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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 4, 2025 has been entered.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed June 9, 2025, with respect to the rejection(s) under 35 U.S.C. 112(d) have been fully considered and are persuasive. Applicant has amended claims 3 and 18 such that the ranges recited in claim 1 are further limited by the subsequently recited ranges.
Applicant’s amendments and arguments, filed June 9, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Wang et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant has amended claim 1 to recite wherein the hot melt adhesive is substantially free of mineral oils and plasticizers (previous rejected in claims 21 and 22) and wherein the viscosity of the hot melt adhesive is in the range from about 1,000 mPa*s to about 7,000 mPas*s (previously rejected in claim 15). Applicant argues that a person having ordinary skill in the art would not have reasonable expectation of that the formulation resulting from the combination of Wang and Kauffman (cited in the previous Office Action) would have the claimed “viscosity of in the range from about 1,000 mPa*s to about 7,000 mPas*s” if the plasticizer was removed from Wang, as motivated by Kauffman. Applicant points to Table 1 of Wang and notes that, for compositions comprising a plasticizer, the viscosity at about 176 ˚C is approximately 15,000 cPs (wherein 1 mPa*s = 1 cPs). While the Office recognizes that exemplary embodiments disclosed by Wang (e.g., Table 1) exhibit viscosities above the claimed range, 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 (see MPEP 2123 I). Wang teaches that the hot melt composition comprising the polymer blend has a viscosity ranging from 2,000 mPa*s to 15,000 mPa*s at 177 ˚C ([0040]), which significantly overlaps with the claimed range and motivates selection of the overlapping portion since it is a known/workable range for viscosity of a hot melt adhesive composition that allows for facile processing/application thereof e.g., via spray coating ([0040]). While the Office recognizes that a person having ordinary skill in the art would reasonably predict removing a plasticizer from the composition of Wang would moderately increase the viscosity, the combined teachings of Wang and Kauffman would (1) indicate that plasticizer-free hot melt adhesive compositions are known within the art and exclusion of a plasticizer from the same does not render the composition unsatisfactory for its intended purpose and (2) motivate a person having ordinary skill in the art to consider the benefits of exclusion of a plasticizer component (i.e., lack of volatile compounds undesirable for consumer products) in contrast to a predictable increase in viscosity when excluding a plasticizer from the composition of Wang.
Applicant further argues that the claimed feature of wherein “the single low molecular weight metallocene-catalyzed polyolefin has a Heat of Crystallization in the range of about 20 J/g to about 30 J/g and a peak molecular weight between about 25,000 and 35,000 g/mol” is critical based on the experimental data (Examples 6 and 7) presented in the instant specification. Specifically, Applicant argues that the presence of Licocene PP 2402 as the low molecular weight metallocene catalyzed polyolefin provides unexpected toughness to the resulting hotmelt adhesive. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. (In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP 716.02(d)). In the instant case, Examples 6 and 7 using Licocene PP 2402 (Mp = 28,470 g/mol, Heat of Crystallization = 23.8 J/g) are not commensurate in scope with the broader claimed range of 25,000 to 35,000 g/mol and 20 to 30 J/g. Furthermore, “any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected” (see MPEP 716.02). In the instant case, even if, arguendo, the scope of the claim were commensurate with the experimental evidence, the alleged unexpected difference in toughness appears to one of degree rather than in kind and is achieved by components outside of the critical scope (e.g., Example 3).
Applicant’s arguments with regard to the limitation wherein “the first low molecular weight metallocene propylene-ethylene copolymer has a viscosity at 170 ˚C below 500 mPa*s,” are persuasive. Accordingly, the rejection of claim 5 is withdrawn. However, upon further consideration, a new grounds of rejection for claim 5 and 25 is made in view of Wang et al. (cited in the previous Office Action) in view of Bach et al. (US20070117907, hereinafter referred to as “Bach”).
