DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of new claim 31 in the amendments filed 11/12/2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 11/12/2025, with respect to the rejection of claim 30 under 35 U.S.C. 112(b) as set forth in paragraphs 4-5 of the action mailed 5/15/2025, have been fully considered and are persuasive. The rejection of claim 30 has been withdrawn.
Specification
The disclosure is objected to because of the following informalities: Table 3, as discussed in paragraph 0163 presently disclosed, mentions a “control adhesive” along with the fifteen (15) compositions. The Examiner submits that the “control adhesive”, apparently designated by the “Ctrl” column in said Table 3, does not contain any compositional elements, but does disclose DMA Reading data, and the adhesion data of Tables 4 and 5.
Appropriate correction is required.
The Examiner respectfully notes that, while objectionable material, based on the softening point (SP) ranges presently claimed for each of the recited tackifying compounds, and based on the glass transition temperature (Tg), storage modulus (G’), and High temperature (T) cross point (Tx) ranges presently claimed, the Examiner submits that only the following Experimental Composition demonstrates all of the SPs, Tg, G’ and Tx:
Composition 2 of Table 2 (along with Composition 9, the only inventive examples in Tables 2 and 3 providing support for the “consisting of” language of new claim 31).
For example, tackifier WESTREZ 5090 has an SP below the presently claimed range (i.e., 88 ℃) but is the only tackifier employed in some of the Table 2 compositions; while Composition 3 of Table 2 meet the compositional elements but are outside the claimed ranges for Tg and G’ in each of current claims 1 and 31. Composition 6 of Table 2 provides the SUKOREZ SU-230 tackifier, which provides the presently claimed SP value, but also employs the WESTREZ 5090, demonstrates a Tg outside the claimed range and does not provide a G’. Composition 11 of Table 2 provides the SUKOREZ SU-230 tackifier, which provides the presently claimed SP value, but also employs the WESTREZ 5090, and demonstrates a G’ outside the claimed range.
See also Composition 9 of Table 2, which provides low Tg and G’. See also Composition 2 of Table 3 (low High T cross point) and Composition 5 of Table 3 (high G’).
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 Rejections - 35 USC § 112
Claim 30 is 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.
Regarding claim 30, it is unclear from the claim limitations whether the recited (A) at least one elastomeric copolymer, the recited at least one (SIS) elastomeric block copolymer, the recited at least one (SB) elastomeric copolymer, the recited (B) at least one tackifying compound, the recited at least one tackifying rosin ester, and the recited plasticizer are same compounds respectively recited in current claim 1, or if they are in addition to the compounds recited in current claim 1. A similarly indefiniteness is present with respect to the recited (Tg), (G’) and high-T cross point.
Claim 31 is 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.
Regarding claim 31, it is unclear what is intended by a softening point “equal to or above” the recited temperature range. Indeed, it is unclear if the SP is given by the range; or if the SP is essentially equal to or above 95 ℃, with the 125 ℃ limit being superfluous; or some other interpretation.
Claim Rejections - 35 USC § 103
Claim(s) 1-10, 12-15 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al. (EP 911376 B1) in view of Ishiguro et al. (JP 2012022214 A), and in light of the evidence provided by De Keyser et al. (US 7202297). The Examiner notes that citations from the ‘214 reference were taken from a machine translation, which was provided with a previous action.
Regarding claim(s) 1-3, 12-15 and 30, Sasaki teaches a hot melt pressure sensitive adhesive (HMPSA) (claim 1) comprising a first elastomer and a second elastomer in a ratio of 0.5:1 to 5:1 and both elastomers comprise 20-50 % by weight (current claim 3) of the total of elastomers and tackifying additive, which said tackifying system includes, inter alia, rosin ester (current claim 30) (para 0012-0016) and which said elastomers are random styrene-butadiene (SB) polymers (current claim 2, Item (v), current claim 12) and styrene-isoprene-styrene (SIS) block copolymers (para 0032).
Sasaki also teaches that the HMPSA comprises plasticizers, and that the tackifier(s) are present at 50-80 % by weight based on the total of the elastomers and tackifier(s) (para 0039).
Sasaki is silent to the disclosed rosin ester tackifier having a softening point (SP) of 95-125 ℃, and to the HMPSA having: a glass transition temperature (Tg) of 0-30 ℃, a storage modulus (G’) at -18 ℃ of 300-2000 KPa, and a high T cross point of 95-125 ℃ (current claim 1);
an application temperature from -25-70 ℃ (current claim 13);
a peel-adhesion strength at least 1 lbf/in (175 N/m) at -25-80 ℃ (current claim 14); and a peel-adhesion strength at least 4 lbf/in (700 N/m) at -25-25 ℃, and at least 1 lbf/in (175 N/m) at 80 ℃ (current claim 15).
