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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 23, 2025 has been entered.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed July 14, 2025, with respect to the rejection(s) under 35 U.S.C. 102 in view of Hayakawa et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant has amended claim 1 to recite an amount of a styrene-based copolymer (A1) and a styrene content thereof (previously recited in claim 6) and to further recite wherein the composition comprises a wax in an amount of 3 to 25 parts by mass based on 100 parts by mass of components (A), (B), and (C).
With regard to the claimed styrene content of the styrene block copolymer, Applicant argues that Hayakawa does not disclose the claimed feature and instead teaches wherein the thermoplastic block copolymer (A1) is a styrene-based block copolymer having a styrene content of 40 wt% or more. The Office acknowledges that Hayakawa teaches that the thermoplastic block copolymer (A) may be a combination of two or more kinds including a (A1) a styrene-based block copolymer having a styrene content of 40% by weight of more that is blended with a styrene-based block copolymer other than (A1) such as (A2) a styrene-based block copolymer having a styrene content of less than 40% by weight ([0032]). However, Hayakawa further discloses exemplary compositions comprising only an (A2) component without an (A1) component (see Table 3, Comparative Example 1), which reads on the claimed wherein component (A) comprises, based on 100 parts by mass of the total amount of the component (A), 100 parts by mass of a styrene based copolymer having a styrene content of less than 40% by mass. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)) (see MPEP 2123 I). In the instant case, Comparative Example 1 of Hayakawa is construed to indicate that compositions based on a thermoplastic styrene block copolymer having a styrene content of less than 40 wt% or less are recognized within the art as suitable for forming alkali dispersion type hot melt adhesives. Regarding Applicant’s argument that the disclosure of Hayakawa would result in a “less suitable product,” it is the position of the Office that nonpreferred and alternative embodiments constitute prior art. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (see MPEP 2123 II). Furthermore, the Examiner notes that Fouquay et al. (cited in the previous Office Action as pertinent prior art), while not relied upon for the rejection below, teaches a hot-melt pressure-sensitive adhesive (HMPSA) composition comprising a styrene block copolymer having a content of styrene within the styrene block copolymers may range from 35 to 50% ([0041]), which overlaps with the claimed range, are recognized within the art as suitable for hot-melt adhesive compositions.
Applicant’s amendments and arguments are considered fully responded to within the comments above and rejections below.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 6-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayakawa et al. (JP2016060847, English translation provided for citations, hereinafter referred to as “Hayakawa”) as evidenced by BASF (Technical Information - Kolliwax® HCO Hydrogenated castor oil powder for pharmaceutical use,” BASF, May 2023, hereinafter referred to as “BASF”).
As to Claim 1: Hayakawa teaches an alkali-dispersible hot-melt pressure-sensitive adhesive ([0001]) comprising (A) a thermoplastic block copolymer which is a copolymer of a vinyl aromatic hydrocarbon and a conjugated diene compound, (B) a tackifier resin, and (C) at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]). BASF provides evidence that hydrogenated castor oil has a melting point of 85 – 88 ˚C (pg. 2, para. 1), which is within the claimed range. Therefore, the at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]) anticipates the claimed (C) component comprising (C1) having a melting point of 40 ˚C or more in the claimed amount (i.e., wherein the component (C) comprises 100 parts of hydrogenated castor oil based on 100 parts by mass of the component (C)). Hayakawa teaches wherein the composition comprises a wax ([0053]-[0054]) and further teaches various exemplary compositions comprising a wax in an amount within the claimed range (e.g., 3 parts by mass, Table 1, Example 1, pg. 15 of foreign reference).