Applicant’s amendments and arguments are considered fully responded to within the comments above and the rejections below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 24-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 24 recites the broad recitation a single low molecular weight metallocene-catalyzed polyolefin having a peak molecular weight below 130,000 g/mol, and the claim also recites “wherein the single low molecular weight metallocene-catalyzed polyolefin has…a peak molecular weight between 25,000 and 35,000 g/mol” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 25 recites the limitation "the first low molecular weight metallocene propylene-ethylene copolymer” in line 9. However, claim 25 previously recites a low molecular weight metallocene-catalyzed polyolefin. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 contains the trademark/trade name “Licocene PP 2404.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a polymeric component of the hot melt adhesive and, accordingly, the identification/description is indefinite. For examination purposes, Licocene PP 2404 is construed from the instant specification (Table 1 and Table 2) to be a metallocene catalyzed polyolefin having the properties: Mp = 28,470 g/mol, Heat of Crystallization = 23.8 J/g.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 recites the same range for a viscosity of the hot melt adhesive as is recited in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4, 7-8, 10-11, 15-18, 23, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US20190144719, hereinafter referred to as “Wang”) in view of Kauffman et al. (US 20200157385, hereinafter referred to as “Kauffman”).
As to Claim 1: Wang teaches a hot melt adhesive composition comprising:
a polymer blend based on:
a low molecular weight (LMW SSC-Cryst-PP) semicrystalline propylene-based polymer (Abstract and [0047]), which may be polymerized with a metallocene catalyst system ([0062]), having a weight average molecular weight (Mw) of 90,000 g/mol or less ([0030] and [0031]) (i.e., a low molecular weight metallocene-catalyzed polyolefin)
a high molecular weight (HMW SSC-Amorp-PP) propylene-based polymer (Abstract and [0047]) (i.e., a high molecular weight polyolefin), having an Mw above 100,000 g/mol ([0029]);
a tackifier resin ([0024])
It is noted that Wang discloses a weight average molecular weight (Mw) for the polymers which read on the claimed at least one low molecular weight metallocene-catalyzed polyolefin and at least one high molecular weight polyolefin, but is silent towards the peak molecular weight. However, Wang teaches that the distinct molecular weights of the LMW and HMW polymers have a trimodal molecular weight distribution ([0021]). Therefore, based on the ranges for Mw values taught by Wang, the peaks of the multimodal distribution (i.e., peak molecular weight) corresponding to the HMW and LMW peaks of Wang would overlap with the claimed ranges for peak molecular weight (see above). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for at least one low molecular weight metallocene-catalyzed polyolefin and at least one high molecular weight polyolefin within a hot melt adhesive composition having balance of properties (e.g., cohesive strength, heat stability, and broad application temperature range) ([0036]).
Wang teaches that the composition comprises a low molecular weight (LMW SSC-Cryst-PP) semicrystalline propylene-based polymer having a heat of crystallization of 30 J/g to about 80 J/g ([0031]), a high molecular weight (HMW SSC-Amorp-PP) propylene-based polymer having a heat of crystallization of 5 J/g to about 25 J/g ([0068]), which satisfy the claimed “substantially free of polyolefins having a heat of crystallization of less than 5 J/g. Wang also teaches that the composition may comprise a LMW SSC-Amorp-PP copolymer having a heat of crystallization of 0 to 30 J/g ([0030]), but contemplates exemplary embodiments wherein the melt enthalpy is 16 J/g, which is within the claimed range. Accordingly, Wang is construed to not require a polyolefin having a heat of crystallization below 5 J/g ([0176]). For the above, Wang teaches an enthalpy of melting which is construed to describe the same phase transition as the claimed “heat of crystallization,” that is, the phase transition from an amorphous state to a crystalline state.
Wang further teaches that the hot melt composition comprising the polymer blend has a viscosity ranging from 2,000 mPa*s to 15,000 mPa*s at 177 ˚C ([0040]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for viscosity a hot melt adhesive composition that improves application thereof e.g., via spray coating ([0040]).
Wang teaches that a plasticizer can be present in the composition ([0086]) and further teaches that the plasticizer is included to lower the viscosity of the overall adhesive composition ([0086]).
