RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1 and 2, filed on 04 December 2025, have been entered in the above-identified application. Claims 7 and 10 have been cancelled by applicant. Claims 1-6, 8, 9, and 11-20 are pending.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 103 rejection of claims 1-6, 10, 11, and 13-20 as over Zmarsly (U.S. Pub. 2009/0181250) as evidenced by the Pentalyn H-E datasheet, made of record on page 4, paragraph 11 of the office action mailed 04 September 2025 has been withdrawn due to Applicant’s amendment in the response filed 04 December 2025. In particular, claims 1 and 2 have been amended to require a plasticizer resin component in an amount which is not specified in Zmarsly.
NEW AND REPEATED REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 8, 9, and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zmarsly (U.S. Pub. 2009/0181250) and WO 2016/156305 A1 as evidenced by the Pentalyn H-E datasheet available from Synthomer at https://www.synthomer.com/Media/tds/Pentalyn%20H-E%20Ester%20of%20Hydrogenated%20Rosin.pdf?revision=20220411 (hereinafter the Pentalyn H-E datasheet). Blazejewski (U.S. Pub. 2018/0079937) was relied upon as the English translation of WO ‘305.
Regarding claims 1 and 8, Zmarsly discloses a foamed pressure sensitive adhesive which comprises expanded microballoons, see title and abstract. Inventive example 7 described at p. 15, [0228] uses a formulation of 47.5 wt.% VECTOR 4113 which is a styrene-isoprene-styrene (SIS) block copolymer elastomer, see Table 1 at p. 9 for further description. SIS is a polyvinylaromatic-polydiene block copolymer. This reads on elastomer component (a) as claimed.
Example 7 also includes 47.5 wt. % of PENTALYN H-E which is a pentaerythritol ether of rosin, see Table 1 at p. 9. Zmarsly does not specify the ring and ball softening temperature of PENTALYN H-E, but the Pentalyn H-E datasheet teaches that this material has a ring and ball softening point of 101°C as measured by ASTM E-28. This reads on the tackifier resin component (b) as claimed.
As for component (c), Zmarsly teaches using a plasticizer, see claim 8.
Component (d) may be present in the amount of 0% and thus is optional and not required by the claim.
Example 7 of Zmarsly includes 5.0 wt. % of EXPANCEL 051 DU 40 expandable microballoons. This reads on component (e) as claimed, but is present in an amount larger than specified in the claim.
However, Zmarsly teaches more generally that the amount of microballoons present in the adhesive composition is from greater than 0% up to 30% by weight, preferably from 1.5 to 10% by weight, see p. 6, [0109]. Thus it would have been obvious to have used a lower amount of microballoons to formulate the adhesive composition. This overlaps the claimed amount of 0.3 to 2.5 wt. %. However, in accordance with MPEP §2123 a rejection is proper over a prior art reference’s broad disclosure instead of merely preferred embodiments or examples because patents are relevant as prior art for all information they contain. In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804 (Fed. Cir. 1989).
Zmarsly also teaches including a plasticizer and fillers, see claim 8. However, Zmarsly does not quantify the amount of such additional components.
Blazejewski discloses a foamed pressure-sensitive adhesive tape, see abstract and p. 3, [0053]. The adhesive composition which forms the adhesive layers of the tape preferably contains from 35-75 % by weight of vinyl aromatic block copolymers, 24.8-60% by weight of tackifying resins, and 0.2-10 % by weight of microballoons, see p. 5, [0125-0128]. The composition may also include from 0.2-10 % by weight of additives, see p. 5, [0120-0124]. Example 1 employs 48.6 wt. % of KRATON 1102 (a styrene-butadiene-styrene block copolymer), 46.4 wt % of DERCOLYTE A115 tackifier resin having a ring and ball softening temperature of 115 °C, 3.0 wt. % of WINGTACK 10 liquid hydrocarbon resin which is a plasticizing resin, 0.5 wt. % of aging inhibitor, specifically IRGANOX 1010 phenolic antioxidant (reading on further additives), and 1.5 wt. % of EXPANCEL 920 DU20 microballoons, see Table at p. 11, [0274] and [0275]. This composition anticipates the instant claim. Note that the weight of microballoons is based on the unexpanded weight, see p. 6, [0138]. The “DU” in EXPANCEL 920 DU20 means “dry unexpanded”, see p. 5-6, [0132].