Hayakawa teaches that the thermoplastic block copolymer (A) may be a combination of two or more kinds including a (A1) a styrene-based block copolymer having a styrene content of 40% by weight of more that is blended with a styrene-based block copolymer other than (A1) such as (A2) a styrene-based block copolymer having a styrene content of less than 40% by weight ([0032]). Hayakawa further discloses exemplary compositions comprising only an (A2) component without an (A1) component (see Table 3, Comparative Example 1), which reads on the claimed wherein component (A) comprises, based on 100 parts by mass of the total amount of the component (A), 100 parts by mass of a styrene based copolymer having a styrene content of less than 40% by mass. The Examiner notes that it is not clear that the (C) component within Comparative Example 1, Table 3 of Hayakawa inherently meets the limitation for the component (C) required by claim 1, from which claim 6 depends. Thus, while Hayakawa does not expressly spell out the limitation specifically as arranged within the claim, Comparative Example 1 reads on the required limitations of claim 6 and claim 1 and is only deficient in the identity of (C) and the presence of a (D) wax. However, it is the position of the Examiner that a person having ordinary skill in the art could at once envisage an arrangement wherein the Comparative Example 1 of Hayakawa alternatively comprises a component (C) which is a hardened oil including hydrogenated castor oil based on Hayakawa’s explicit contemplation of a finite number of options for the component (C) (see [0051] of Hayakawa), and a component (D) wax in the claimed amount, which Hayakawa explicitly teaches in e.g., 9 parts by mass (Table 1, Example 3, pg. 15 of foreign reference) (see MPEP 2131.02 III).
As to Claim 2: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa further teaches wherein the at least one member selected from the group consisting of fatty acids and derivatives thereof may be a hardened oil ([0049] and [0051]).
As to Claim 3: Hayakawa teaches the adhesive of claim 2 (supra).
Hayakawa further teaches wherein the hardened oil may be hydrogenated castor oil ([0051]).
As to Claim 6: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa teaches that the thermoplastic block copolymer (A) may be a combination of two or more kinds including a (A1) a styrene-based block copolymer having a styrene content of 40% by weight of more that is blended with a styrene-based block copolymer other than (A1) such as (A2) a styrene-based block copolymer having a styrene content of less than 40% by weight ([0032]). Hayakawa further discloses exemplary compositions comprising only an (A2) component without an (A1) component (see Table 3, Comparative Example 1), which reads on the claimed wherein component (A) comprises, based on 100 parts by mass of the total amount of the component (A), 100 parts by mass of a styrene based copolymer having a styrene content of less than 40% by mass. The Examiner notes that it is not clear that the (C) component within Comparative Example 1, Table 3 of Hayakawa inherently meets the limitation for the component (C) required by claim 1, from which claim 6 depends. Thus, while Hayakawa does not expressly spell out the limitation specifically as arranged within the claim, Comparative Example 1 reads on the required limitations of claim 6 and claim 1 and is only deficient in the identity of (C). However, it is the position of the Examiner that a person having ordinary skill in the art could at once envisage an arrangement wherein the Comparative Example 1 of Hayakawa alternatively comprises a component (C) which is a hardened oil including hydrogenated castor oil based on Hayakawa’s explicit contemplation of a finite number of options for the component (C) (see [0051] of Hayakawa) (see MPEP 2131.02 III). Kraton provides evidence that Hayakawa contemplates that the composition may comprise commercially available styrenic block copolymers which exhibit a styrene content within the claimed range (e.g., 28.8 to 31.6 mol% styrene content)1.
As to Claim 7: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa further teaches that the tackifier resin may have an acid value of 100 mg KOH/g to 300 mg KOH/g ([0012]), which is within the claimed range.
As to Claim 8: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa further teaches that the vinyl-based aromatic hydrocarbon within the copolymer of a vinyl aromatic hydrocarbon and a conjugated diene compound may be a compound having a vinyl group, including, inter alia, styrene, o-methylstyrene, p-methylstyrene, and p-tert-butylstyrene ([0026]).
As to Claims 9 and 10: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa further teaches that the conjugated diene within the copolymer of a vinyl aromatic hydrocarbon and a conjugated diene compound may be a diolefin compound having at least one pair of conjugated double bonds, including, inter alia, 1,3-butadiene, 2-methyl-1,3-butadiene, combinations thereof ([0027]).
As to Claim 11-13: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa further teaches that the composition may comprise a tackifier resin that contains an α-methylstyrene resin which may be a copolymer of styrene and α-methylstyrene resin ([0040]) having a softening point of 85 to 160 ˚C measured by the ring and ball method specified in JIS K2207 ([0041]), which anticipates the claimed range.
