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 .
Withdrawn Rejection
The objections to the claims 2-14, 16-22 and 25-27, made of record in the office action mailed 05/08/2025, page 2 have been withdrawn due to Applicant’s amendment in the response filed on 10/08/2025.
The 35 U.S.C. §112 rejection of claims 5, 7-14, 16-18, 20, 22 and 25-27 mailed 05/08/2025, page 2 have been withdrawn due to Applicant’s amendment in the response filed on 10/08/2025.
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.
Claim(s) 1-7, 12-14, 18-22 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548).
Regarding claims 1-4, 12-14, 18-22 and 25 Taguchi discloses adhesive compound composition comprising a olefin-based block copolymer elastomer (A), an ethylene-vinyl acetate copolymer having a vinyl acetate content of 25 to 80 wt% (B) [would intrinsically have the claimed melting point] and a tackifier (C), a laminated film formed by laminating a laminating layer made of a thermoplastic resin (D) and a heat-sealing layer made of a thermoplastic resin (E) via an intermediate layer made of said adhesive compound composition, and a container enclosure material comprising said laminated film (abstract). The substrate layer comprising such thermoplastic resin film may be either non-oriented film or oriented film, or extruded, extrusion-laminated or dry-laminated laminates of not less than one type of material. Out of these substrate layers, biaxially-oriented film made of polypropylene, polyethylene terephthalate, polyamide, etc. is preferable because of its excellent transparency and stiffness (page 5-6). The polymers used in the examples and relative examples are as follows: (1) Olefin-based block copolymer elastomer (A): (1-1) Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657 (page 9). Taguchi disclose the use of 40% styrenic copolymer elastomer (see example 1). Taguchi discloses Ethylene-vinyl acetate copolymer (B) of the present invention has MFR (melt flow rate as defined in ASTM D-1238 under a load of 2160 g at the temperature of 190.sup.2C) which is not particularly specified but normally ranges from 0.5 to 20 g/10 minute (page 4). Specific examples of tackifier (C) include coumarone resins such as coumarone indene resin; phenolic resins such as phenol formaldehyde resin and xylene formaldehyde resin; terpene-based resins such as terpene phenol resin, terpene resin ( a , β -pinene resin), aromatic modified terpene resin and terpene hydride resin; petroleum hydrocarbon resins such as synthetic polyterpene resin, aromatic hydrocarbon resin, aliphatic hydrocarbon resin (page 4). The tackifying resin has a softening point of 70C or higher (page 5). The adhesive compound composition obtained by mixing uniformly 40 wt% of SEBS, 40 wt% of 40% EVA, 20 wt% of terpene resin(the total parts by weight of SEBS, 40% EVA and terpene is equal to 100 parts by weight) (see example 1, page 9). The thickness of the substrate layer is 9-100 microns (page 7).
The only deficiency of Taguchi is that Taguchi disclose the use of 40% EVA (see example 1), while the present claims require 35% EVA
It is apparent, however, that the instantly claimed amount of EVA and that taught by Taguchi are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of EVA disclosed by Taguchi and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of EVA, it therefore would have been obvious to one of ordinary skill in the art that the amount of EVA disclosed in the present claims is but an obvious variant of the amounts disclosed in Taguchi, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 3, Taguchi discloses out of these substrate layers, biaxially-oriented film made of polypropylene, polyethylene terephthalate, polyamide, etc. is preferable because of its excellent transparency and stiffness (page 5-6).
Regarding claim 4, Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657. As Taguchi discloses elastomer identical to the one used by the Applicant in their invention would intrinsically meet the claim limitation as KRATON G1657 is styrenic linear block copolymer consisting of polystyrene blocks and rubber blocks. (see page 9).
Regarding claims 5-7, Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657 (see page 9), where KRATON G1657 discloses styrenic content of 13% (https://sds.kraton.com/product-sds/shared-files/94748/KratonG1657M.pdf).
Alternatively, with respect to 50% of styrenic component of claim 5, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claims 26-27, As Taguchi discloses heat-sealable composite film as presently claimed, it therefore would be obvious that heat-sealable film would intrinsically exhibit a heat-seal strength in range of 600 g/25.4mm to 1500 g/25.4 mm and exhibit a clarity of atleast 70%.
Claim(s) 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548), further evidence by Sugimoto et al. (WO 2012/077373).
Regarding claims 8-11, Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657, where KRATON G1657 has MW of 200,000 as disclosed in Sugimoto (page 12).
As Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657, identical to the one used by the Applicant in their invention, it therefore would be obvious that styrenic linear block copolymer would intrinsically have the claimed tensile strength, solution viscosity and glass transition temperature.
Claim(s) 16-17 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548) as applied to claim 1, further in view of Shibayama et al. (WO 2015-025899).
