DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 31 in the amendments filed 6/10/2026.
All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through, except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.” (see MPEP 714).
Claim 30 was not properly amended as per the guidelines provided above.
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 .
Response to Amendment
Applicant’s arguments, see the amendments to the specification and the remarks filed 6/10/2026, with respect to the objection to the specification as set forth in paragraph 5 of the action mailed 12/10/2025, have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/10/2026, with respect to the rejection of claim 30 under 35 U.S.C. 112(b) as set forth in paragraph 8 of the action mailed 12/10/2025, have been fully considered and are persuasive. The rejection of claim 30 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/10/2026, with respect to the rejection of claim 31 under 35 U.S.C. 112(b) as set forth in paragraph 9 of the action mailed 12/10/2025, have been fully considered and are persuasive. The rejection of claim 31 has been withdrawn.
Claim Objections
Claim 4 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SB copolymer…”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SIS copolymer…”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SB copolymer…”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SIS copolymer…”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SB copolymer…”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SIS copolymer…”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SIS copolymer…”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SB copolymer…”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SB copolymer…”. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SIS copolymer…”. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: the claim should be amended to recite “…the at least one SB copolymer…”. Appropriate correction is required.
Applicant is advised that should claim 6 be found allowable, claim 30 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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
Claims 1-15 and 30 are 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 1, the claim has been amended to recite at least one tackifying compound (i.e., a singular compound) comprising the recited rosin ester and the rosin phenolics. However, it is unclear from the amended limitations whether the at least one tackifying compound only requires one of the rosin ester or the rosin phenolics (but can comprise both), or if the at least one tackifying resin requires both the rosin ester and the rosin phenolics. Note that “compound” is in the singular.
Claim 3 recites the limitation "said at least one elastomeric block copolymer" in line 2. There is insufficient antecedent basis for this limitation in the claim as an at least one elastomeric block copolymer has not been previously introduced.
Claim 5 recites the limitation "said at least one hydrogenated dicyclopentadiene resin" in line 6. There is insufficient antecedent basis for this limitation in the claim as an at least one hydrogenated dicyclopentadiene resin has not been previously introduced.
Claim 6 recites the limitation "said at least one hydrogenated dicyclopentadiene resin" in line 11. There is insufficient antecedent basis for this limitation in the claim as an at least one hydrogenated dicyclopentadiene resin has not been properly introduced.
Claim 7 recites the limitation "said at least one hydrogenated dicyclopentadiene resin" in line 11. There is insufficient antecedent basis for this limitation in the claim as an at least one hydrogenated dicyclopentadiene resin has not been properly introduced
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 further view of Wada et al. (US 2005/0209380 A1), 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, 8 and 12-15, 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 with both elastomers comprising 20-50 % by weight (current claim 3) of the total of elastomers and tackifying additive; which said tackifying system is soluble in the polyisoprene component and includes, inter alia, rosin and rosin ester (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 does not specify that the rosin is rosin phenolics having a softening point (SP) of 95-125 ℃, and is silent to the rosin ester tackifier having a softening point (SP) of 95-125 ℃ (current claims 1 and 8). Sasaki does not disclose an application temperature of from -25 to 70 ℃ (current claim 13).
However, 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). Wada further teaches that rosin phenol resin provides PSA performance to a polar object with the rosin ester resin providing PSA performance to a non-polar adherend (para 0034).
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 HMPSA of Sasaki with rosin ester and rosin phenolic tackifier(s), with each having the presently claimed softening temperature (i.e., 95-125 ℃), based on the application temperature of use (-25 to 70 ℃), and the high temperature elastic modulus, low temperature tack, PSA performance to a polar object and PSA performance to a non-polar adherend as required of the prior art’s intended application as in the present invention.
Sasaki/Ishiguro/Wada are silent to the HMPSA having a glass transition temperature (Tg) of 0-30 ℃ (current claim 1);
a peel-adhesion strength at least 1 lbf/in (175 N/m) at -25-80 ℃ (current claim 14);
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 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).
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 to that presently claimed (Tg = 0 to -30 ℃) towards said HMPSA demonstrating improved room temperature PSA properties;
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.
Regarding claims 4-7 and 30, as noted above, Sasaki teaches that the elastomeric ratio of the first elastomer (i.e., the SB copolymer) to the second elastomer (i.e., the SIS block copolymer) is 0.5:1 to 5:1. The Examiner notes that an SIS block copolymer necessarily consists of three blocks (tri-block copolymer, current claim 4). Sasaki also teaches that the first elastomer 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 SIS block copolymer) provides a second tangent delta (para 0020).
Given that the combined % by weight range of the first elastomer to the second elastomer is 20 to 50 % by weight of the HMPSA, and given that ratio of the first elastomer (i.e., the SB copolymer) to the second elastomer (i.e., the SIS block copolymer) is 0.5:1 to 5:1, Sasaki teaches that the proportions of said first elastomer and said second elastomer overlap that presently claimed for the SB copolymer of,
8 to 30 % by weight as recited in current claim 4 or,
11 to 24 % by weight as recited in current claim 6 or,
21 to 23 % by weight as recited in current claim 7 or,
11 to 24 % by weight as recited in current claim 30;
and the SIS block copolymer of,
8 to 30 % by weight as recited in current claim 4 or,
11 to 24% by weight as recited in current claim 6 or,
21 to 23 % by weight as recited in current claim 7 or,
11 to 24 % by weight as recited in current claim 30.
