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 1-17 are pending. Claims 1-17 are pending. Claims 11-14 and 16-17 are withdrawn from consideration due to Applicant’s election.
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
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 1-9 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 as evidenced by Baxter et al. (US Patent No. 6,120,638) (Baxter).
Regarding instant claim 1:
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 does not explicitly disclose the copolymer comprises a fourth repeating unit (a4).
However, at col. 3, Wang discloses that polyvinyl acetate may be hydrolyzed to form repeat units of polyvinyl alcohol-co-vinyl acetate:
PNG
media_image1.png
343
446
media_image1.png
Greyscale
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).
Regarding instant claim 2:
Mao further discloses that the alkyl ester of acrylic or methacrylic acid is inclusive of esters of acrylic acid or methacrylic acid and a C1-12 alcohol, wherein specific examples include methyl methacrylate, ethyl acrylate, butyl acrylate, hexyl acrylate, 2-ethylhexyl acrylate, isooctyl acrylate, and isodecyl acrylate (col 4, lines 35-46).
Regarding instant claim 3:
Mao further discloses that the alpha, beta-ethylenically unsaturated monocarboxylic acid are inclusive of alpha, beta-ethylenically unsaturated C3-18 carboxylic acids such as methacrylic acid, and acrylic acid (col. 5, lines 11-14).
Regarding instant claim 4:
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.
Regarding instant claims 5-6:
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).
However, the prior art combination relies upon conversion of at least a portion of the vinyl acetate groups. Therefore, the prior art combination does not disclose the claimed amounts of the third and fourth repeating groups.
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).
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).
Claims 10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Mao in view of Wang as evidenced by Baxter as applied to claim 1 above, and further in view of Mueller et al. (US Patent Application Publication No. US 2010/0051200 A1) (Mueller).
Regarding instant claims 10 and 15:
Mao in view of Wang as evidenced by Baxter discloses the aqueous based pressure sensitive adhesive emulsions comprising a colloidal dispersion of a copolymer in water, as cited in the rejection of claim 1 above.
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 in view of Wang as evidenced by Baxter 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 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 Mueller with Mao in view of Wang as evidenced by Baxter to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant first traverses the combination Wang with Mao. Applicant argues that Wang merely discloses that polyvinyl acetate may be hydrolyzed to generate vinyl alcohol repeating units rather than a teaching of its use directed to pressure sensitive adhesive compositions.
Applicant’s argument is unpersuasive. 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 Therefore, it is the Examiner’s position that one of ordinary skill in art would readily take advantage of the conversion to balance water resistance, tensile strength, block resistance, solvent resistance, adhesion to polar substrates, water solubility, flexibility, water sensitivity, and adhesion to hydrophobic substrates
Applicant further traverses the reliance on the Mao reference. Specifically, Applicant argues that the essence of Mao is to use neo-acid vinyl esters as a monomer. Applicant further cites Example 8 in Mao wherein the addition of a 5 wt% of lower alkyl vinyl esters (representative example vinyl ester) significantly deteriorates the 180° peel strength. Applicant concludes that Mao affirmatively teaches away from the use of vinyl acetate.
Applicant’s argument is unpersuasive. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123(I-II).
In the instant case, Mao positively encompasses embodiments wherein the aqueous pressure sensitive emulsions comprising a dispersion of a vinyl copolymer in water, wherein the monomers are inclusive of vinyl esters of saturated aliphatic acids inclusive of vinyl acetate (col. 4, lines 1-5, 11-12, 47-51). Though Example 8 of Mao, which comprises an amount of vinyl acetate, has a lower 180° peel strength than those examples not composed of an amount of vinyl acetate, this disclosed example does not teach away from the broader disclosure of Mao, which positively encompasses embodiments comprising vinyl acetate. Such an example can be considered a non-preferred embodiment because it is not immediately clear if such an embodiment, though having a lower peel strength, is outside the scope of Mao’s invention; therefore, such an embodiment does not teach away from the broader disclosure of Mao.
Applicant further traverses the combination of Mueller with Mao in view Wang. Applicant alleges that the teachings of Mueller does not cure the deficiencies of the combination of Wang with Mao.
Applicant’s argument is unpersuasive. Applicant’s allegation to said deficiencies are unpersuasive as addressed above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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, Alicia Chevalier can be reached at (571)272-1490. 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.
/TAM/Examiner, Art Unit 1788 02/18/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788