Kauffman teaches a polyolefin-based hot melt adhesive composition (Abstract) for disposable absorbent articles (e.g., diapers) ([0002]) wherein the composition may be optionally free of plasticizer ([0049]). Kauffman further teaches that exclusion of said plasticizer is desirable because known plasticizers within the art often contain volatile materials that are undesirable for end user applications (e.g., diapers) ([0014]). Wang and Kauffman are considered analogous art because they are directed towards the same field of endeavor, namely, polyolefin-based hot melt adhesives with properties amenable to disposable absorbent articles. It would have been obvious to a person having ordinary skill in the art to eliminate the plasticizer of Wang and the motivation would have been that Kauffman teaches that elimination of plasticizers from hotmelt adhesive compositions is known within the art to improve the same by decreasing the release of volatile materials derived from the plasticizer, which is undesirable in commercial applications such as disposable absorbent articles such as diapers ([0013]). Furthermore, the Examiner acknowledges that the plasticizer is required by the composition of Wang. However, Kauffman teaches that that the composition may optionally comprise a plasticizer in an amount up to 15% by weight ([0049]) while also contemplating the benefits of exclusion of said plasticizer. Wang contemplates that the plasticizer is included to modulate the viscosity of the overall adhesive composition ([0086]). While the Office recognizes that a person having ordinary skill in the art would reasonably predict removing a plasticizer from the composition of Wang would moderately increase the viscosity of the composition, the combined teachings of Wang and Kauffman would (1) indicate that plasticizer-free hot melt adhesive compositions are known within the art and exclusion of a plasticizer from the same does not render the composition unsatisfactory for its intended purpose and (2) motivate a person having ordinary skill in the art to consider the benefits of exclusion of a plasticizer component (i.e., lack of volatile compounds undesirable for consumer products) in contrast to a predictable increase in viscosity when excluding a plasticizer from the composition of Wang.
Wang does not explicitly teach a value for the crossover temperature of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. crossover temperature of the composition, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Wang teaches the composition of claim 1 (supra).
Wang further teaches that the low molecular weight semicrystalline propylene-based polymer may be a copolymer of propylene and ethylene ([0067]).
As to Claims 3 and 4: Wang teaches the composition of claim 1 (supra).
Wang further teaches that the composition comprises:
an LMW SSC-Amorp-PP polymer having an MW less than about 90,000 g/mol, which reads on the claimed first low molecular weight metallocene-catalyzed polyolefin, and wherein said LMW SSC-Amorp-PP has an enthalpy of melting (i.e., construed to describe the same phase transition as the claimed “heat of crystallization,” that is, the phase transition from an amorphous state to a crystalline state. It is noted that Wang also contemplates that the value is interchangeable with “heat of fusion” ([0031]).) below 30 J/g ([0030]), and
an LMW SSC-Cryst-PP having an MW less than about 90,000 g/mol, which reads on the claimed second low molecular weight metallocene-catalyzed polyolefin, and wherein said LMW SSC-Cryst-PP has an enthalpy of melting above 30 J/g ([0030]).
These ranges overlap with the claimed ranges. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for the heat of crystallization/enthalpy of melting of a first and second low molecular weight metallocene-catalyzed polyolefin in hot melt compositions having improved properties over hot melt compositions having only one of a semicrystalline (higher heat of crystallization/enthalpy of melting) or an amorphous (lower of crystallization/enthalpy of melting) polyolefin ([0018], [0019], [0022]).
As to Claim 7: Wang teaches the composition of claim 1 (supra).
Wang further teaches that the high molecular weight propylene-based polymer (HMW SSC-PP) may be polymerized with a metallocene catalyst system ([0062]).
As to Claims 8: Wang teaches the composition of claim 1 (supra).