Also, given that the % by weight range of the first elastomer to the second elastomer is 20 to 50 % by weight of the HMPSA, the % by weight range of the tackifying system is 50 to 80 % by weight of the HMPSA except for other modifiers (e.g., plasticizers) (para 0017), which overlaps that for the combined proportions of the presently claimed tackifying rosin ester of,
greater than 0 to 40% by weight as recited in current claim 5 or,
10 to 36% by weight as recited in current claim 6 or,
13 to 24 % by weight as recited in current claim 7 or,
10 to 36% by weight, current claim 30;
and the tackifying rosin phenolic of,
greater than 0 to 40% by weight as recited in current claim 5 or,
greater than 0 to 33% by weight as recited in current claim 6 or,
greater than 0 to 10% by weight as recited in current claim 7 or,
greater than 0 to 33% by weight, current claim 30.
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).
Further, while Sasaki does not stipulate the proportion of the disclosed plasticizer, Sasaki does teach that the plasticizers are added to lower the Tg of the polyisoprene segment (para 0031). Continuing, and as noted above, Sasaki teaches that the first elastomer is provided towards low temperature PSA performance while low values of tangent delta (loss modulus/storage modulus) provide good processability and cutability, whereas Wada instructs teaches that the rosin phenol resin provides PSA performance to a polar object with the rosin ester resin providing PSA performance to a non-polar adherend.
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, the rosin phenol resin and the plasticizer disclosed in the cited prior art in proportions identical to that presently claimed based on the 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, and the Tg of the polyisoprene segment as required of the prior art’s intended application as in the present 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 Wada et al. (US 2005/0209380 A1) and Nakamura et al. (US 6414073 B1).
Regarding claim(s) 11, Sasaki/Ishiguro/Wada teaches the HMPSA comprising the first SB elastomer as in the rejection of at least current claim 1 set forth above.
Sasaki/Ishiguro/Wada 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.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/10/2026, with respect to the rejections of claims 1-10, 12-15 and 30 over Sasaki et al. in view of Ishiguro et al. under 35 U.S.C. 103 and 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 as set forth in paragraphs 10-11 of the action mailed 12/10/2025, have been fully considered but they are not persuasive.
The Examiner respectfully acknowledges the amendments to at least claim 1, which now requires, among other things, the SIS block copolymer, the SB copolymer, the rosin ester tackifier and the rosin phenolic tackifier (see also the rejection of current claim 1 under 35 U.S.C. 112(b) set forth above). The Examiner also respectfully directs the Applicant’s attention to the updated prior art rejections set forth above, wherein it is noted that, as acknowledged by the Applicant, Sasaki does indeed contemplate rosin tackifiers (in addition to the disclosed rosin esters).
Remedying Sasaki in regards to the rosin phenolic tackifiers, the newly cited Wada invention not only teaches rosin phenol resins employed as tackifiers in PSA compositions, but also instructs the skilled artisan as to the merits and the motivation for employing them; that is, for improving the PSA properties on polar adherends as postured in the prior art rejections of the current action. It is noted that the Nakamura reference was cited to remedy Sasaki in regards to the styrene content, and not the tackifiers.
Turning now to the Applicant’s assertions of the claimed invention demonstrating “synergistic and unexpected improvements,” the Examiner notes that the DCPD presently argued (i.e., hydrogenated dicyclopentadiene resin tackifier) is not recited in at least currently amended claim 1; and it’s ambiguous (see also the rejection of current claims 5-7 under 35 U.S.C. 112(b) set forth above) whether DCPD is a part of the dependent claims. It is noted that inventive Examples 1-11 employ the WESTREZ 5090 and the SUKOREZ SU-230 tackifiers, the former of which is representative of the presently claimed rosin ester tackifier and the latter of which is presentative of the DCPD tackifier. Examples 1-11 of Table 2 do not employ the TECKROS RP125 or the TECKROS RP103 tackifiers, which are representative of the presently claimed rosin phenolic tackifiers. Examples 1-11 of Table 2 do not employ any plasticizers.
Of all of Examples 1-15 of Table 3, only Examples 7, 11, 13 and 15 employ TECKROS (or TECKROZ) rosin phenolic tackifiers, and of those four, only Examples 13 and 15 employ both the rosin ester and rosin phenolic tackifiers in combination. Further, the Applicant is respectfully reminded that, as set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of the softening points (SP) for the recited rosin ester and rosin phenolic tackifiers. The SP of WESTREZ 5101 is 100 ℃, and thus it is unclear if the alleged synergistic and unexpected improvements would occur at or near the upper and lower limits of the SP range presently claimed. Similarly, the SP of TECKROS RP125 is 125 ℃, and thus it is unclear if the alleged synergistic and unexpected improvements would occur at SP values over the entire range presently claimed. It is noted that the TECKROS RP103 has an SP value at 103 ℃, but it was not employed in combination with any of the rosin ester tackifiers in any of the inventive examples (Examples 7 and 11). The SP of WESTREZ 5090 is 88 ℃, which is outside the presently claimed range, but this tackifier was not employed (see Examples 1-5 of said Table 3) in combination with the rosin phenolic tackifiers.
Lastly a comparison of inventive Examples 9 and 14, which comprise the WESTREZ 5101 tackifier but not rosin phenolic tackifier(s), with inventive Examples 13 and 15, which comprise the WESTREZ 5101 tackifier with the TECKROS RP125 rosin phenolic tackifier, demonstrates that the adhesion to nonwoven polypropylene fabric for Examples 9 and 14 were comparable to, or even exceeded, the adhesion values of Examples 13 and 15. For gypsum, Example 15 exceed the adhesion values of Examples 9 and 14, but Example 13 was inferior in this respect to Examples 9 and 14.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/4/2026
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