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 .
Election/Restrictions
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/29/2024.
Response to Amendment
The amendment filed on 10/17/2025 has been entered. Claim(s) 1 and 14 is/are currently amended. Claim(s) 1-21 is/are pending with claim(s) 13-20 withdrawn from consideration. Claim(s) 1-12 and 21 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 10/17/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that claim 1 is amended to recite an ester group concentration of 3 to 10 mmol/g, based on paragraph [0071]. Applicant respectfully submits that Yoshie 1 fails to disclose or suggest this subject matter, since the ester group concentration of the Examples of Yoshie 1 is 2.84 mmol/g.
In response, Yoshie’s 2.84 mmol/g is sufficiently close to the claimed lower limit of 3 mmol/g that one of ordinary skill in the art would prima facie expect the adhesive products based on these amounts to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I). Note: paragraph [0071] of the specification recites that the polyester resin has an ester group concentration of “preferably 2.5 to 10 mmol/g”.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshie et al (US 20150050493 A1).
Regarding claim 1, Yoshie teaches a polyester-based pressure-sensitive adhesive composition comprising a polyester D obtained by polycondensation of a dimer acid PRIPOL 1009, and a diol 1,4-butanediol, with a crosslinking agent dibutyltin oxide [0085]. This reads on the claimed “adhesive agent comprising a crosslinked adhesive agent composition which comprises a polyester resin (i) having a structural portion derived from a polycarboxylic acid compound (a) and a structural portion derived from a polyol component (b)”.
The polyester D is made of 100 g of Pripol 1009 (567 in molar molecular weight), 23.9 g of 1,4-butanediol (90 in molar molecular weight), and 0.1 g of dibutyltin oxide [0085]. The 1,4-butanediol reads on the claimed polyol component (b) comprising a glycol (b1) having an even carbon number. Therefore, the dimer acid concentration is 80.6 wt% as calculated by the examiner, meeting the claimed limitation of “not less than 60 wt. % of a total weight of the polyester resin (i) comprises a structural portion derived from at least one selected from the group consisting of a dimer acid compound, a sebacic acid compound, and a dimer diol”.
According to the applicant, In the calculating the claimed ester group concentration, a smaller one of the fed molar amount of the polycarboxylic acid compound (a) and the fed molar amount of the polyol component (b) is divided by the overall weight of the resulting polyester resin [0072 spec.].
In Yoshie’s polyester D, the dimer acid is the smaller one of the fed molar amount of the polycarboxylic acid compound (a) and the fed molar amount of the polyol component (b). The resulting ester group concentration is 2.84 mmol/g as calculated by the examiner, which is merely close to the claimed limitation of “the polyester resin (i) has an ester group concentration of from 3 to 10 mmol/g”. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Yoshie generally teaches that the Polyester can have a weight average molecular weight of 5000 to 150000 [0033]. It would have been obvious to one of ordinary skill in the art at the time of the invention to form a pressure sensitive adhesive composition according to Yoshie including a polyester having a weight average molecular weight of 5000 to 150000, as Yoshie teaches this range to be suitable for such product. This molecular weight overlaps the claimed range of 50,000 to 500,000. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
The limitation of “the adhesive agent having an adhesive force (α) of not less than 1 N/25 mm as measured as a 180-degree peel strength (N/25 mm) by forming an adhesive agent layer of the adhesive agent on a substrate to provide an adhesive sheet, bonding the adhesive sheet to an adherend of a bright annealed stainless steel plate, allowing the resulting structure to stand still at 23° C. at 50% RH for 30 minutes, and peeling the adhesive sheet from the adherend at a peel rate of 300 mm/minute” is a property of the product. “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. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 2, The 1,4-butanediol reads on the claimed aliphatic glycol having a straight chain structure, as evidenced by the applicant [0051 spec.].
Regarding claim 3, Yoshie teaches that the dicarboxylic acid can include sebacic acid [0025], which reads on the claimed straight chain carboxylic acid compound (a1), as evidenced by the applicant [0042 spec.]. Polymer D contains 0% of straight chain carboxylic acid, meeting the limitation of “not greater than 70 mol %”.
Regarding claim 4, the 1,4-butanediol is 100 mol% in the polyol in Polymer D.
Regarding claim 5, the 1,4-butanediol has a carbon number of not greater than 4.
Regarding claim 6, Yoshie’s Polymer D is made of excess amount of diol, meaning the acid groups are all reacted to form the ester group, resulting an acid value of near zero.
Regarding claim 7, the claimed bioplastic degree means that the material is prepared by using at least one plant-derived material as disclosed by the applicant [0015 spec.]. Therefore, it is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The plant-derived material has the same structure of the material derived from any source. Therefore, the claimed bioplastic degree does not gain patentable weight. Nonetheless, Yoshie teaches that the dimer acids are derived from plants [0025]. Since the dimer acids can be 80.6 wt% in the polyester as stated above, the bioplastic degree of the polyester is 80.6%, meeting the claimed bioplastic degree of not less than 60%.
Regarding claim 9, Yoshie’s adhesive comprises crosslinking agent [0030].
Regarding claim 10, Yoshie teaches that the adhesive may contain a tackifier [0049].
Regarding claim 11, the claimed bioplastic degree means that the material is prepared by using at least one plant-derived material as disclosed by the applicant [0015 spec.]. Therefore, it is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The plant-derived material has the same structure of the material derived from any source. Therefore, the claimed bioplastic degree does not gain patentable weight.
Nevertheless, Yoshie teaches that the adhesive contains the polyester and a crosslinking agent [abstract and 0013]. The crosslinking agent is 0.001-30 parts per 100 parts of the polyester [0055]. Thus, the polyester is in the range of 77-100 wt% in the adhesive, as calculated by the examiner.
Since the polyester has a bioplastic degree of 80.6% as stated above, the bioplastic degree of the adhesive is in the range of 62-81, meeting the claimed bioplastic degree of not less than 60%.
Regarding claim 12, the limitation of “used for bonding a component” is a statement of intended use that imparts no additional structure beyond the claimed adhesive agent and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshie et al (US 20150050493 A1, hereinafter referred to as “Yoshie 1”) as applied to claim 1 above, further in view of Yoshie et al (US 20170029675 A1, hereinafter referred to as “Yoshie 2”).
Regarding claim 8, Yoshie 1 teaches the adhesive agent in claim 1. Yoshie 1 is silent about the claimed hydrolysis inhibitor. However, Yoshie 1 teaches that the composition comprises additives [0065].
In the same field of endeavor, Yoshie 2 teaches a pressure sensitive adhesive with similar composition and application as Yoshie 1 [abstract, 0002]. Yoshie 2 teaches that the adhesive may contain a hydrolysis resistant agent as an additive [0054].
It would have been obvious to one of ordinary skill in the art at the time of filing to select add a hydrolysis resistant agent as an additive in Yoshie 1’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIANGTIAN XU/Primary Examiner, Art Unit 1762