Wang further teaches that the high molecular weight propylene-based polymer (HMW SSC-PP) (Abstract) (i.e., a high molecular weight polyolefin), having an Mw above 100,000 g/mol to about 1,000,000 g/mol ([0068]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for at least one high molecular weight polyolefin within a hot melt adhesive composition having balance of properties (e.g., cohesive strength, heat stability, and broad application temperature range) ([0036]).
As to Claims 10 and 11: Wang teaches the composition of claim 1 (supra).
Wang further teaches that the composition comprises the LMW SSC-Cryst-PP in an amount of 2.5 to 25 wt% of the composition and an LMW SSC-Amorp-PP polymer is present in an amount of 2 and 20 wt% ([0038]), the sum of the amounts of an LMW SSC-Amorp-PP and an LMW SSC-Cryst-PP overlap with the amounts for the claimed low molecular weight metallocene-catalyzed polyolefin(s), and wherein the HMW-Amorp-PP is present in an amount of 12 to 40 wt% of the composition ([0038]), which overlaps with the claimed range. Wang further teaches that the tackifier component may be present in an amount of 30 to 65 wt% ([0084]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for a blend of low molecular weight metallocene-catalyzed polyolefin, a high molecular weight polyolefin, and a tackifier within a hot melt adhesive composition having balance of properties (e.g., cohesive strength, heat stability, and application temperature range) ([0036]).
As to Claim 15: Wang teaches the composition of claim 1 (supra).
Wang further teaches that the hot melt composition comprising the polymer blend has a viscosity ranging from 2,000 mPa*s to 15,000 mPa*s at 177 ˚C ([0040]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for viscosity a hot melt adhesive composition that improves application thereof e.g., via spray coating ([0040]).
As to Claims 16 and 17: Wang teaches the composition of claim 1 (supra).
Wang does not explicitly teach a value for toughness of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., pg. 8, lines 1-8 of the instant specification). Therefore, the claimed effects and physical properties, i.e. toughness, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 18: Wang teaches the composition of claim 1 (supra).
Wang does not explicitly teach a value for at least one of a storage modulus or yield stress of the composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. at least one of a storage modulus and yield stress of the composition, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 23: Wang teaches the composition of claim 1 (supra).
Wang is silent towards the bio-based content of the composition.
However, the instant claim recites a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Wang teaches a hotmelt adhesive that reads on or renders obvious claimed hotmelt adhesive, and there is no evidence that the derivation (i.e., bio-based) of any of the components would materially affect the structure of the final product.
As to Claim 26: Wang teaches the composition of claim 1 (supra).
Wang does not explicitly teach wherein the composition comprises the trademark name “Licocene PP 2404.” However, as construed from the instant specification (Table 1 and Table 2), Licocene PP 2402 exhibits an Mp of 28,470 g/mol and a Heat of Crystallization of 23.8 J/g.
Wang further teaches that the composition comprises:
an LMW SSC-Amorp-PP polymer having an MW less than about 90,000 g/mol, and wherein said LMW SSC-Amorp-PP has an enthalpy of melting (i.e., construed to describe the same phase transition as the claimed “heat of crystallization,” that is, the phase transition from an amorphous state to a crystalline state. It is noted that Wang also contemplates that the value is interchangeable with “heat of fusion” ([0031])) below 30 J/g ([0030]), and
These ranges overlap with the values construed to be exhibited by the claimed trademark name. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for the heat of crystallization/enthalpy of melting of a metallocene-catalyzed polyolefin component in hot melt compositions having properties including wide coating temperature range, excellent adhesion to low surface energy plastic substrates, high cohesive strength, high shear resistance, high strand hold property, low viscosity, low melting point and superior heat stability ([0024]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US20190144719, hereinafter referred to as “Wang”) in view of Bach et al. (US20070117907, hereinafter referred to as “Bach”).
As to Claim 5: Wang and Kauffman teach the composition of claim 4 (supra).
Wang does not teach a viscosity value measured at 170 ˚C for the component which reads on the claimed first low molecular weight metallocene propylene-ethylene copolymer.
