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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2 July 2025 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 7-10, 12-25, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Lakshmanan (US 4,167,433) in view of Magnin et al. (US 2010/0027370) and Henry et al. (US 2013/0186551). Arriaga et al. (Branched Vinyl Ester Monomers for Hydrophobic Emulsion Polymers, 2013, p. 1-8) is cited as an evidentiary reference. All references were cited in a prior Office action.
Regarding claims 1 and 32, Lakshmanan teaches an adhesive composition comprising (1) a first ethylene-vinyl ester copolymer having from about 4 to about 35 wt% of a vinyl ester; and (2) a second ethylene-vinyl ester copolymer having an excess of 35 wt% of a vinyl ester (Abstract).
The first ethylene-vinyl ester copolymer contains 4-35 wt% of a vinyl ester, indicating that ethylene is included in amounts of 65-96 wt%. The vinyl ester monomer may be a C2-C4 vinyl ester such as vinyl acetate, formate, propionate, or butyrate (col. 2, lines 49-54). Lakshmanan does not teach a branched vinyl ester monomer as claimed.
In the same field of endeavor, Magnin teaches adhesives (p. 1, [0001]) containing polymers based on comonomers such as ethylene and a vinyl ester. Suitable vinyl esters include vinyl acetate, vinyl propionate, and vinyl butyrate as well as vinyl pivalate, vinyl 2-ethylhexanoate, and vinyl versatates with up to 12 carbon atoms such as VeoVa® 10 (p. 3, [0029]). The various vinyl ester monomers are disclosed in parallel as equally suitable alternatives and are therefore recognized by the prior art as equivalents suitable for the same purpose, i.e. as vinyl ester monomers suitable for copolymerization with additional monomers such as ethylene, with the resulting copolymers useful in adhesive applications.
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute some or all of Lakshmanan’s C2-C4 vinyl ester with Magnin’s vinyl pivalate, vinyl 2-ethylhexanoate, or vinyl versatates with up to 12 carbon atoms such as VeoVa® 10, as these monomers are recognized by the prior art as equivalents suitable for the same purpose. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP 2144.06.
Vinyl pivalate and vinyl 2-ethylhexanoate are recognized in the art as branched vinyl ester monomers containing 7 and 10 carbon atoms, respectively. Arriaga teaches that VeoVa® 10 is the vinyl ester of neodecanoic acid (p. 2, Glass Transition Temperature, third paragraph), which is recognized in the art as having the following branched structure containing 12 carbon atoms:
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These monomers read on the claimed branched vinyl ester monomer having at least 5 carbon atoms.
Lakshmanan further suggests using the composition described above in structural foam bonding applications (col. 1, lines 7-10). Neither Lakshmanan nor Magnin teach a foaming agent or peroxide as claimed.
In the same field of endeavor, Henry teaches a foamable adhesive comprising a polymer, a blowing agent, and a crosslinking system (p. 1, [0009]-[0014]). Suitable polymers include ethylene vinyl acetate (i.e. a copolymer of ethylene and a C2 vinyl ester) (p. 2, [0021]-[0022]). The choice of a suitable crosslinking system and blowing agent allows the formulation to maintain suitable viscosity, allows for control of expansion and cure to obtain adequate adhesion, and results a controlled foam that retains its structure (p. 3, [0048]). Suitable crosslinking agents include peroxides (p. 3, [0045]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Lakshmanan in view of Magnin as applied above, and further in view of Henry to include both a blowing agent and crosslinking system including a peroxide. Inclusion of Henry’s blowing agent and crosslinking system in the composition will allow for formation of foam adhesives as suggested by Lakshmanan, while simultaneously maintaining suitable viscosity, controlling expansion and cure to obtain adequate adhesion, and obtaining a controlled foam that retains its structure. Modification in this way reads on claim 1.
Regarding claim 2, Lakshmanan’s first ethylene-vinyl ester copolymer is included in amounts of 10-40 wt%, along with 5-15 wt% of the second ethylene-vinyl ester copolymer (col. 4, Table 1). This is equivalent to approximately 40-89 phr of the first ethylene-vinyl ester copolymer when the combination of first and second copolymers are normalized to 100 phr. This falls within the claimed range of 20-100 phr.
Henry suggests inclusion of 1-10 wt% of a blowing agent (p. 3, [0047]) and 0.1-5 wt% of a peroxide (p. 3, [0046]). The combination of Lakshmanan’s first and second ethylene-vinyl ester copolymers are present in combined amounts of 15-55 wt% (col. 4, Table 1). When this range is normalized to 100 phr, the blowing agent and peroxide are included in amounts of 6.7-18.2 phr and 0.7-9.1 phr, respectively. These fall within or overlap the claimed ranges.