As to Claim 14: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa further teaches that the hot melt pressure sensitive adhesive has a viscosity of preferably 2000 mPa∙s or less ([0070]), which meets the claimed limitation. Furthermore, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. viscosity, 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 Claims 17-19: Hayakawa teaches the adhesive of claim 1 (supra).
Hayakawa further teaches wherein the wax may be a synthetic wax including paraffin and Fischer-Tropsch waxes ([0054]).
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayakawa et al. (JP2016060847, English translation provided for citations, hereinafter referred to as “Hayakawa”) as evidenced by BASF (Technical Information - Kolliwax® HCO Hydrogenated castor oil powder for pharmaceutical use,” BASF, May 2023, hereinafter referred to as “BASF”).
As to Claim 4: Hayakawa teaches an alkali-dispersible hot-melt pressure-sensitive adhesive ([0001]) comprising (A) a thermoplastic block copolymer which is a copolymer of a vinyl aromatic hydrocarbon and a conjugated diene compound, (B) a tackifier resin, and (C) at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]). BASF provides evidence that hydrogenated castor oil has a melting point of 85 – 88 ˚C, which is within the claimed range. Therefore, the at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]) anticipates the claimed (C) component comprising (C1) having a melting point of 40 ˚C or more.
Hayakawa teaches the above alkali-dispersible hot-melt pressure-sensitive adhesive may be coated onto a label ([0109]).
Claims 5, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayakawa et al. (JP2016060847, English translation provided for citations, hereinafter referred to as “Hayakawa”) as evidenced by BASF (Technical Information - Kolliwax® HCO Hydrogenated castor oil powder for pharmaceutical use,” BASF, May 2023, hereinafter referred to as “BASF”).
As to Claim 5: Hayakawa teaches an alkali-dispersible hot-melt pressure-sensitive adhesive ([0001]) comprising (A) a thermoplastic block copolymer which is a copolymer of a vinyl aromatic hydrocarbon and a conjugated diene compound, (B) a tackifier resin, and (C) at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]). BASF provides evidence that hydrogenated castor oil has a melting point of 85 – 88 ˚C, which is within the claimed range. Therefore, the at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]) anticipates the claimed (C) component comprising (C1) having a melting point of 40 ˚C or more.
Hayakawa teaches the above alkali-dispersible hot-melt pressure-sensitive adhesive may be coated onto a label ([0109]).
Hayakawa further teaches that the alkali-dispersible hot-melt pressure-sensitive adhesive which may be coated onto a label may be affixed onto a container ([0109]).
As to Claims 15 and 16: Hayakawa teaches the adhesive of claim 5 (supra).
Hayakawa teaches the above alkali-dispersible hot-melt pressure-sensitive adhesive may be coated onto a label ([0109]). Hayakawa further teaches that the alkali-dispersible hot-melt pressure-sensitive adhesive which may be coated onto a label may be affixed onto a container ([0109]) including metal cans such as aluminum cans ([0074]).
Claims 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayakawa et al. (JP2016060847, English translation provided for citations, hereinafter referred to as “Hayakawa”) as evidenced by BASF (Technical Information - Kolliwax® HCO Hydrogenated castor oil powder for pharmaceutical use,” BASF, May 2023, hereinafter referred to as “BASF”).
As to Claim 20: Hayakawa teaches an alkali-dispersible hot-melt pressure-sensitive adhesive ([0001]) comprising (A) a thermoplastic block copolymer which is a copolymer of a vinyl aromatic hydrocarbon and a conjugated diene compound, (B) a tackifier resin, and (C) at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]). BASF provides evidence that hydrogenated castor oil has a melting point of 85 – 88 ˚C (pg. 2, para. 1), which is within the claimed range. Therefore, the at least one member selected from the group consisting of fatty acids and derivatives thereof ([0011]), wherein said fatty acid may be a hardened oil ([0049]) including hydrogenated castor oil ([0051]) anticipates the claimed (C) component comprising (C1) having a melting point of 40 ˚C or more in the claimed amount (i.e., wherein the component (C) comprises 100 parts of hydrogenated castor oil based on 100 parts by mass of the component (C)). Hayakawa teaches wherein the composition comprises a wax ([0053]-[0054]) and further teaches various exemplary compositions comprising a wax in an amount within the claimed range (e.g., 3 parts by mass, Table 1, Example 1, pg. 15 of foreign reference).
