DETAILED ACTION
This is an Office action based on application number 17/753,577 filed 8 March 2022, which is a national stage entry of PCT/US2020/050842 filed 15 September 2020, which claims priority to US Provisional Application No. 62/900,710 filed 16 September 2019. Claims 1-9 are pending. Claim 10 is canceled.
Amendments to the claims, filed 26 August 2025, 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 .
Claim Rejections - 35 USC § 112
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, as amended, recites the limitation “no acrylic polymer migration occurs between layer Lb and layer Lc” in line 18. There is insufficient support for the entirety of the scope of the limitation in the original disclosure. Applicant’s original disclosure provides support for a composition and structure that prevents migration of a tackifier (paragraph [0003]) and an acrylic polymer (POLc2) that is contemplated to function as a tackifier in layer (Lc), wherein the acrylic polymer (POLc2) resists migration from layer (Lc) to layer (Lb). There is no support for the entirety of the scope because the original disclosure does not teach or suggest that there is no migration of any/all acrylic polymers between both layers.
Claims 2-9 do not remedy the deficiency of the parent claim and are rejected under the same rationale.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith, Jr. et al. (US Patent Application Publication No. US 2016/0009957 A1) (Griffith) in view of Wieneke et al. (US Patent Application Publication No. US 2016/0096980 A1) (Wieneke).
Regarding instant claims 1 and 3:
Griffith discloses a pressure sensitive adhesive article comprising:
a substate (Sa);
in contact with said substrate (Sa), a layer (Lb) of a composition (Cb) that comprises one or more acrylic polymers (POLb) having a Tg of -10°C or lower; and
in contact with said layer (Lb), a layer (Lc) of a composition (Cc) that comprises one or more acrylic polymer (POLc) that comprises 20% to 90% polymerized units of one or more high-aliphatic vinyl monomer, by weight based on the weight of polymer (POLc) (Claim 1).
Griffith further discloses that the amount of polymer (POLb) in composition (Cb), by weight based on the dry weight basis of composition (Cb), is 95% or more (paragraph [0039]). Therefore, there exists an embodiment encompassed by the scope of Griffith wherein the composition (Cb) is composed of 100% by weight one or more acrylic polymers (POLb) having a Tg of -10°C or lower (i.e., a composition (Cb) consisting of one or more acrylic polymers having a Tg of -10°C or lower).
Griffith further discloses that the polymer (POLc) has a Tg of 0°C or lower (paragraph [0044]).
Griffith further discloses that the POLb contains polymerized monomers inclusive of isooctyl acrylate, wherein the term “isooctyl” includes all branched isomers of 8-carbon alkyl groups and all mixtures of isomers, including, for example, the 2-ethylhexyl group (paragraph [0035]).
Griffith further discloses that the POLc is an acrylic polymer that contains 2-ethylhexyl acrylate (paragraphs [0042-0043]).
Therefore, Griffith encompasses an embodiment wherein POLb is the same as POLc (which correlates to the claimed POLc1).
Griffith further discloses that the composition (Cc) has an elastic modulus of 20 kPa or higher and 500 KPa or lower over a temperature range of 10° C to 40° C (paragraph [0047), which overlaps the claimed range; 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.
A layer (Lc) composed of said composition (Cc) is construed to have the same elastic modulus.
Griffith further discloses that the amount of all tackifiers in composition (Cc) is preferably less than 10% and more preferably zero (paragraph [0046]); therefore, Griffith encompasses an embodiment wherein layer Lc contains no tackifier that is not an acrylic polymer.
Griffith does not explicitly disclose an amount of acrylic polymer (POLc2) present in the layer (Lc).
However, Wieneke discloses a multilayer pressure sensitive adhesive assembly comprising a first pressure sensitive adhesive polymer layer composed of a liquid precursor comprising:
60 parts by weight or greater of a low Tg (meth)acrylate copolymer (i.e., a Tg of less than 20°C); and
up to 40 parts by weight of a high Tg (meth)acrylate copolymer (i.e., one having a Tg of above 50°C) having a weight average molecular weight of above 20,000 Daltons (Claim 1; paragraphs [0104; 0111]).
Wieneke further discloses that the high Tg (meth)acrylate copolymer comprise up to 100 parts by weight of high Tg (meth)acrylic ester monomer units; 0 to 15 parts by weight of acid functional ethylenically unsaturated monomer units; and 0 to 5 parts by weight of vinyl monomer units (paragraphs [0172-0177]).
