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 .
Claim Rejections - 35 USC § 103
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.
Claims 1-8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Okinaga JP07011216A and in view of Brown et al US 5,492,950.
Regarding claims 1-8, Okinaga teaches water-based pressure-sensitive adhesive composition, which contains an emulsion of a (meth)acrylic acid ester copolymer, composed mainly of a 4-14C alkyl (meth)acrylate, an α,β-unsaturated carboxylic acid and a functional monomer containing two or more polymerizable double bonds in one molecule (Overview). Okinaga discloses (paras [0010]-[0013]) 2-ethylhexyl acrylate as one of the 4-14C alkyl (meth)acrylate monomer, and further notes that additional monomers such as methyl methacrylate, vinyl acetate, 2-hydroxyethyl (meth) acrylate and styrene can be added as constituent components.
Okinaga’s embodiments only utilize 0.5 parts by weight acrylic acid (Table 1, para [0044]). An artisan skilled in the art, would look to analogous pressure-sensitive adhesive composition art to further optimize the composition. Similar to Okinaga, Brown also teaches pressure-sensitive adhesive based on emulsion polymers (Title), and recommends the incorporation of an α, β unsaturated carboxylic acid such as acrylic acid in the preferable amount of 2.5 to 5 wt% (Col 2, lines 58-61 and line 64)). Advantageously Brown provides the motivation to utilize acrylic acid to enhance adhesion to polar surfaces (col 5, lines 22-23).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Okinaga’s compositions with the 2.5 wt% acrylic acid as taught by Brown for the same application of creating pressure sensitive adhesive with enhanced adhesion to polar surfaces.
Okinaga considers ethylene glycol dimethacrylate and triethylene glycol diacrylate as equivalents (para [0012]). It is prima facie obvious to substitute equivalents for the same purpose, see MPEP 2144.06 II. An obvious composition derived from Okinaga’s composition D and in view of Brown, where the acrylic acid is increased to 2.5 parts by weight and the remaining components are proportionally decreased, is presented below:
Monomer
Parts by weight (Example D-original)
Parts by weight (Example D-modified)
2-Ethylhexyl Acrylate
71.5
70.1
n-Butyl Acrylate
10
9.8
Methyl Methacrylate
10
9.8
2-Hydroxyethyl methacrylate
2.8
2.7
Acrylic acid
0.5
2.5
Vinyl acetate
5
4.9
Triethylene glycol diacrylate
0.2
0.2
Total
100
100
The weight ratio of 2-hydroxyethyl methacrylate and acrylic acid monomer would be 2.7/2.5 =1.08, which meets the claimed limitation.
Okinaga does not address the viscoelastic ratio (or the storage G’ and loss modulus G’’, instant claims 2 and 3 respectively) with the required measurement conditions. However, Okinaga and Brown’s obvious composition as presented above with 89.7% (70.1+9.8+9.8) of alkyl (meth)acrylates, along with the presence of additional required monomers is similar to applicant’s examples and therefore would be reasonably expected to meet the claimed viscoelastic ratio. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claim 12, Okinaga does not provide the loop tack results measured under various conditions. However as discussed when addressing claim 1, Okinaga and Brown’s obvious composition as presented above with majority alkyl (meth)acrylate monomers, along with the presence of additional required monomers (and crosslinker) are similar to applicant’s examples and therefore would be reasonably expected to meet loop tack results.
Claims 1-6, 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Okinaga JP07011216A and in view of Brown et al US 5,492,950.
Regarding claims 1-6 and 9, Okinaga teaches water-based pressure-sensitive adhesive composition, which contains an emulsion of a (meth)acrylic acid ester copolymer, composed mainly of a 4-14C alkyl (meth)acrylate, an α,β-unsaturated carboxylic acid and a functional monomer containing two or more polymerizable double bonds in one molecule (Overview). Okinaga discloses (paras [0010]-[0013]) 2-ethylhexyl acrylate as one of the 4-14C alkyl (meth)acrylate monomer, and further notes that additional monomers such as methyl methacrylate, vinyl acetate, 2-hydroxyethyl (meth) acrylate and styrene can be added as constituent components.
Okinaga’s embodiments only utilize 0.5 parts by weight acrylic acid (Table 1, para [0044]). An artisan skilled in the art, would look to analogous pressure-sensitive adhesive composition art to further optimize the composition. Similar to Okinaga, Brown also teaches pressure-sensitive adhesive based on emulsion polymers (Title), and recommends the incorporation of an α, β unsaturated carboxylic acid such as acrylic acid in the preferable amount of 2.5 to 5 wt% (Col 2, lines 58-61 and line 64)). Advantageously Brown provides the motivation to utilize acrylic acid to enhance adhesion to polar surfaces (col 5, lines 22-23).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Okinaga’s compositions with the 2.5 wt% acrylic acid as taught by Brown for the same application of creating pressure sensitive adhesive with enhanced adhesion to polar surfaces.