Bach teaches a related hot melt adhesive composition comprising one or more homopolymer and/or copolymer waxes comprising the monomers ethylene and/or propylene which may be blended with further polyolefins to form said hot melt adhesive ([0016]-[0018]). Bach further teaches that the melt viscosity, measured at a temperature of 170 ˚C for the one or more homopolymer and/or copolymer waxes comprising the monomers ethylene and/or propylene is in the range of 20 and 40,000 mPa*s ([0017]). Wang and Bach are considered analogous art because they are directed towards the same field of endeavor, namely, polyolefin-based hot melt adhesive compositions. The range for the viscosity measured at 170 ˚C overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range for the viscosity of the component of Wang which reads on the claimed first low molecular weight metallocene propylene-ethylene copolymer, and the motivation to have done so would have been, as Bach suggests, that the overlapping portion is a workable range for the viscosity of a propylene copolymer within a blend of propylene-based copolymers to form hot-melt adhesives having sufficiently low viscosity for easy handling/application. Accordingly, a person having ordinary skill in the art when starting from Wang would appreciate the broader range of workable viscosities taught by Bach to achieve a “low viscosity” adhesive, as sought by Wang (see [0024] of Wang).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US20190144719, hereinafter referred to as “Wang”) in view of Hu et al. (US Patent No. 11,306,226, hereinafter referred to as “Hu”).
As to Claim 6: Wang teaches the composition of claim 1 (supra).
Wang further teaches that the composition comprises an LMW SSC-Amorp-PP polymer having an MW less than about 90,000 g/mol, which overlaps with the claimed molecular weight, and wherein said LMW SSC-Amorp-PP has an enthalpy of melting (i.e., construed to describe the same phase transition as the claimed “heat of crystallization,” that is, the phase transition from an amorphous state to a crystalline state. It is noted that Wang also contemplates that the value is interchangeable with “heat of fusion” ([0031]).) below 30 J/g ([0030]). These ranges overlap with the claimed ranges. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for the heat of crystallization/enthalpy of melting of a first low molecular weight metallocene-catalyzed polyolefin in hot melt compositions having improved properties over hot melt compositions having only one of a semicrystalline (higher heat of crystallization/enthalpy of melting) or an amorphous (lower of crystallization/enthalpy of melting) polyolefin ([0018], [0019], [0022]).
Wang does not explicitly teach a composition comprising said LMW SSC-Amorp-PP as a “single low molecular weight metallocene-catalyzed polyolefin.”
Hu teaches a related olefin-based hot melt adhesive comprising a single copolymer component, and not a blend of different (co)polymers produced by metallocene catalysis polymerization, consisting of a polypropylene-co-polyethylene copolymer (Claim 1 of Hu) having a heat of fusion value of less than about 35 J/g (column 2, lines 3-11), which overlaps with the claimed range. Wang and Hu are considered analogous art because they are directed towards the same field of endeavor, namely, hot melt adhesive compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a single low molecular weight metallocene-catalyzed polyolefin, such as the LMW SSC-Amorp-PP of Wang, and the motivation would have been that Hu teaches that compositions comprising a single copolymer component, and not a blend of different (co)polymers produced by metallocene catalysis polymerization having an overlapping heat of crystallization/heat of fusion with the claimed range are known within the art for forming hot melt adhesive compositions having, inter alia, low application temperature hot melt adhesives having high green strength (column 1, lines 60-65), which is a property sought by the hot melt adhesive of Wang.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US20190144719, hereinafter referred to as “Wang”).