Regarding claims 16, 33 Taguchi discloses the use of ethylene vinyl acetate copolymer, but fails to disclose the layer comprising a blend of EVA-1 and EVA-2 in claimed vinyl acetate and melt index as claimed.
Whereas, Shibayama discloses film comprises a mixture layer that contains EVA copolymer having a content of a constituent unit derived from vinyl acetate of 14% by mass or more and a melt flow rate (MFR in accordance with JIS K7210-1999, at 190°C under a load of 2,160 g, the same shall apply hereafter) of from 11 g/10 min to 300 g/10 min (inclusive) [abstract]. The ethylene / vinyl acetate copolymer can be used alone or in combination of two or more different copolymerization ratios (page 3).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include EVA-1 having a vinyl content of 20% and MFR of 11 g/10 min and EVA-2 having a vinyl content of 11 wt% and MFR of 100 g/10 min as taught by Shibayama in the layer comprising elastomer, tackifier of Taguchi motivated by the desire to have balance of mechanical properties and processability and better tensile strength and improved impact resistance.
Regarding claim 17, with respect to the weight ratio of EVA-2/EVA-1, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claim(s) 32 is rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548) as applied to claim 1, further in view of Yamamoto et al. (JP 2019-218417).
Regarding claim 32, Taguchi fails to disclose that the hydrogenated styrenic copolymers are selected from triblock copolymers containing styrene blocks and rubber blocks consisting of ethylene and butylene repeating units.
Whereas, Yamamoto discloses adhesive layer is composed of an adhesive composition containing an A-B-A triblock copolymer, a tackifier, and an aliphatic hydrocarbon (abstract). Yamamoto discloses the styrene-based block copolymer is an ABA triblock copolymer, wherein A is a block obtained by polymerizing styrene, and B is a polymer obtained by polymerizing at least one selected from ethylene, propylene and butene (page 2).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include styrene tri block copolymer obtained by polymerizing styrene and ethylene and propylene or butylene as taught by Yamamoto in the adhesive composition of Taguchi motivated by the desire to have a low relative dielectric constant, high hardness and low moisture permeability (page 3).
Response to Arguments
Applicant’s arguments filed on 10/08/2025 have been fully considered, but they are not persuasive.
Applicant argues that the criticality of this range from 25 to 35 wt% is demonstrated by Comparative Example 12 in the application as filed and by new Comparative Example 13 (in the Appendix filed herewith), when compared to Example 6 according to the invention, as discussed below. The polymer of Example 6 is commensurate with the scope of claim 1 of the present invention because it contains
31 wt% EVA copolymer. In contrast, the polymers of Comparative Examples 12 and 13 contain 10 and 55 wt% EVA copolymer respectively. The criticality of the lower end point (25 wt%) and the technical effect associated with this lower end-point is shown by comparing Example 6 to Comparative Example 12 in the application as filed. The film of Example 6 (wherein the coating layer comprises 31 wt% EVA copolymer) exhibited an easy and clean peel when manually peeled from the tray. In contrast, the film of Comparative Example 6 (wherein the coating layer comprises 10 wt% EVA copolymer, below the instant critical range) left large amounts of coating residue on the tray.
However, it should be noted that data is not persuasive as the data is not proper side by side comparison of how the amount of EVA in a range of 25-35 wt% is critical in yielding the unexpected properties of improved peel ability and sealability. Applicant is requested to show proper side by side comparison of an inventive example with EVA in an amount of 35% and a comparative example with EVA in an amount of 40% to prove that EVA in an amount of 40% won’t yield the unexpected properties and with both examples which are in commensurate in scope with the scope of present claims and further, it should be noted that the instantly claimed amount of EVA and that taught by Taguchi are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Applicant also submits further experimental data (see Comparative Example 13, in the Appendix filed herewith) which demonstrates the criticality of the upper end point (35 wt%). The further experimental data investigated the peel strength of an additional Comparative Example with a coating layer comprising 55 wt% EVA copolymers. Example 6 can be compared to the additional Comparative Example because the only difference between these examples is the amount of EVA copolymer. The results illustrated in Table 7 confirm that composite films comprising a heat-sealable polymeric coating layer comprising an EVA copolymer in an amount of from 25 to 35 wt% have improved sealability and peelability compared to films which instead comprise the EVA
copolymer in higher amounts.
However, it should be noted that Applicant should file a declaration and show a proper side by side comparison as stated above. Instead of experimental data investigated the peel strength of an additional Comparative Example with a coating layer comprising 55 wt% EVA copolymers, applicant is requested to show an experimental data investigating the peel strength of an additional Comparative Example with a coating layer comprising 40 wt% EVA copolymers.
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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788