Wieneke further discloses that high Tg (meth)acrylic ester monomer units are selected from the group inclusive of those alkyl groups having between 1 and 20 carbon atoms (paragraph [0179]).
Wieneke further discloses that said acid functional ethylenically unsaturated monomers are inclusive of acrylic acid and methacrylic acid (paragraph [0127]).
Said amounts are construed to overlap or include the ranges recited by claim 3; 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.
As to the difference between the weight average molecular weight disclosed by Wieneke and the number average molecular weight recited by the claims:
Wienke teaches that those high Tg (co)polymers having a low molecular weight are not sufficient to exhibit phase-separating effects that yield satisfactory adhesion performances at elevated temperatures (paragraph [0219]).
Since the instant specification is silent to unexpected results, the specific molecular weight of the high Tg component is not considered to confer patentability to the claims. As the adhesion performance at elevated temperature is a variable that can be modified, among others, by adjusting the molecular weight of the high Tg component, 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 molecular weight of the high Tg component in Wieneke to obtain the desired adhesion performance at elevated temperatures (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).
Wieneke teaches that the combination of low Tg and high Tg (meth)acrylate (co)polymer yields microphase-separated pressure sensitive adhesives after curing or drying, wherein the microphase separation provides substantial improvement in both peel adhesion and shear-holding capability on challenging-to-bond substrates when compared to compositions having a homogenous structure (paragraphs [0218-0219]).
Before the effective filing date of the claimed invention, it would have been obvious to combine the high Tg (meth)acrylate copolymer of Wieneke with the polymer (POLc) to form the layer (Lc) of Griffith. The motivation for doing so would have been that the combination of low Tg and high Tg (meth)acrylate copolymers provides substantial improvement in both peel adhesion and shear-holding capability on challenging-to-bond substrates when compared to compositions having a homogenous structure.
As to the claimed “no acrylic polymer migration between layer Lb and layer Lc”:
The prior art references are silent with respect to an amount of polymer migration between the layers. Furthermore, the scope of the prior art combination encompasses an embodiment that is substantial identical to Applicant’s claimed invention, and one of ordinary skill in the art would expect such an encompassed embodiment to have the same properties (i.e., an adhesive article wherein acrylic polymer migration does not occur between layer Lb and layer Lc). 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Therefore, it would have been obvious to combine Wieneke with Griffith to obtain the invention as specified by the instant claims.
Regarding instant claim 2:
Wieneke further discloses that the curable liquid is prepared by emulsion polymerization with aqueous and oil phases (paragraph [0129]).
Wieneke further discloses that a chain transfer agent may be added to the monomer mixture is an amount of 0.5 parts by weight to 3 parts by weight based upon 100 parts by weight of the total monomer mixture (paragraph [0191]).
Regarding instant claims 4 and 5:
Griffith discloses that the layer composition (Cb) is applied to substrate (Sa) using an aqueous composition (Cbl) that contains particles of polymer (POLb) dispersed in an aqueous medium; further, Griffith discloses that the composition (Cbl) is formed by aqueous emulsion polymerization to form a latex of particles of polymer (POLb) (paragraph [0053]).
Griffith further discloses that the layer (Lc) of composition (Cc) is applied to the layer of composition (Cb) using an aqueous composition (Ccl) that contains particles of polymer (POLc) dispersed in an aqueous medium (paragraph [0056]). In the prior art combination of Griffith in view of Wieneke, said aqueous composition (Ccl) would necessarily contain particles of the high Tg acrylic (co)polymer that meet the claimed (POLc2).
Griffith further discloses that the layer (Lbl) of aqueous composition (Cbl) is applied to substrate (Sa), and, while the layer (Lbl) of aqueous composition (Cbl) is still wet, a layer (Lcl) of aqueous composition (Ccl) is applied on top of the layer (Lbl) of aqueous composition (Cbl), and then the entire ensemble is dried (paragraph [0059]).
Regarding instant claim 6:
Griffith further discloses a bonded article made by a process of contacting a substrate (Sd) with the layer (Lc) of the pressure sensitive adhesive article (Claim 4).
Regarding instant claim 7:
Griffith further discloses that the substrate (Sd) is a polyolefin (paragraph [0061]).
Regarding instant claim 8:
However, Wieneke discloses a multilayer pressure sensitive adhesive assembly comprising a first pressure sensitive adhesive polymer layer composed of a liquid precursor comprising:
60 parts by weight or greater of a low Tg (meth)acrylate copolymer (i.e., a Tg of less than 20°C); and
40 parts by weight of a high Tg (meth)acrylate copolymer (i.e., one having a Tg of above 50°C) having a weight average molecular weight of above 20,000 Daltons (Claim 1; paragraphs [0104; 0111]).