However, Sasaki notes that it is established in the art that tackifiers increase the Tg (or it remains unchanged) while plasticizers lower the Tg (para 0007). Sasaki also discloses that the two elastomers provide two separate Tg values with the differential between the two Tg values enhanced via the inclusion of tackifier(s) (para 0014). Sasaki further teaches that the butadiene, isoprene and styrene segments have Tg values of -80 ℃, -54 ℃ and 80 ℃ (para 0025), with the tackifier shifting the Tg of the polyisoprene towards improved room temperature PSA properties (para 0028).
The graphs in the figures of Sasaki demonstrate that the some of the adhesives have single or double Tg values with some of said values being identical to that presently claimed. Sasaki also instructs that the storage modulus is a measure of elasticity (para 0024). Sasaki further teaches that the peel adhesion of the PSA layer is adjusted via adjustment of the tangent delta in a transition region towards a balance of adhesion and processability (para 0022-0023.)
In addition, Ishiguro teaches a HMPSA having a softening point of 95 ℃ comprising a tackifier having a softening temperature of 90-140 ℃ towards a balance of elasticity modulus in a high temperature range and adequate tack at low temperature (page 8, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the Tg value of the HMPSA composition of the prior art (either the first or second Tg values) to that presently claimed and the storage modulus presently claimed towards said HMPSA demonstrating improved room temperature PSA properties, low temperature tack, and the elasticity required of the prior art’s intended applications;
and to further provide the HMPSA with rosin ester tackifier(s) having the presently claimed softening temperature to adjust the application to that presently claimed based on the application temperature of use as in the present invention;
and to adjust the peel strength of the HMPSA of the prior art via the adjustment of the HMPSA compound(s) and/or their proportions and/or the HMPSA properties (e.g., elasticity) for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards said HMPSA demonstrating the presently claimed peel adhesion under the presently claimed conditions based on the peel strength required at the temperature of use as in the present invention.
Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01. Thus, it is reasonable to conclude that the HMPSA composition would demonstrate the presently claimed “high T cross point” under the presently claimed conditions.
Regarding claim 4, the Examiner notes that the elastomeric ratio of 0.5:1 to 5:1 and the proportions of the two elastomers in the HMPSA provide an overlap with the presently claimed proportions of (A) and (B). The Examiner also notes that an SIS block copolymer necessarily consists of three blocks (tri-block copolymer).
Sasaki continues to teach that the first elastomer (i.e., the butadiene-based copolymer) is provided towards low temperature PSA performance while low values of tangent delta (loss modulus/storage modulus) provide good processability and cutability (para 0014). Sasaki teaches that the second elastomer (i.e., the isoprene-based copolymer) provides a second tangent delta (para 0020).
As set forth in MPEP 2144.05, in the case where the claimed range “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 is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claims 5-7, while Sasaki teaches that the tackifier(s) are present at a lower limit of 50 % by weight, while the upper limit presently claimed is 40 % by weight, or 36 % by weight, said proportions are based on the total of the elastomers and the tackifier(s), but do not include any plasticizer. In addition, while Sasaki does not stipulate the proportion of the disclosed plasticizer, Sasaki does teach that the tackifiers are added to increase the Tg differential between the two peaks or at least the second peak (para 0014 and 0016), and that the plasticizers are added to lower the Tg of the polyisoprene segment (para 0031).
Further, based on the total amount of elastomers and tackifier(s), the ratio of the first elastomer to the second elastomer, and given that Sasaki instructs that the first elastomer (i.e., the butadiene-based copolymer) is provided towards low temperature PSA performance while low values of tangent delta (loss modulus/storage modulus) provide good processability and cutability (para 0014). Sasaki teaches that the second elastomer (i.e., the isoprene-based copolymer) provides a second tangent delta (para 0020).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the SIS copolymer, the SB copolymer, the rosin ester tackifier and the plasticizer disclosed in Sasaki in proportions identical to that presently claimed based on balance of low temperature PSA performance, processability, cutability, the Tg of the second peak and/or the Tg differential of the first and second peaks required of the prior art’s intended application as in the present invention.
Regarding claim 8, the rosin phenolics are not required by the presently claimed invention, and therefore the prior art need not teach or suggest the limitation(s) of the current claim to teach or render obvious the presently claimed invention.
Regarding claims 9-10, Sasaki teaches that the SIS is, inter alia, KRATON D-1107 (para 0033), which is linear and has a styrene content of 15 % by mass (see Table 3 of De Keyser),
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al. (EP 911376 B1) in view of in view of Ishiguro et al. (JP 2012022214 A) and in further view of Nakamura et al. (US 6414073 B1).
Regarding claim(s) 11, Sasaki/Ishiguro teaches the HMPSA comprising the first SB elastomer as in the rejection of at least current claim 1 set forth above.
Sasaki/Ishiguro is silent to the styrene content of the disclosed SB copolymer(s).
