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 .
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.
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.
Claim 7 is 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.
Claim 7 depends from Claim 3 which is no canceled rendering the claim indefinite.
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.
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 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Clapper (U.S. 9,102,774) in view of Silver (U.S. 3,691,140), Baker (U.S. 4,166,152) and Delgado (U.S. 5,045,569).
Clapper teaches pressure sensitive adhesives made with a structural isomer of secondary alkyl (meth)acrylates matching the formula of instant Claim 1. Octyl (meth)acrylate is exemplified along with (dodecyl – C11) acrylate. (See Examples) These read over the mixture of isomers of Formula 1 of Claim 1 as octyl (C8) and dodecyl (C11) read over the R1 + R2 = 7-18 limitation and the Schemes of Column 9, for instance, make clear these are linear, aliphatic saturated alkyl groups as claimed.
Clapper is silent on the stabilizer as claimed in the pre-adhesive polymerizable mixture as claimed. The UV stabilizers of Clapper are taught to be used in the resulting adhesive compositions and not the polymerizable mixture.
However, Clapper teaches in Column 16 lines 65 through to Column 17 lines 5 the polymers can be made via solution polymerization according to Silver (U.S. 3,691,140), Baker (U.S. 4,166,152) and Delgado (U.S. 5,045,569).
All of these references exemplify making microspheres using solution polymerization techniques in which stabilizers (or emulsifiers) are used. For instance, Silver uses 1 g of ammonium lauryl sulfate (and discusses anionic emulsifiers in Column 4 lines 1-35. Baker exemplifies 1 wt% of emulsifier/stabilizer in Table 1 and discloses similar critical micelle concentrations along with similar emulsifiers/stabilizers/surfactants to Silver and Delgado in Column 2 lines 5-20. Delgado has a substantially similar discussion of emulsifiers / stabilizers to Silver in Column 6 lines 1 – 40 and teaches the same critical micelle concentration of Silver and Baker.
Delgado teaches ammonium lauryl sulfate is Standapol A in Column 10 lines 35-45.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Clapper such that the polymerization techniques of Silver, Baker and/or Delgado were used to produce microsphere adhesives because Clapper suggest these polymerization techniques be used. This would have led one of ordinary skill in the art to add an emulsifier/stabilizer/surfactant to the polymerizable mixture because Silver, Baker and Delgado all teach this is added to the polymerizable mixture to arrive at the microspheres as discussed above. One of ordinary skill in the art would have been motivated to choose ammonium lauryl sulfate in the above modification for this purpose because Silver and Delgado both exemplify it and, further, would choose to use 1 wt% of the ammonium lauryl sulfate in the polymerizable mixture because Silver exemplifies it specifically (although the wt% can also be calculated in Delgado).
This reads over the stabilizer of Claim 1, the stabilizer as surfactant in Claim 2, and 1 wt% stabilizer motivated above reads over the amount of stabilizer of Claim 6.
Water is used in the polymerizable mixture of Silver, Baker and Delgado, for instance. See Example 1 of Delgado. In Example 1 450 g of water is used in a total system weight of 602.04 which is ~ 74 wt% water which reads over the range of water in Claim 6.
High Tg monomers of at least 25 oC in 10 to 20 parts per 100 parts of the structural isomer monomer (or substantially similar to 10 to 20 wt% ) are taught by Clapper in Column 14 lines 5-55. Clapper also teaches the amount of the High Tg monomer can be up to 50 parts per 100 of the additional C1-C32 (meth)acrylate monomer which itself is preferably up to 5 to 45 parts of the monomer mixture.
Clapper does not teach a ratio of the isomer mixture monomers to the high Tg monomer as recited by Claim 1.
To establish how Clapper’s teach present an overlapping range of amounts of isomer mixture monomer to High Tg monomer, one of ordinary skill in the art is reasonably suggested to consider a monomer mixture in which the limits above are present. In other words a monomer mixture in which 55 parts of isomer monomers are present and 45 parts of C1-C32 (meth)acrylate monomers are present which in turn up to 50 parts of these C1-C32 (meth)acrylate monomers are the High Tg monomer. In other words, a monomer mixture of 55 (isomer), 22.5 parts of C1-C32 and 22.5 parts of High Tg monomers for a total of 100 parts of monomer mixture.
This results in ratio according to the claimed ratio of 55/22.5 = 2.4 :1 and wt% of High Tg monomer of 22.5 wt% (as all the monomers total to 100).
Considering the least amount of preferred High Tg monomer of 10 parts, the ratio is then 45:10 = 4.5:1 and 10 wt% of the monomer mixture is the high Tg monomer.
Finally, considering low amounts of High Tg monomer, still in the range taught by Clapper, of 1 part of High Tg monomer the ratio would be 45:1 and the amount of High Tg monomer in the monomer mixture is 1 wt%.
Considering the other end of the preferred spectrum with 5 parts of C1-C32 and 95 parts of isomer mixture monomer, the monomer mixture is 95 parts isomer mixture, 2.5 parts C1-C32-, and 2.5 parts of High Tg monomer.
The ratio in this case is 95:2.5 = 47.5:1 and the weight percent of the monomer mixture is 2.5 wt%
Therefore, the above analysis demonstrate how the teachings already present in Clapper reasonably suggest an overlapping range of ratios recited by Claim 1, one such range is 2.4-45:1 and wt% recited by Claim 7, one such range is 1-22.5 wt%.
Oil soluble initiators are taught in Column 17 lines 1-30 including using up to 1 parts by weight in the mixture (equivalent to wt%) which reads over Claim 4, Claim 5 and Claim 8.
As §103 rejections are made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
In the instant case, Applicant’s as filed specification contains examples in which adhesives made with and without the structural isomer mixture of Claim 1 are compared. There are no inventive or comparative examples comparing the effect of using a stabilizer or not. As Clapper already uses a structural isomer mixture of Formula 1 in making adhesives, Applicant has not provided any evidence that fairly compares to the prior art as required above.
Response to Arguments
Applicant’s claim amendments and remarks filed October 3, 2025 have been fully considered but are not persuasive in moving the case to allowance. The grounds of rejection based on Clapper have been modified to address the never previously presented limitation of monomer ratios now in Claim 1 which also necessitated reconsideration of the rejection of Claim 7 as it also recites limitations which involve the mass ratio recited. The §112 2nd rejection of record is necessitated by the improper dependency of Claim 7 which depends on now canceled Claim 3.
For clarity of the record, support for the ratio limitation newly presented lies in Applicant’s as-filed specification page 7 lines 15-25.
Applicant’s remarks filed October 3, 2025 have been fully considered but are not persuasive. Applicant submits no substantive remarks to the newly added limitation other than the art applied is overcome with it. For the reasons put for in the rejection of record, Clapper, Silver, Baker and Delgado still read over the claimed subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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, Randy Gulakowski can be reached on (571) 272-1302. 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.
/Christopher M Rodd/ Primary Examiner, Art Unit 1766