Wieneke further discloses that the high Tg (meth)acrylate copolymer comprise up to 100 parts by weight of high Tg (meth)acrylic ester monomer units; 0 to 15 parts by weight of acid functional ethylenically unsaturated monomer units; and 0 to 5 parts by weight of vinyl monomer units (paragraphs [0172-0177]).
Wieneke further discloses that the high Tg (meth)acrylic ester monomer units are inclusive of n-butyl (meth)acrylate) (paragraph [0179]).
Wieneke further discloses that said acid functional ethylenically unsaturated monomers are inclusive of methacrylic acid (paragraph [0127]).
Therefore, Wienke encompasses an embodiment wherein the high Tg (meth)acrylate copolymer (which corresponds to the claimed POLc2) consists of n-butyl methacrylate and methacrylic acid.
The amounts disclosed by Wieneke is construed to overlap/include the ranges recited by the claims; 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 claim 9:
Griffith further discloses that the POLc is an acrylic polymer that contains 2-ethylhexyl acrylate (paragraphs [0042-0043]). Griffith further discloses that the term “isooctyl” includes all branched isomers of 8-carbon alkyl groups and all mixtures of isomers, including, for example, the 2-ethylhexyl group (paragraph [0035]). Therefore, the 2-ethylhexyl acrylate of Griffith meets the claimed isooctyl acrylate.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant broadly argues that the claims are novel and nonobvious because no combination of Griffith and/or Wieneke discloses or suggests the claimed pressure sensitive adhesive (PSA) article. Applicant argues that Griffith fails to disclose or suggest a layer LC containing POLc2 in addition to POLc1, and Applicant contends that Wieneke fails to fulfill the deficiencies of Griffith. Specifically, Applicant contends that the result of Wieneke’s curing procedure is to produce a pressure sensitive adhesive assembly with chemical bonds between the two superimposed layer; further, Applicant cites paragraph [0084] of Wieneke, reproduced, in part below:
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Applicant contends that the hypothetical Wieneke/Griffith would yield a PSA assembly with chemical bonds between the layers, the chemical bonds resulting a monomer diffusion between the layers. In stark contrast, Applicant’s PSA article has no acrylic polymer migration between layer (Lb) and (Lc).
Applicant’s argument is unpersuasive. First, the diffusion disclosed by Wieneke is a monomer diffusion between the layers prior to curing. A monomer diffusion prior to curing is not considered to be a polymer diffusion between two cured layers.
Further, even if a monomer diffusion between two uncured layers is the same as, or would result in polymer diffusion, Wieneke discloses that diffusion “may” occur. One of ordinary skill in the art that such diffusion, even if preferred, may also not occur and still produce a structure that is encompassed by the scope of Wieneke.
Further, as discussed above, the limitation “no acrylic polymer migration occurs between layer Lb and layer Lc” is a new matter limitation because the entirety of the scope is not fully supported by Applicant’s original disclosure.
Applicant further traverses the rejection of claim 4 by stating that Griffith has no disclosure or suggestion for forming an aqueous composition Qc with POLc2.
Applicant’s argument is unpersuasive because claim 4 is rejected by a combination of Griffith in view of Wieneke.
Griffith further discloses that the layer (Lc) of composition (Cc) is applied to the layer of composition (Cb) using an aqueous composition (Ccl) that contains particles of polymer (POLc) dispersed in an aqueous medium (paragraph [0056]). In the prior art combination of Griffith in view of Wieneke, said aqueous composition (Ccl) would necessarily contain particles of the high Tg acrylic (co)polymer that meet the claimed (POLc2).
Applicant further argues that the claimed PSA article does indeed exhibit unexpected results. Applicant supports such an allegation by relying on the Examples set forth in their original disclosure.
Applicant’s argument is unpersuasive. 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, Applicant provides only one example within the claimed scope and three comparative examples outside the scope. The one example is much narrower in scope than that of the claims (e.g., specific acrylic polymers in specific amounts). It is not readily apparent to one of ordinary skill in the art that the alleged unexpected results would be exhibited by every embodiment encompassed by the scope of the claimed invention. Further, it is not readily apparent that one of ordinary skill in the art would conclude that the one inventive example is representative of the entire claimed scope.
Conclusion
Applicant's amendment necessitated the new/amended 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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
/TAM/Examiner, Art Unit 1788 09/25/2025