As to Claim 24: Wang teaches a hot melt adhesive composition comprising:
a polymer blend based on:
a low molecular weight (LMW SSC-Cryst-PP) semicrystalline propylene-based polymer (Abstract and [0047]), which may be polymerized with a metallocene catalyst system ([0062]), having a weight average molecular weight (Mw) of 90,000 g/mol or less ([0030] and [0031]) (i.e., a low molecular weight metallocene-catalyzed polyolefin)
a high molecular weight (HMW SSC-Amorp-PP) propylene-based polymer (Abstract and [0047]) (i.e., a high molecular weight polyolefin), having an Mw above 100,000 g/mol ([0029]);
a tackifier resin ([0024])
It is noted that Wang discloses a weight average molecular weight (Mw) for the polymers which read on the claimed at least one low molecular weight metallocene-catalyzed polyolefin and at least one high molecular weight polyolefin, but is silent towards the peak molecular weight. However, Wang teaches that the distinct molecular weights of the LMW and HMW polymers have a trimodal molecular weight distribution ([0021]). Therefore, based on the ranges for Mw values taught by Wang, the peaks of the multimodal distribution (i.e., peak molecular weight) corresponding to the HMW and LMW peaks of Wang would overlap with the claimed ranges for peak molecular weight (see above). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for at least one low molecular weight metallocene-catalyzed polyolefin and at least one high molecular weight polyolefin within a hot melt adhesive composition having balance of properties (e.g., cohesive strength, heat stability, and broad application temperature range) ([0036]).
Wang teaches that the composition comprises a low molecular weight (LMW SSC-Cryst-PP) semicrystalline propylene-based polymer having a heat of crystallization of 30 J/g to about 80 J/g ([0031]). Wang also teaches that the composition may comprise a LMW SSC-Amorp-PP copolymer having a heat of crystallization of 0 to 30 J/g ([0030]), but contemplates exemplary embodiments wherein the melt enthalpy is 16 J/g, which is within the claimed range. Accordingly, Wang is construed to not require a polyolefin having a heat of crystallization below 5 J/g ([0176]). For the above, Wang teaches an enthalpy of melting which is construed to describe the same phase transition as the claimed “heat of crystallization,” that is, the phase transition from an amorphous state to a crystalline state.
With regard to the limitation “a single low molecular weight metallocene-catalyzed polyolefin…” it is the position of the Office that the claim does not exclude the presence of additional components beyond said “a single low molecular weight metallocene-catalyzed polyolefin…” as the claim recites “a hot melt adhesive comprising…” which is construed to not further limit the claim to only those recited (see MPEP 2111.03 I.).
Claims 25 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US20190144719, hereinafter referred to as “Wang”) in view of Bach et al. (US20070117907, hereinafter referred to as “Bach”) and Kauffman et al. (US 20200157385, hereinafter referred to as “Kauffman”).
As to Claim 25: Wang teaches a hot melt adhesive composition comprising:
a polymer blend based on:
a low molecular weight (LMW SSC-Amorp-PP) propylene-based polymer (Abstract and [0047]), which may be polymerized with a metallocene catalyst system ([0062]), and which may be a propylene-ethylene copolymer ([0034]) having a weight average molecular weight (Mw) of 90,000 g/mol or less ([0030]-[0031]) (i.e., a low molecular weight metallocene-catalyzed polyolefin)
a high molecular weight (HMW SSC-Amorp-PP) propylene-based polymer (Abstract and [0047]) (i.e., a high molecular weight polyolefin), having an Mw above 100,000 g/mol ([0029]);
a tackifier resin ([0024])
It is noted that Wang discloses a weight average molecular weight (Mw) for the polymers which read on the claimed at least one low molecular weight metallocene-catalyzed polyolefin and at least one high molecular weight polyolefin, but is silent towards the peak molecular weight. However, Wang teaches that the distinct molecular weights of the LMW and HMW polymers have a trimodal molecular weight distribution ([0021]). Therefore, based on the ranges for Mw values taught by Wang, the peaks of the multimodal distribution (i.e., peak molecular weight) corresponding to the HMW and LMW peaks of Wang would overlap with the claimed ranges for peak molecular weight (see above). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Wang suggests, that the overlapping portion is a useable range for at least one low molecular weight metallocene-catalyzed polyolefin and at least one high molecular weight polyolefin within a hot melt adhesive composition having balance of properties (e.g., cohesive strength, heat stability, and broad application temperature range) ([0036]).
Wang teaches that a plasticizer can be present in the composition ([0086]) and further teaches that the plasticizer is included to lower the viscosity of the overall adhesive composition ([0086]).
