DETAILED ACTION
This is an Office action based on application number 17/641,311 filed 8 March 2022, which is a national stage entry of PCT/KR2020/013387 filed 29 September 2020, which claims priority to KR10-2019-0121183 filed 30 September 2019. Claims 1-4, 7-9, and 11-17 are pending. Claims 11-14 and 16-17 are withdrawn from consideration. Claims 5-6 and 10 are canceled.
Amendments to the claims, filed 20 May 2026, have been entered into the above-identified application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 May 2026, has been entered.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7-9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Mao et al. (US Patent No. US 6,426,151 B1) (Mao) in view of Wang et al. (US Patent No. US 6,197,238 B1) (Wang) and Mueller et al. (US Patent Application Publication No. US 2010/0051200 A1) (Mueller), and further as evidenced by Baxter et al. (US Patent No. 6,120,638) (Baxter).
Regarding instant claims 1, 4, and 15:
Mao discloses aqueous based pressure sensitive adhesive emulsions comprising a colloidal dispersion of a copolymer in water (col. 4, lines 1-3).
Mao further discloses that the copolymer comprises an alkyl ester of acrylic or methacrylic acid, a vinyl ester of unsaturated aliphatic acids, and an alpha, beta-ethylenically unsaturated monocarboxylic acid (col. 4, lines 3-20).
Said alkyl ester of acrylic or methacrylic acid meets the recited first repeating unit (a1).
Said alpha, beta-ethylenically unsaturated monocarboxylic acid meets the recited second repeating unit (a2).
Mao further discloses that the vinyl ester of unsaturated aliphatic acids is inclusive of vinyl acetate (col. 4, lines 47-50), which meets the recited third repeating unit (a3).
Baxter provides evidence that polymers in the form of aqueous emulsions comprise polymer solids in the form of particles (col. 4, lines 47-53); therefore, the colloidally dispersed copolymer of Mao is construed to meet the claimed polymer particles.
Mao further discloses that the copolymer comprises 30-80 wt % of the C1-12 alkyl ester of acrylic or methacrylic acid (col. 4, lines 7-8) and 0-10 wt of the alpha, beta-ethylenically unsaturated monocarboxylic acid (col. 4, lines 19-20). Therefore, the amount of the alpha, beta-ethylenically unsaturated monocarboxylic acid, which meets the claimed repeating unit, includes/overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Mao further discloses that the copolymer comprises 30-80 wt % of the C1-12 alkyl ester of acrylic or methacrylic acid (col. 4, lines 7-8) and 0-20 wt% vinyl ester of unsaturated aliphatic acids (e.g., vinyl acetate) (col 4, lines 11-12).
Mao teaches that pressure sensitive adhesives are widely used for fabricating paper labels and laminating films for forming decals and other related products (col. 1, lines 18-21). This teaching suggests that the composition of Mao is intended for these uses.
Mao does not explicitly disclose the copolymer comprises a fourth repeating unit (a4) and the amount thereof.
However, at col. 3, Wang discloses that polyvinyl acetate may be hydrolyzed to form repeat units of polyvinyl alcohol-co-vinyl acetate:
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Wang teaches that as the degree of hydrolysis increases, the water resistance, tensile strength, block resistance, solvent resistance, and adhesion to polar substrates increase; conversely, Wang teaches that as the degree of hydrolysis decreases, the water solubility, flexibility, water sensitivity, and adhesion to hydrophobic substrates increase.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to hydrolyze at least a portion of the vinyl acetate groups of Mao as taught by Wang. The motivation for doing so would have been to optimize parameters inclusive of water resistance/solubility/sensitivity, tensile strength, block resistance, solvent resistance, and substrate adhesion.
The hydrolysis of vinyl acetate groups forms vinyl alcohol groups that meet the recited fourth repeating group (a4).
As to the amounts of the third and fourth repeating unit:
Since the instant specification is silent to unexpected results, the specific degree of hydrolysis (i.e., the relative amounts of vinyl acetate and vinyl alcohol) is not considered to confer patentability to the claims. As water resistance/solubility/sensitivity, tensile strength, block resistance, solvent resistance, and substrate are variables that can be modified, among others, by adjusting the amount of hydrolysis, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of hydrolysis in the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Mao does not explicitly disclose an amount of acetic acid.