Regarding claim 7, Magnin teaches VeoVa® 10 as indicated above, which is the vinyl ester of neodecanoic acid as evidenced by Arriaga. This monomer is recognized in the art as having the following branched structure:
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This corresponds to the claimed general structure (II) where R4 and R5 have 7 combined carbon atoms.
Regarding claim 4, as indicated above, it would have been obvious to substitute some or all of Lakshmanan’s C4-C4 vinyl ester with a branched vinyl ester such as VeoVa® 10. When all of the ester is substituted with VeoVa® 10, the copolymer consists of ethylene and the branched vinyl ester.
Regarding claim 5, as indicated above, it would have been obvious to substitute some or all of Lakshmanan’s C2-C4 vinyl ester with a branched vinyl ester such as VeoVa® 10. According to Lakshmanan, suitable vinyl esters include vinyl acetate (col. 2, lines 51-52). When some of the vinyl ester such as vinyl acetate is substituted with VeoVa® 10 (in other words, when Lakshmanan’s vinyl ester is combined with Magnin’s VeoVa® 10), the copolymer consists of ethylene, the branched vinyl ester, and vinyl acetate.
Regarding claim 7, Lakshmanan’s first ethylene-vinyl ester copolymer is included in amounts of 10-40 wt%, along with 5-15 wt% of the second ethylene-vinyl ester copolymer (col. 4, Table 1). This is equivalent to approximately 40-89 phr of the first ethylene-vinyl ester copolymer and 11-60 phr of the second ethylene-vinyl ester copolymer when the combination of first and second copolymers are normalized to 100 phr. Ethylene-vinyl ester copolymers that can be used as the second copolymer include ethylene-vinyl acetate (col. 3, lines 4-10). Selecting 11-60 phr of ethylene-vinyl acetate as the second copolymer in combination with a first copolymer as modified above reads on claim 7.
Regarding claim 8, Lakshmanan’s second copolymer has a vinyl acetate content of 36-48 wt% (col. 3, lines 10-14).
Regarding claim 9, Henry further suggests inclusion of an activator (i.e. foaming agent accelerator) such as zinc oxide which allows the expansion rate to be synchronized with the crosslinking reaction (p. 3, [0047]). Henry’s examples illustrate the use of 3 phr zinc oxide (p. 3-4, [0055]). It would have been obvious to one of ordinary skill in the art at the time of filing to include Henry’s accelerator in this amount in the modified composition in order to synchronize expansion and crosslinking.
Regarding claim 10, Henry further suggests including a thixotropic filler such as fumed silica to obtain the desired melt viscosity (p. 3, [0044]). Henry’s examples include fumed silica in amounts of 4-6 phr (p. 4-5, [0055]). It would have been obvious to one of ordinary skill in the art at the time of filing to include 4-6 phr of a thixotropic filler such as fumed silica in the modified composition in order to achieve a desirable melt viscosity.
Regarding claim 12, the term “bio-based” indicates the source of carbon atoms in the claimed polymer. This is essentially a product-by-process limitation specifying the origin of the starting material used to produce the polymer. The claimed bio-based carbon content does not impart any difference in structure or physical properties to the claimed polymer, and therefore need not be disclosed by the prior art in order to read on the claims. See MPEP 2113(I).
In the alternative, although not expressly disclosed by the prior art, modification of Lakshmanan in view of Magnin and Henry as applied above results in a polymer which is identical to that of the instant claims and which will therefore necessarily possess the claimed bio-based carbon content. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01.
Regarding claim 13, as indicated above, Lakshmanan teaches a foamed adhesive and Henry teaches inclusion of a blowing agent. Thus, the prior art suggests an expanded composition as claimed.
Regarding claims 14-24, although not expressly disclosed by the prior art, modification of Lakshmanan in view of Magnin and Henry as applied above results in a composition which is identical to that of the instant claims and which will therefore necessarily possess the claimed physical properties. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01.
Regarding claim 25, Lakshmanan suggests using the adhesive composition as described above for bonding plastic surfaces to each other (col. 1, lines 7-11). This reads on the claimed article.
Claims 11 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Lakshmanan in view of Magnin and Henry as applied to claims 1 and 25 above, further in view of Camilo et al. (US 2019/0315951; cited in prior Office action).
Regarding claim 11, Lakshmanan, Magnin, and Henry remain as applied above. The cited references do not teach an elastomer as claimed.
In the same field of endeavor, Camilo teaches adhesive compositions including a copolymer produced from ethylene and vinyl acetate (i.e. a vinyl ester) (Abstract). The ethylene/vinyl ester-based adhesive can be combined with additional polymeric resins to generate a working stock for production of adhesives or polymer articles (p. 5, [0058]). Suitable polymeric resins include polybutadiene, EPM, EPDM, NBR, SBR, SBS, SEBS, BR, SIS, NR, IR, and CR (p. 5, [0060]). These materials are recognized in the art as elastomers.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Lakshmanan in view of Magnin and Henry as applied above, and further in view of Camilo to include at least one of the aforementioned elastomers to further expand the utility and marketability of Lakshmanan’s composition as a working stock for production of additional adhesive compositions or polymeric articles, thereby allowing the pursuit of additional economic opportunities.
