulation set up:
base polymer (EVA, polyolefins, polyamides, etc),
tackifiers (to enhance adhesion/stickiness),
waxes (including PE wax for setting rate and viscosity),
plasticizers, antioxidants, and other functional additives.
Therefore, the rejection is maintained.
III. Rejections under 35 USC§ 102 -
Applicant' s arguments, filed 07/18/2025, with respect to the claims have been fully considered but they are not persuasive for the following reason(s):
Claims 1-4, 13, and 14 are rejected under 35 USC § 102(a)(2) as being anticipated by Delevati (WO 2020/234656 A1) as evidenced by ASTM: D1238-10 (Made of Record in prior Office Action).
According to Delevati (WO 2020/234656 A1), embodiments within the publication relate to a hot melt adhesive composition with biobased EVA copolymer (para. [0025]) comprising a biobased carbon content as determined by ASTM D1238. The prior art reference relies on the ASTM D1238 Method B standard, and it provides several highly specific disclosures about the material and the timeline of the technology. As evidenced by the ASTM reference, ASTM D1238 Procedure A or B handles typical plastics, Procedure C mandates the use of a modified, scaled-down die known as a "half-die" (having exactly half the standard height and half the internal diameter), that in which is not covered in the Instant Claims.
In this facet, the Applicant’s arguments were persuasive, and therefore the 35 USC § 102(a)(2) rejection is withdrawn.
IV. Rejections under 35 USC§ 103 -
Claims 1-7, 13, and 14 are rejected under 35 USC § 103 as being unpatentable over Delevati (WO 2020/234656 A1), as evidenced by ASTM: D1238-10.
Applicant' s arguments, filed 07/18/2025, with respect to the claims have been fully considered but they are not persuasive for the following reason(s):
Applicant argues that Even assuming arguendo that Delevati could be considered relevant prior art, the rejection under § 103 should likewise be withdrawn because Delevati, as a single reference, does not render the amended claims obvious. The claimed MFR range is not a product of routine optimization. Even if one were to equate Delevati's EVA with the currently claimed wax solely for the sake of argument, the rheology does not match.
Examiner notes this argument could be persuasive, but argument is not evidence.
If the Applicant can compare such close art and demonstrate the synergistic effect in the arguments then such evidence could be persuasive. However, as it stands with the evidence present within the Instant Case and Applicant remarks, the argument presented is not evidence. It should be noted that should superior or unexpected results be demonstrated with evidence, the claims would need to be commensurate in scope with the results. As it stands, the claims do not commensurate in scope with the results.
The claimed MFR represents a narrow, critical method where competing process effects are uniquely balanced. Without the needed evidence to verify such unexpected or surprising results, Applicant’s stating the polymer's interaction with the specific tackifiers and waxes in the composition has been met.
After consideration of Applicant arguments for the 103 with the additional explanation provided for the same topics of discussion provided above, as a whole the 35 USC§ 103 rejection is maintained.
For all the reasons above, Applicant’s arguments/amendments were not persuasive. The claims rejected under 35 U.S.C§ 102 is maintained.
V. Maintained Rejections -
Claim Interpretation
Claims 1-7, 13-14 and 21-25 indicate that the polyethylene wax is “obtained from…” which can be considered product-by-process language.
Additionally, the limitation “the polyethylene wax exhibits a melt flow rate, measured according to American Society for Testing and Materials (ASTM) D1238 at 190 °C, between 10,000 and 75,000 g/10 min” is a functional limitation and would be met if the structure of the polyethylene wax is met.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-7, 13-14 and 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed. The courts have stated that, “To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that “the inventor invented the claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”). Thus, an applicant complies with the written description requirement “by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention.” Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.” Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents of the University of California v. Eli Lilly & Co. the court stated that, “A written description of an invention involving a chemical genus, like a description of a chemical species, ‘requires a precise definition, such as by structure, formula, [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials.” Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) (“In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus …”) Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include level of skill and knowledge in the art, partial structure, physical and/or chemical properties, characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed genus is sufficient. See MPEP § 2163.
While all of the factors have been considered, a sufficient amount for a prima facie case are discussed below.