Hayakawa teaches that the thermoplastic block copolymer (A) may be a combination of two or more kinds including a (A1) a styrene-based block copolymer having a styrene content of 40% by weight of more that is blended with a styrene-based block copolymer other than (A1) such as (A2) a styrene-based block copolymer having a styrene content of less than 40% by weight ([0032]). Hayakawa further discloses exemplary compositions comprising only an (A2) component without an (A1) component (see Table 3, Comparative Example 1), which reads on the claimed wherein component (A) comprises, based on 100 parts by mass of the total amount of the component (A), 100 parts by mass of a styrene based copolymer having a styrene content of less than 40% by mass. The Examiner notes that it is not clear that the (C) component within Comparative Example 1, Table 3 of Hayakawa inherently meets the limitation for the component (C) required by claim 1, from which claim 6 depends. Thus, while Hayakawa does not expressly spell out the limitation specifically as arranged within the claim, Comparative Example 1 reads on the required limitations of claim 6 and claim 1 and is only deficient in the identity of (C) and the presence of a (D) wax. However, it is the position of the Examiner that a person having ordinary skill in the art could at once envisage an arrangement wherein the Comparative Example 1 of Hayakawa alternatively comprises a component (C) which is a hardened oil including hydrogenated castor oil based on Hayakawa’s explicit contemplation of a finite number of options for the component (C) (see [0051] of Hayakawa), and a component (D) wax in the claimed amount, which Hayakawa explicitly teaches in e.g., 9 parts by mass (Table 1, Example 3, pg. 15 of foreign reference) (see MPEP 2131.02 III).
Hayakawa teaches exemplary compositions comprising:
20 parts by weight of an (A2) styrene-based block copolymer having a styrene content of less than 40% by weight (Comparative Example 3, pg. 17 of foreign document)
60 parts by weight of a component (B) tackifier resin (Comparative Example 3, pg. 17 of foreign document)
20 parts of a component (C) (Comparative Example 3, pg. 17 of foreign document),
9 parts by mass of a component (D) which is a wax (Table 1, Example 3, pg. 15 of foreign reference)
the values of which fall within the claimed ranges for the same.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,173,206 in view of Hayakawa et al. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,173,206 claims an alkali-dispersible hot melt pressure-sensitive adhesive consisting of (A) a mixture of styrene-ethylene/butylene-styrene triblock copolymers, (B) a tackifier resin, and (C) a first (C1) hydrogenated castor oil having a melting point of 45 to 120 ˚C, which is within the claimed range. U.S. Patent No. 12,173,206 also claims a label comprising the alkali-dispersible hot melt pressure-sensitive adhesive which anticipates the claimed alkali-dispersible hot melt pressure-sensitive adhesive and a container comprising said label. The patent claims do not recite an amount for the corresponding components in the same manner as recited in the instant claim 20. Hayakawa teaches exemplary compositions comprising:
20 parts by weight of an (A2) styrene-based block copolymer having a styrene content of less than 40% by weight (Comparative Example 3, pg. 17 of foreign document)
60 parts by weight of a component (B) tackifier resin (Comparative Example 3, pg. 17 of foreign document)
20 parts of a component (C) (Comparative Example 3, pg. 17 of foreign document),
9 parts by mass of a component (D) which is a wax (Table 1, Example 3, pg. 15 of foreign reference)
the values of which fall within the claimed ranges and thus renders obvious the selection of the same for the composition claimed within U.S. Patent No. 12,173,206.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fouquay et al. (US 20100193127, hereinafter referred to as “Fouquay”) teaches a hot-melt pressure-sensitive adhesive (HMPSA) composition comprising a styrene block copolymer, a tackifying resin, and a carboxylic acid (Abstract), wherein said carboxylic acid may be a fatty acid ([0060]). Fouquay further teaches that the content of styrene within the styrene block copolymers may range from 35 to 50% ([0041]).
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
1 KRATON G1650 M Polymer Data Document, hereinafter referred to as “Kraton.”
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