Regarding claim 26, Camilo demonstrates that polymer compositions based on ethylene/vinyl ester copolymers are useful in a wide range of polymeric articles including insoles, midsoles, and soles (p. 5, [0055]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the composition resulting from modification of Lakshmanan in view of Magnin and Henry in articles such as insoles, midsoles, and soles in order to expand the utility and marketability of the modified composition, thereby allowing the pursuit of additional economic opportunities.
Response to Arguments
Applicant's arguments filed 2 December 2025 have been fully considered but they are not persuasive.
The Applicant argues that Lakshmanan clearly teaches vinyl ester monomers having from 2 to 4 carbon atoms, not at least five as claimed.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In this case, Lakshmanan teaches that suitable vinyl esters include those having from 2 to 4 carbon atoms (see, e.g., col. 2, lines 49-51). These vinyl esters are understood to be exemplary and do not teach away from the use of equivalent monomers containing more than 4 carbon atoms. Magnin is relied upon to teach the claimed vinyl ester monomers having at least five carbon atoms.
The Applicant argues that Lakshmanan’s examples employ vinyl acetate, which includes four carbon atoms.
A teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123.
The Applicant argues that Lakshmanan does not teach or suggest a foamable composition.
The Applicant’s characterization of Lakshmanan is accurate. While the reference does not teach away from foamable compositions, it also does not expressly disclose foamable compositions. As discussed in the rejection above, this feature of the claimed invention is taught by Henry rather than Lakshmanan.
The Applicant argues that neither Magnin nor Lakshmanan teach or suggest that replacing a C2-C4 vinyl ester monomer with a branched vinyl ester monomer of 5 or more carbons would be effective in a foamable composition.
While this is true of Magnin and Lakshmanan, Henry does generally identify copolymers of ethylene and vinyl esters as being suitable in foamed compositions (see p. 2, [0021]). Henry places no limit on the number of carbon atoms present in the vinyl ester monomer; thus, one skilled in the art would have a reasonable expectation of success when employing vinyl ester monomers known to be suitable in similar applications.
The Applicant argues that the proposed modification of Lakshmanan in view of Magnin and Harris would carry with it no reasonable expectation of success in achieving the claimed invention. The Applicant further clarifies that there would be no reasonable expectation of success in achieving a set of soft touch properties having a desired combination of density, hardness, and other physical properties.
The ”soft touch” properties referenced in the Applicant’s arguments are not present in any currently pending claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
The Applicant argues that the office failed to provide any explanation as to why the combination of references would produce the desired properties.
Various physical characteristics which may be relevant to the “soft touch” properties referenced in the Applicant’s remarks are recited in claims 14-24. An explanation of why the combination of references would yield the physical properties recited in those claims was provided in the paragraph spanning pages 8-9 of the previous Office action and is also included above.
Applicant has provided no other technical reasoning indicative of a lack of reasonable expectation of success. The cited prior art involves a combination of similar polymers formed from monomers recognized in the art as being equivalent, included in compositions having similar utilities. This is believed sufficient to create a reasonable expectation of success.
The Applicant argues that Lakshmanan is not analogous art.
The analogous art test requires that a reference either be in the field of the applicant's endeavor or reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for the rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). The scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). The “scope of the field of endeavor is a factual determination based on the scope of the application’s written description and claims.” In re Singhal, 602 Fed. Appx. 826, 830 (Fed. Cir. 2015). The test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
The Applicant’s written description describes the claimed invention as relating to “a polymer composition that includes a polymer produced from ethylene, one or more branched vinyl ester monomers, and optionally vinyl acetate, a foaming agent, and a peroxide” (specification at p. 1, [0002]). A still broader description of the invention appears in the Applicant’s abstract, which describes “[a] polymer composition that includes a polymer produced from ethylene, one or more branched vinyl ester monomers, and optionally, vinyl acetate along with various optional ingredients.
The Applicant’s written description further describes this polymer composition as having “a diverse array of end-uses” including hot melt adhesives, impact modifiers, and various forms of footwear and sportive articles (specification at p. 17-18, [0084]).
Based on the Applicant’s explanation of the inventive subject matter in the patent application, the field of endeavor is understood to be compositions based on vinyl ester-containing polymers and having a wide range of end uses including adhesives as listed at [0084]. Lakshmanan relates to adhesive compositions based on vinyl ester-containing polymers (Abstract). The same is true of Magnin (Abstract; p. 3, [0029]) and Henry (Abstract; p. 2, [0021]). Each cited reference falls within the Applicant’s field of endeavor as described in the instant specification and is therefore analogous art.
Conclusion
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/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762