DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim(s) 2-3 and the addition of new claim(s) 8-13 in the amendments filed 8/7/2025.
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 .
Claim Rejections - 35 USC § 103
Claim(s) 1 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Griffith Jr. et al (US 2016/0009957 A1) in view of Huang et al. (CN 201694750 A) and in further view of Tanuma et al. (US 4511627), and in light of the evidence provided by Kanner et al. (US 7070051 B2), Satake et al. and the Aldrich Data Sheet.
The Examiner notes that citations from the ‘750 reference were taken from a machine translation, which was provided with the previous action. A copy of the Aldrich Data Sheet is provided with the current action.
Regarding claim 1, Griffith Jr. teaches a pressure-sensitive adhesive (PSA ) article comprising substrate (Sa) (1); a layer (Lb) (2) disposed on substrate (Sa) and comprising composition (Cb) comprising one or more acrylic polymer (POLb) having a glass transition temperature (Tg) of -10 ℃ or lower (Tg of 20 ℃ or lower); and a layer (Lc) (3) disposed on layer (Lb) comprising a composition (Cc) comprising polymer (POLc) of one or more high-aliphatic vinyl monomer(s) (para 0010; figure 1).
Griffith Jr. also teaches that the composition (Cb) is a PSA (para 0041) and that composition (Cc) is a PSA (para 0047), that the high aliphatic vinyl monomers are selected from, inter alia, (meth)acrylates (polymer (POLc) is an acrylic polymer) (para 0022-0026), and that composition (Cc) further comprises plasticizers (para 0051).
Griffith Jr. is silent to the (meth)acrylate polymer comprising 60 to 99.5 % by weight of composition (Cc), and to the composition (Cc) further comprising 0.5 to 40 % by weight of one or more olefin copolymer (current claim 1), wherein the olefin copolymer comprises units of vinyl acetate, acrylic acid, or a combination thereof (current claim 3).
However, as noted above, Griffith Jr. contemplates the inclusion of plasticizers.
In addition, the Applicant is respectfully reminded that:
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
In this spirit, Huang teaches solid polymer plasticizers such as, inter alia, ethylene-vinyl acetate (EVA) copolymers (para 0008). Further, it is respectfully submitted that it is established in the art that plasticizers are employed in PSA compositions towards reducing the viscosity to enhance wetting of the substrate as evidenced via Kanner (see column 8, line 58 to column 9, line 19 therein).
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 the EVA plasticizers of Huang in tandem with the (meth)acrylate copolymer for the PSA composition (Cc) of Griffith, and in the presently claimed proportions, based on the viscosity required of the prior art’s intended application as in the present invention.
Griffith/Huang is silent to the presently claimed proportions of the ethylene (and thus the vinyl acetate) monomer is the disclosed EVA plasticizers.
Tanuma continues to teach that the vinyl acetate content of EVA is selected based on considerations of transparency and tensile properties such as modulus (penetration resistance), rupture strength and elongation (column 1, lines 33-50; column 2, lines 3-18).
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 the EVA plasticizers having the presently claimed wt% of the ethylene component based on the balance of transparency, modulus (penetration resistance), rupture strength and elongation required of the prior art’s intended application as in the present invention.
Regarding claim(s) 8-9, Griffith Jr. also teaches that the acrylic polymer (POLb) comprises 50 % by weight or more of acrylic monomers such as mixtures of ethyl acrylate and 2-ethylhexyl acrylate (current claims 8-9) (para 0034-0035).
Regarding claim(s) 11, Griffith Jr. teaches that the acrylic polymer (POLc) comprises 50 % by weight or more of acrylic monomers (para 0045) with 20 to 90 % by weight being one or more high-aliphatic vinyl monomer(s) such as, inter alia, 2-ethylhexyl acrylate (para 0042).
Regarding claims 10 and 12-13, Griffith Jr. is silent to the acrylic polymer (POLb) comprising methyl methacrylate and acrylic acid (current claim 10) and the acrylic polymer (POLc) comprising ethyl acrylate (current claim 12) and/or methyl methacrylate and acrylic acid (current claim 13); but Griffith Jr. does teach that the vinyl monomers generally comprise, inter alia, (meth)acrylic acid and (meth)acrylates (para 0022-0023). In addition, both of acrylic polymers (POLb) and (POLc) have Tg values of -100 to -10 ℃ (para 0032; 0044).
The Examiner notes that it is established in the art that the Tg of a polymer is proportional to the Tg of its constituent monomers, and their respective proportions as evidenced via Satake (see column 4, lines 5-19 therein), and that the Tg of PSA compositions is selected towards a balance of tack, peel and cohesion as evidenced via Kanner (see column 8, line 58 to column 9, line 19 therein). The Aldrich Data Sheet demonstrates that the Tg of ethyl acrylate is -24 ℃; 2-ethylhexyl acrylate is -50 ℃; methyl methacrylate is 105, 120 or 115 ℃; and acrylic acid is 105 ℃.
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 (POLb) and (POLc) with the presently claimed monomers, and in the presently claimed proportions, based on the Tg and the balance of tack, peel and cohesion at the temperature of use as 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 8/7/2025, with respect to the rejection of claims 1 and 3 over Griffith Jr. et al. in view of Huang et al. under 35 U.S.C. 103 as set forth in paragraph 5 of the action mailed 5/21/2025, have been fully considered but they are not persuasive.
The Applicant’s attention is respectfully directed to the updated prior art rejection set forth above, wherein it is noted that the cited prior art, in tandem with what skilled in the art would recognize as evidence via the cited evidential reference, teaches or renders obvious all the limitations of the presently claimed invention. For example, and in contradiction to the Applicant’s assertions, the Griffith Jr. invention does apprise one skilled in the art that plasticizers, such as the EVA plasticizers of Huang, are contemplated for inclusion in the composition (Cc).
Further, as demonstrated in Kanner, one skilled in the art would have been conspicuously apprised to include the Huang plasticizers in the composition (Cc) of Griffith Jr. in the presently claimed proportions based on the viscosity (and the attendant degree of substrate wetting) required of an intended application. See also the newly cited Tanuma reference towards teaching the presently claimed wt% of the ethylenic monomer presently claimed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 10/3/2025