Kauffman teaches a polyolefin-based hot melt adhesive composition (Abstract) for disposable absorbent articles (e.g., diapers) ([0002]) wherein the composition may be optionally free of plasticizer ([0049]). Kauffman further teaches that exclusion of said plasticizer is desirable because known plasticizers within the art often contain volatile materials that are undesirable for end user applications (e.g., diapers) ([0014]). Wang and Kauffman are considered analogous art because they are directed towards the same field of endeavor, namely, polyolefin-based hot melt adhesives with properties amenable to disposable absorbent articles. It would have been obvious to a person having ordinary skill in the art to eliminate the plasticizer of Wang and the motivation would have been that Kauffman teaches that elimination of plasticizers from hotmelt adhesive compositions is known within the art to improve the same by decreasing the release of volatile materials derived from the plasticizer, which is undesirable in commercial applications such as disposable absorbent articles such as diapers ([0013]). Furthermore, the Examiner acknowledges that the plasticizer is required by the composition of Wang. However, Kauffman teaches that that the composition may optionally comprise a plasticizer in an amount up to 15% by weight ([0049]) while also contemplating the benefits of exclusion of said plasticizer. Wang contemplates that the plasticizer is included to modulate the viscosity of the overall adhesive composition ([0086]). Therefore, the combined teachings of Wang and Kauffman would motivate a person having ordinary skill in the art to consider the benefits of exclusion of a plasticizer component (i.e., lack of volatile compounds undesirable for consumer products) in contrast to a predictable increase in viscosity when excluding a plasticizer from the composition of Wang.
Wang does not teach a viscosity value measured at 170 ˚C for the component which reads on the claimed first low molecular weight metallocene propylene-ethylene copolymer.
Bach teaches a related hot melt adhesive composition comprising one or more homopolymer and/or copolymer waxes comprising the monomers ethylene and/or propylene which may be blended with further polyolefins to form said hot melt adhesive ([0016]-[0018]). Bach further teaches that the melt viscosity, measured at a temperature of 170 ˚C for the one or more homopolymer and/or copolymer waxes comprising the monomers ethylene and/or propylene is in the range of 20 and 40,000 mPa*s ([0017]). Wang and Bach are considered analogous art because they are directed towards the same field of endeavor, namely, polyolefin-based hot melt adhesive compositions. The range for the viscosity measured at 170 ˚C overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range for the viscosity of the component of Wang which reads on the claimed first low molecular weight metallocene propylene-ethylene copolymer, and the motivation to have done so would have been, as Bach suggests, that the overlapping portion is a workable range for the viscosity of a propylene copolymer within a blend of propylene-based copolymers to form hot-melt adhesives having sufficiently low viscosity for easy handling/application. Accordingly, a person having ordinary skill in the art when starting from Wang would appreciate the broader range of workable viscosities taught by Bach to achieve a “low viscosity” adhesive, as sought by Wang (see [0024] of Wang).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-8, 10-11, 15-20, and 23-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. US 11,878,492. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and patent claim the same low molecular weight metallocene-catalyzed polymer having the same peak molecular weight range, the same high molecular weight polyolefin having the same peak molecular weight range, and a tackifier while the patent claims do not teach or require the limitations which are excluded by the instant claims. Furthermore, the instant application and the patent claim the same or substantially overlapping subject matter: peak molecular weight ranges (instant claims 1, 8, 24-26), monomer structure (instant claims 2 and 7; patent claims 2 and 6), heat of crystallization of a first and second low molecular weight metallocene polyolefin (instant claims 3, 4, 6, patent claims 1, 3, 4), selection of a single low molecular weight metallocene-catalyzed polyolefin having the same range for a heat of crystallization and peak molecular weight (instant claim 6; patent claim 5), compositional breakdown by weight (instant claim 10; patent claim 11), viscosity of the hot melt adhesive composition (instant claim 15, patent claim 14), properties of the composition (instant claims 16-18, patent claim 15).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
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