However, Nakamura teaches that the styrene content of SB-based copolymers is adjusted towards adjusting the cohesion.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ SB copolymers having the presently claimed styrene content based on the cohesion required of the prior art’s intended application as in the present invention.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robert et al. (US 2022/0135850 A1) in view of Sasaki et al. (EP 911376 B1) and in further view of Ishiguro et al. (JP 2012022214 A).
Regarding claim 31, Robert teaches an HMPSA comprising a composition of styrene block copolymers, tackifying resin and plasticizer (abstract); which said composition of styrene block copolymers comprises, inter alia, SB and SIS block copolymers (para 0028-0031), and which said tackifier resin comprises, inter alia, esterified rosins (rosin ester) (para 0055-0056) such as, inter alia, SYLVALITE RE 100S having a softening temperature of 100 ℃ (para 0064).
While Robert also teaches that the HMPSA compositions comprise stabilizers (a4), waxes (a5) and optional pigments (para 0074-0079), the inclusion of these components is a preferred embodiment. Roberts also teaches another preferred variant that “preferably essentially consists of” only the styrene block copolymers, tackifying resin and plasticizer (para 0080-0087). Further, “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). Thus, Robert teaches the consisting of language presently claimed.
Robert is silent to the disclosed HMPSA having a glass transition temperature (Tg) of 0-30 ℃, a storage modulus (G’) at -18 ℃ of 300-2000 KPa, and a high T cross point of 95-125 ℃.
However, Sasaki notes that it is established in the art that tackifiers increase the Tg (or it remains unchanged) while plasticizers lower the Tg (para 0007). Sasaki also discloses that the two elastomers provide two separate Tg values with the differential between the two Tg values enhanced via the inclusion of tackifier(s) (para 0014). Sasaki further teaches that the butadiene, isoprene and styrene segments have Tg values of -80 ℃, -54 ℃ and 80 ℃ (para 0025), with the tackifier shifting the Tg of the polyisoprene towards improved room temperature PSA properties (para 0028). Sasaki also instructs that the storage modulus is a measure of elasticity (para 0024).
In addition, Ishiguro teaches a HMPSA having a softening point of 95 ℃ comprising a tackifier having a softening temperature of 90-140 ℃ towards a balance of elasticity modulus in a high temperature range and adequate tack at low temperature (page 8, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the Tg and storage modulus values of the HMPSA composition of Robert to that presently claimed towards said HMPSA demonstrating improved room temperature PSA properties, low temperature tack, and the elasticity required of the prior art’s intended applications;
Lastly, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01. Thus, it is reasonable to conclude that the HMPSA composition of Robert would demonstrate the presently claimed “high T cross point” under the presently claimed conditions.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 11/12/2025, with respect to the rejections of claims 1-10 and 12-15 over Sasaki et al. in view of Ishiguro et al. under 35 U.S.C. 103; claim 11 over Sasaki et al. in view of Ishiguro et al. and in further view of Nakamura et al. under 35 U.S.C. 103; and claim 30 over Sasaki et al. in view of Ishiguro et al. under 35 U.S.C. 103 as set forth in paragraphs 6-8 of the action mailed 5/15/2025, have been fully considered but they are not persuasive.
The Examiner respectfully directs the Applicant’s attention to the prior art rejections set forth above, wherein it is noted that said rejections demonstrate that the cited prior art teaches or renders obvious the presently claimed invention(s). The Examiner also respectfully notes that, contrary to the Applicant’s current assertions, the amendments to at least claim 1 have not altered the Tg or high-T cross point ranges as these limitations were included verbatim in the previous claim listings as interpreted in the prior art rejections of the previous action.
In regards to the rejection’s citation of the Tg values for butadiene, isoprene and styrene (i.e., -80 ℃, -54 ℃ and 80 ℃, respectively), the Examiner respectfully submits that the prior rejection was not intended to posture that these Tg values taught the presently claimed Tg range of 0 to -30 ℃ of the recited HM-PSA composition. Instead, as noted above, they were included as part of larger analysis towards demonstrating the obviousness of the presently claimed Tg values over the prior art. For example, see also Sasaki’s discussion of the role tackifiers play in the overall Tg value of an adhesive composition as provided above.
Also, as set forth above, and repeated here for clarity in regards to the high-T cross point presently claimed, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01. Thus, it is reasonable to conclude that the HMPSA composition would demonstrate the presently claimed “high T cross point” under the presently claimed conditions.
Lastly, Ishiguro and Nakamura were not cited towards remedying the Tg or high-T cross point limitations; but were instead cited respectively as teaching the motivation for an HMPSA comprising a tackifier having a softening temperature of 90-140 ℃ towards a balance of elasticity modulus in a high temperature range and adequate tack at low temperature, and for adjusting the styrene content of SB-based copolymers is towards adjusting the cohesion.
Conclusion
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 12/8/2025