The additional limitation and new claims 21-25 recite the hot-adhesive melt (HMA) is “a metallocene polyethylene (mPE)-based, or (b) an ethylene vinyl acetate (EVA)-based hot melt adhesive with renewable polyethylene wax.”
In the Instant Specification para. [0057], one of the embodiment still reads “… hot melt adhesive compositions may further comprise a secondary polymer selected from the group consisting of ethyl vinyl acetate (EVA) copolymers, ethylene copolymers (such as ethylene-acrylic ester copolymers, including ethylene-butyl acrylate copolymers (EBA) and ethylene-methyl acrylate copolymers (EMA)), polyolefins (such as poly a-olefins, including PE and polypropylene (PP), among others), and styrene block copolymers (such as styrene- isoprene-styrene (SIS) and styrene-butadiene-styrene (SBS)). In particular embodiments, the secondary polymer may be LLDPE or metallocene PE.
In addition, in para. [00117], there were two types of HMA (hot melt adhesive) tested: a metallocene polyethylene (mPE) based adhesive and an ethylene vinyl acetate (EVA) based adhesive. Based on this, it is still unclear whether the HMA composition in new claims 21-25, have a different standard and product-by-process language. Applicant indicates use of another standard, IoPP Testing (Institute of Packaging Professionals). IOPP is not a single, universally defined standard like ASTM or ISO. In practice, it is often used informally to refer to a set of property measurements for polymers that may include melt flow rate (MFR), melt volume flow rate (MVR), and other rheological or mechanical properties.
There is clarity needed for the Instant Claims. The dependent claims do not resolve this issue.
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.
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.
Joint Inventors
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.
Claim(s) 1-7, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over G. Delevati in in WO 2020/234656 A1 (pub’d -- 11/26/2020; Int. Filing Date -- 05/20/2020; Priority Date -- 05/20/2019; hereinafter “Pub’656”) as evidenced by ASTMD1238-10 (Made of Record in prior Office Action).
The teachings of Pub’656 - are disclosed above and at least those teachings are incorporated by reference herein.
This rejection also applies to the elected specie – polyolefin, tackifier and additional wax. For example, the ‘Pub’656 publication teaches in para. [0015]:
“In one or more embodiments, adhesive compositions may be formulated with various performance modifiers that include tackifier resins and optional waxes to tailor the adhesive compositions for particular applications. Each of the components will be discussed in detail in the following sections.”
With respect to Claim 1, Pub’656 teaches a composition, comprising: a polyethylene wax, in which the polyethylene of the polyethylene wax comprises at least a portion of ethylene that is obtained from a renewable source of carbon and the polyethylene wax exhibits a melt flow rate, measured according to American Society for Testing and Materials (ASTM) D1238 at 190 °C, (abstract; Claim 3; Claim 19) and wherein the composition is formulated as a hot melt adhesive selected from the group consisting of: (b) an ethylene vinyl acetate (EVA)-based hot melt adhesive (para. [0009]).
Although the Pub’656 fails to teach the standard at ASTM D1238 in the range desired of 10,000-75,000 but it does teach the standard. The testing of ASTM D1238 with a load of 2.16 kg at 190°C ("melt index") is the standard condition for measuring the Melt Flow Rate (MFR) or Melt Index (MI) of polyethylene (PE). The polymers taught therein would be capable of the function, alternatively, as discussed above, it would have been obvious to arrive at these polymers having the functional characteristics to meet the instantly claimed standard. As the structural components of the prior art are the same as Applicant’s, one would expect the same functional outcome.
Further, the Pub’656 teaches antioxidants and stabilizers at paragraph [0050] as common additives. Based on the Instant Specification (para. [0008]) the PE wax is disclosed, “The green PE wax may contain a portion of biobased polyethylene that is derived from a renewable source of carbon, such as a plant- based material. In one or more embodiments, the polymer compositions may be formulated for many different applications. In some embodiments, the polymer compositions may be used as hot melt adhesives, masterbatches, coatings, inks and paints, plastic additives, and the like.”