Okinaga considers ethylene glycol dimethacrylate and triethylene glycol diacrylate as equivalents (para [0012]). It is prima facie obvious to substitute equivalents for the same purpose, see MPEP 2144.06 II. An obvious emulsion composition derived from Okinaga’s composition C and in view of Brown, where the acrylic acid is increased to 2.5 parts by weight and the remaining components are proportionally decreased, is presented in the table below:
Monomer
Parts by weight (Example C-original)
Parts by weight (Example C-modified)
2-Ethylhexyl Acrylate
66.5
65.2
n-Butyl Acrylate
10
9.8
Methyl Methacrylate
15
14.7
2-Hydroxyethyl methacrylate
2.9
2.8
Acrylic acid
0.5
2.5
Styrene
5
4.9
Triethylene glycol diacrylate
0.1
0.1
Total
100
100
The weight ratio of 2-hydroxyethyl methacrylate and acrylic acid would be 2.8/2.5 =1.12, which meets the claimed limitation.
Okinaga does not address the viscoelastic ratio (or the storage G’ and loss modulus G’’) with the required measurement conditions. However, Okinaga’s and Brown’s composition as presented above with 89.7% (65.2+9.8+14.7) of alkyl (meth)acrylates, along with the presence of additional required monomers is similar to applicant’s examples and therefore would be reasonably expected to meet the claimed viscoelastic ratio. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claim 12, Okinaga does not provide the loop tack results measured under various conditions. However as discussed when addressing claim 1, Okinaga and Brown’s obvious composition as presented above with majority alkyl (meth)acrylate monomers, along with the presence of additional required monomers (and crosslinker) are similar to applicant’s examples and therefore would be reasonably expected to meet loop tack results.
Response to Arguments
Applicant's arguments filed on 10/24/2025 have been fully considered but they are not persuasive. Please see the response below.
Applicant argues that there is no motivation to combine references Okinaga and Brown. In response, it is noted that both Okinaga and Brown both teach pressure sensitive adhesives, which include tackifier resins in their compositions. Okinaga does not provide the monomer amount ranges in the general disclosure, however discloses various inventive poly (meth)acrylic copolymer compositions which incorporate 0.5 wt% acrylic acid. An artisan skilled in the art understands that Okinaga’s invention is not limited to the inventive examples and would look to Brown who also teaches pressure sensitive adhesive compositions to further optimize Okinaga’s compositions. Brown recommends to utilize 2.5-5wt% acrylic acid, with the appropriate motivation to enhance adhesion to polar substrates.
Applicant adds that the principle of operation of primary reference Okinaga would be destroyed, since the Tg of the (meth)acrylic copolymer might not be in the controlled range of -25 to -40 oC and the increase in acrylic acid could re-introduce adhesive residue problem in Okinaga. In response, Okinaga discloses in para [0015] that adhesive residue would increase if the Tg becomes too low. Okinaga calculates Tg using the Fox equation (see Okinaga Table 1 legend), where the Tg of embodiment D is disclosed to be -35 oC. Evidence support reference provides the Fox equation as shown below (Iglesias et al. Polymer 1996, 37 (8), page 1450, equation (21)), where wi are the weight fractions of different monomers and n are the comonomers:
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57
136
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Greyscale
Acrylic acid amount of 2.5 wt% in the Okinaga’s obvious embodiment D, as discussed in the main rejection, would increase the Tg to -30 oC when calculated per the Fox equation, which still remains within the Okinaga’s desired range of -25 to -40 oC. Since the Tg of the obvious embodiment of D is still within Okinaga’s Tg window of -25 to -40 oC, the adhesive residue would be expected to remain unchanged or reduced. Thus, the operating principles of Okinaga’s obvious composition would remain unchanged.
Applicant further discusses that the Okinaga's polymers have functional monomers and thus are totally different from Brown's acrylic polymers. While it is acknowledged that Okinaga utilizes an additional monomer di(meth)acrylate, this monomer is present in minute amounts, while the majority of the acrylic ester monomers of Okinaga overlap with that of the acrylic polymers of Brown. Since both Okinaga and Brown teach poly(meth) acrylic copolymer based pressure sensitive adhesives they are analogous references and both references do not need to disclose identical monomers.
Lastly the applicant argues that incorporating 2.5 wt% acrylic acid taught in Brown and adjusting the other monomer amounts of Okinaga in the obvious embodiments are based on hindsight. In response, both modified embodiments of C and D incorporate 2.5 wt% of acrylic acid as recommended by Brown, while all the other monomer components are proportionally decreased to account for the increased acrylic acid amount, which leads to the monomer ratios which fall within the claimed requirements. Applicant attention is also brought to: It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Since the desired monomers and monomer weight ratios are rendered obvious by the combination of Okinaga and Brown, and applicant’s arguments against the reference combination are found to be unconvincing, the rejection over Okinaga and Brown is thus maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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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/S.M.D./
Examiner
Art Unit 1765
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 2/25/26