The WINGTACK 10 liquid hydrocarbon plasticizing resin used in Blazejewski is the same material as described in the present specification, see Table 2 at p. 33-34. This component has a softening point of 10 °C which meets the claimed property in claim 8. This quantity of 3 wt. % is within the range specified for component (c).
It would have been obvious to have used WINGTACK 10 as the plasticizer in the adhesive composition of Zmarsly to arrive at the claimed composition, as Blazejewski uses this plasticizer resin in a similar service (a styrene-butadiene block copolymer based adhesive which is foamable using microballoons). There is a reasonable expectation of success as Zmarsly also teaches that suitable plasticizers may be included, see claim 8.
Regarding claim 2, Example 7 of Zmarsly, described in detail above, teaches an adhesive formulation that includes the claimed (a) elastomer component, (b) tackifier resin component, and (e) microballoons component. The amounts of elastomer component (47.5 wt. %) and tackifier component (47.5 wt. %) are each within the claimed ranges. The amount of microballoons (5 wt. %) is higher than the claimed range, but Zmarsly teaches more generally that the amount of microballoons present in the adhesive composition is from greater than 0% up to 30% by weight, preferably from 1.5 to 10% by weight, see p. 6, [0109].
The WINGTACK 10 liquid hydrocarbon plasticizing resin used in Blazejewski is present in a quantity of 3 wt. % which is within the range specified for component (c). see Table at p. 11, [0274] and [0275].
Zmarsly further teaches foaming this composition and forming a single-sided SIS adhesive tape with properties noted at Table 16 on p. 15. The density of this foamed adhesive is 420 kg/m3, which is outside the claimed range of 650 to 870 kg/m3.
However, the density of the foamed adhesive depends closely upon the amount of microballoons present in the adhesive formation. On page 17, Table 19 describes an acrylate composition containing 0%, 5%, and 8 wt. % of microballoons. The density of the composition is 1020 kg/m3 when 0% microballoons are present, and drops to 530 kg/m3 when 5% microballoons are present in the foamed composition and drops further to 370 kg/m3 when 8 wt. % microballoons are present in the foamed composition. Table 20 has a different acrylic composition with a similar reduction in bulk density as the quantity of microballoons is increased. Thus, the density of the foamed adhesive composition is a result-effective variable strongly dependent on the amount of microballoons present in the composition and weakly dependent on the base resin composition.
Zmarsly teaches using an amount of microballoons of from 0-30% by weight, preferably 1.5 to 10% by weight. See p. 6, [0109]. Using a lesser amount of microballoons in the adhesive composition will result in a higher density compared to the formulations that include 5 wt. % of microballoons. While the exact relation between quantity of microballoons and resulting density is not disclosed, it is clear that using less than 5 wt. % of microballoons will result in a density higher than the 420 kg/m3 amount disclosed in Table 16. It would thus have been obvious to have formulated the adhesive composition of Zmarsly to include a lower amount of microballoons than the amount used in Example 7 and result in a correspondingly higher density than that achieved in Example 7. Such a density is expected to be within the claimed range of 650 to 870 kg/m3 at some amount of microballoons within the preferred disclosed range of 1.5 wt. % to 10 wt. %.
Regarding claims 3 and 15, Example 7 of Zmarsly uses 47.5 wt.% of the elastomer component.
Regarding claims 4 and 16 and 17, Example 7 of Zmarsly uses 47.5 wt.% of the tackifier resin component.
Regarding claims 5, 6, and 18-20, Example 7 includes 47.5 wt. % of PENTALYN H-E which is a pentaerythritol ether of rosin, see Table 1 at p. 9. Zmarsly does not specify the ring and ball softening temperature of PENTALYN H-E, but the Pentalyn H-E datasheet teaches that this material has a ring and ball softening point of 101°C as measured by ASTM E-28. This reads on the tackifier resin component (b) as claimed. However, in this example, PENTALYN H-E is the only tackifier resin used. Zmarsly also teaches that blends of tackifier resin can be used in the formulation, see p. 7, [0132] but does not quantify such blends. Other specific resins described in Zmarsly include DERCOLYTE A115, see Table 1 on p. 9.