This supports the use of the Pub’656 since it discloses “A hot melt adhesive composition may also include a biobased ethylene vinyl acetate (EVA) copolymer at an amount ranging from 10 to 80 wt% of the hot melt adhesive composition, wherein the biobased EVA comprises a melt index (I2) as determined by ASTM D1238 in the range of 1.5 to 50 g/10min measured with a load of 2.16 kg at 190°C...” which reads upon the Instant Claim since it is a standard with no upper limit. This is also an overlapping range of the EVA polymer of claim 5 and 7.
With respect to claim 1, it would have been obvious to one having ordinary skill in the art to arrive at polyethylene polymers and ASTM D1238 as meeting the functional limitation because at least polymer lengths and ASTM standards are a result effective variable. For polyolefins with MFR values greater than 75 g/10 min, ASTM D1238 recommends using Procedure C, which employs a die with half the length and diameter to reduce the flow rate to a more manageable and measurable level. A melt flow rate in the tens of thousands of grams per 10 minutes would indicate an extremely low viscosity material that would flow almost instantly through the standard die, making accurate measurement by this method practically impossible. The material would likely pour out of the machine during the pre-heat period before the test even begins. Outside of criticality, this is a routine optimization of rate, and/or concentration leads to different polymer lengths or need for another type of ASTM standard. One could readily optimize polymer length as well as the specific conditions to arrive at polyethylene polymers (HMA composition) meeting the instant functional limitation.
Further, with respect to claims 5-7, the Pub’656 teaches the copolymer and overlapping ratios, but fails to teach the combination of components in claims 5-7.
However, applying KSR-Prong A, one skilled in the art could combine known polymers with known additives as suggested by Publication’656 to arrive at the instant combination of agents in the claims. Since Publication’656 teaches secondary polymers (“waxes” in for example claim 17 and 18); antioxidants and stabilizers at [0050], and tackifiers at for example at [0003]). The standard procedure for ASTM D1238 for EVA involves heating the EVA sample in an extrusion plastometer and extruding the molten material through a die of specified dimensions under prescribed conditions of temperature and load. Procedure A involves manually cutting and weighing timed extrudates, while other procedures (B, C, D) offer automated or multi-weight measurements. The results indicate the material's flow uniformity and can help differentiate between various grades of EVA.
Combining known polymers and known additives is a routine practice to create new materials with specific desired properties (e.g., enhanced mechanical strength, flame resistance, better processing). The results of such combinations can often be predictable to a person of ordinary skill in the art, especially when the components are well-known Thus, one would expect success combining known ingredients taught for the same purpose all know for making a polymeric hot melt composition.
The prior art uses materials that structurally overlap with the instant materials. Hence the properties of those materials would naturally flow from that structure. For example, a typical HMA composition has the following options:
Component
Typical Content (% by weight)
Function
EVA (28%–35%)
30–60%
Primary adhesive base; flexibility, tack
Metallocene PE
5–30%
Mechanical strength, flow, toughness
Polyethylene Wax*
0.2–6%
Set time, viscosity control, non-stick/proc.
Tackifier
20–40%
Improves adhesion
(tack, bond strength)
Antioxidant
0.2–1%
Thermal/oxidative stability
*Renewable input
Variable (tackifier or base polymer)
Bio-content
(rosin esters, green PE/EVA)
With respect to the ratios of claims 1, 5 and 7, Pub’656 teaches 10% and 30% by wt tackifier (in example [0037]) which is an overlapping percentage.
However, the Pub’656 fails to teach an embodiment having the overlapping ratios of all components of claims 5 and 7.
Yet, it would have been obvious to one having ordinary skill in the art to optimize ratios of known polymer components because such optimization would be changing concentrations of reactants which is well within the skill of the artisan and is routine optimization absent a showing of criticality and it would have been obvious to one having ordinary skill in the art to arrive at an overlapping range because according to MPEP 2144.05:
Overlapping ranges-
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) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of “50 to 100 Angstroms” considered prima facie obvious in view of prior art reference teaching that “for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms].” The court stated that “by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range.”).
Conclusions
Claims 1-7, 13-14 and 21-25 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Josmalen M. Ramos-Lewis whose telephone number is (571)272-0084. The examiner can normally be reached M-F 9:00-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A. Brooks can be reached on (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Josmalen M. Ramos-Lewis, Ph.D.
Patent Examiner
Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
Prosecution Insights