However, Mueller discloses acrylic emulsion pressure sensitive adhesives for use in removable polymeric film labels (paragraph [0002]).
Mueller teaches that bottles used in the beverage industry are reused many times, and the bottles must be cleaned and the labels removed prior to refilling and relabeling the bottles; therefore, it is desirable to produce polymeric film labels that can be completely removed during the washing process (paragraphs [0006-0007]).
Mueller teaches that acetic acid is added to enhance removability of the adhesive (paragraph [0027]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, to include the acetic acid of Mueller in the adhesive emulsion of Mao. The motivation for doing so would have been to enhance the removability of the adhesive such that it can be useful in reusable container applications.
As to the claimed amount of acetic acid, since the instant specification is silent to unexpected results, the specific amount of acetic acid is not considered to confer patentability to the claims. As the removability of the adhesive during the washing process is a property that can be modified, among others, by adjusting the amount of acetic acid, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of acetic in the prior art combination to obtain the desired removability (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Wang and Mueller with Mao as evidenced by Baxter to obtain the invention as specified by the claims.
Regarding instant claim 7:
Mao further discloses that the copolymer further comprises styrene (col. 4, lines 13-14) (i.e., an aromatic vinylic monomer) and a hydroxyalkyl (meth)acrylate (col. 4, line 17).
Regarding instant claim 8
Mao further discloses that the hydroxyalkyl (meth)acrylate is inclusive of hydroxyethyl acrylate, hydroxyethyl methacrylate, hydroxypropyl arylate, hydroxypropyl methacrylate, hydroxybutyl acrylate, hydroxybutyl methacrylate (col. 5, lines 1-7).
Regarding instant claim 9:
Mao further discloses that the copolymer further comprises styrene (col. 4, lines 13-14).
Answers to Applicant’s Arguments
In response to Applicant’s arguments, the grounds of rejection are altered. Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant traverses the Examiner’s position that the amount of acetic acid does not confer patentability to the claims. Applicant contends that from the comparative data provided in the present specification, where the acetic acid is less than 4,000 ppm, the adhesive strength does not sufficiently decrease after immersion in water; and where the content of the vinyl acetate is excessively high, the initial adhesive strength is significantly deteriorated when compared to those examples within the scope of the invention. Applicant contends that the use of acetic acid and vinyl acetate in specific amounts provides unpredictable results.
Applicant’s arguments are unpersuasive. With regard to the amount of acetic acid, though the prior art does not explicitly teach the claimed amount, Mueller teaches that acetic acid is added to enhance the removability of an adhesive that is used for labels intended to be removed by a washing process. Therefore, both Mueller and Applicant recognize increasing the acetic acid amount leads to an increase in removability (i.e., a decrease in adhesive strength) during a washing process. Therefore, since the prior art recognizes the relationship between acetic acid and a decrease in adhesive strength, such a relationship is not unexpected as touted by Applicant.
Similarly, Applicant’s argument regarding the unexpected results of the vinyl acetate amount is unpersuasive. As disclosed above, Wang teaches that the adhesive strength to different substrates is influenced, at least in part, by the content of vinyl acetate, i.e., as the degree of hydrolysis increases (as vinyl acetate is converted to vinyl alcohol), adhesion to polar substrates increases. Therefore there is some suggestion in the prior art that modification of the vinyl acetate amount influences adhesive strength. Therefore since the prior art recognizes the relationship between vinyl acetate content and adhesive strength, such a relationship is not unexpected as touted by Applicant.
Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "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 occur over the entire claimed range. See MPEP §716.02(d).
In the instant case, the evidence upon which Applicant relies is narrower in scope than the claims, e.g., Applicant’s evidence is drawn to specific monomers in specific amounts, whereas the claims are drawn to any alkyl (meth)acrylate-based monomers and any unsaturated carboxylic acid-based monomer, both in unspecified amounts as recited by independent claim 1. Therefore, it is not immediately clear that those properties Applicant touts as unexpected are necessarily present in every embodiment encompassed by the scope of Applicant’s claims.
Conclusion
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/TAM/Examiner, Art Unit 1788 06/04/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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