Using a combination of both PENTALYN H-E and DERCOLYTE A115 in equal amounts (50 wt. % of each) arrives at a blend of tackifiers meeting the compositional requirements of each of claims 5, 6, and 18-20.
Applicant’s specification provides evidence that DERCOLYTE A115 has a softening point of 115 °C and a DACP of 35 °C. See Table 2 at p. 33 of the originally filed specification.
Regarding claim 9, Zmarsly teaches that fillers such as calcium carbonate or zinc oxide may be added to the composition, see claim 8, but does not quantify such fillers.
Blazejewski teaches that the composition may also include from 0.2-10 % by weight of additives, see p. 5, [0120-0124]. Zinc oxide is one of the suitable additives, see p. 5, [0110].
Regarding claim 11, Zmarsly teaches forming double-sided adhesive tapes, see p. 2, [0017] and p. 6, [0118] and [0122].
Regarding claim 12, Blazejewski teaches that the adhesive strip can be removed by extensive stretching in the direction of the bond plane, see p. 1, [0002] and p. 3, [0051] and p. 6, [0152].
As Blazejewski teaches a similar adhesive tape construction, it would have been obvious to also remove the adhesive of Zmarsly by stretching in the direction of the bond plane.
Regarding claims 13 and 14, Page 8, [0161] of Zmarsly describes a process by which two substrates are bonded using the double-sided tape and the resulting structure.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 04 December 2025 regarding the combination of Blazejewski ‘305 and Zmarsly ‘250 have been carefully considered but are deemed unpersuasive.
Applicant argues that Blazejewski and Zmarsly address fundamentally different and conflicting technical problems, and the claimed invention and Zmarsly provide a high-performance permanent bonding solution with excellent shock resistance for electronic components while Blazejewski creates a strippable adhesive tape that can be easily removed by stretching. Applicant thus argues that one having ordinary skill in the art would not have reason, rationale, or motivation to incorporate teachings from a temporary, easily-removable adhesive (Blazejewski) into a formulation for a permanent, high-shock-resistance bond (Zmarsly). See p. 7-8 of the remarks.
The Examiner is not persuaded. Zmarsly already teaches including a plasticizer resin in its formulation, see claim 8, but is silent as to the specific quantity of such resin. Blazejewski teaches a similar adhesive formulation which, though used for a different purpose, also is a styrene-butadiene block copolymer based adhesive which is foamable using microballoons. As Zmarsly already teaches including a plasticizer component, the inclusion of a plasticizer known from Blazejewski to be compatible with a styrene-butadiene block copolymer adhesive would be an obvious choice of a suitable plasticizer and amount to include.
Applicant further argues that the density ranges incorporated into claim 2 are not met by Zmarsly and traverses the Examiner’s statement that density is a result-effective variable. Applicant points out that Zmarsly teaches adhesives with a density as low as 137 kg/m3 and that low density is a disclosed benefit of cost reduction, see paragraph [0103].
The Examiner is not persuaded. Zmarsly teaches using from 0-30% by weight of microballoons, and preferably from 1.5 to 10 wt. %, see p. 6, [0109]. Thus Zmarsly does not simply wish to arrive at an adhesive with minimum density, and instead contemplates a suitable range of microballoons which can be used to obtain an adhesive with the desired combination of properties of which density is such a property. Other such properties include conformability to uneven substrates, compression/hardness behavior, and compression capacity, see p. 5, [0106]. The Examiner maintains that the density of the resulting adhesive is a result effective variable of the amount of microballoons used in the formulation.
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bieber (U.S. Pub. 2019/0211233) also teaches a pressure-sensitive adhesive with a rubbery elastomer, a hydrocarbon tackifier, and a polymeric plasticizer resin which preferably also includes expandable microspheres.
Conclusion
All claims are rejected.
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 extension fee 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.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759