DETAILED ACTION
This Office Action is in response to the Amendment filed on 2/28/2025. Please note the claim set filed 2/28/2025 is the claim set under examination. The claims filed 6/17/2025 were not entered as they were filed after a Final rejection. Claim 21 has been added. Claims 1-21 are now pending in the application. This Final Rejection replaces the Final Rejection mailed on 11/21/2025.
The previous 35 USC 112 rejection of claim 12 is withdrawn in light of Applicant’s amendment and remarks.
The previous Claim Objections to claims 1 and 19 are withdrawn in light of Applicant’s amendment and remarks.
The terminal disclaimer filed on 2/28/2025 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 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.
Claims 1-4, 6-8, 13, 15, and 17 are rejected under 35 U.S.C. 103 as being obvious over US20110245430 to Corzani et al. (as found on the IDS dated 5/24/2023) in view of WO 02/31044 to Kaarnakari et al.
Regarding Claims 1-4, Corzani discloses a hot melt adhesive [Title]. In Example 1, the hot melt adhesive comprises 14.0% of Vector 1411A which is a styrene-isoprene-styrene block copolymer reading on 5% by weight to 50% by weight of a styrene block copolymer; 32.6% of Komotack KS 2100 which is a rosin ester tackifier, reading on 15% to 75% weight of bio-based tackifying agent; and 27% of RBD Palm Stearine which is a fully hardened Palm wax obtained from the complete hydrogenation of Palm Oil, reading on 8% to 40% weight of a plasticizer having a cyclo-aliphatic content of no greater than 1% by weight.
Corzani does not particularly teach an aliphatic plasticizer selected from the group consisting of linear alkanes, branched alkanes, and combinations thereof in a preferred embodiment.
However, Kaarnakari teaches polyalphaolefin plasticizers for elastomers [Kaarnakari, P2, L1-2] wherein the polyalphaolefin is a hydrogenated oil [Kaarnakari, P2, L1-3] that is preferably polydecene [Kaarnakari, P2, L11-12] that is a pure product [Kaarnakari, P5, L1-2] thereby reading on an aliphatic plasticizer consisting of a branched alkane of claim 1, an aliphatic oil of claim 6, and not greater than 1% or 0.5% cyclo-aliphatic content of claims 1 and 7. Corzani and Kaarnakari are analogous art as they are from the same field of endeavor, namely plasticized compositions comprising styrene copolymers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute Kaarnakari’s plasticizer with Corzani’s RBD Palm Stearine, thereby arriving at the claimed invention.
The motivation to modify Corzani with Kaarnakari is polyalphaolefins have several advantages in plasticizing applications such as superior heat resistance, high flash points that are favorable for processing, and better preservation of transparency [Kaarnakari, P4 L15-30 - P5 L1-9].
Example 1 set forth by Corzani teaches 36.2% of rosin ester tackifier, wherein rosin ester tackifier is bio-based as it is derived from renewable resources. Therefore, it would be reasonable to consider these compounds to be environmentally conscious per applicants’ definition [0013]. This preferred example is silent regarding the hot melt adhesive composition comprising an environmentally conscious component content of at least 50% by weight.
However, in the general disclosure, Corzani does teach 5-70% weight of a tackifiers may be provided in the disclosed composition [Abstract] thereby reading on the bio-based component limitations of claims 1-4. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the rosin ester tackifier in an amount of up to 70 weight percent of the hot melt adhesive composition of Claim 1 of Corzani. The motivation would have been that Corzani teaches such amounts of tackifier are suitably used in the disclosed hot melt adhesive compositions. Moreover, an increased amount of tackifier would be enhance the stickiness of the adhesive, which would enhance its adhesion to and between target substrates.
Regarding Claim 6, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1 comprising polydecene [Kaarnakari, P2, L11-12] wherein the polyalphaolefin is a hydrogenated oil [Kaarnakari, P2, L1-3] thereby reading on the aliphatic plasticizer that is an aliphatic oil.
Regarding Claim 7, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1, comprising polydecene [Kaarnakari, P2, L11-12] i.e., a compound which has no cyclo-aliphatic groups, thereby reading on no greater than 0.5% by weight cyclo-aliphatic content.
Regarding Claim 8, Corzani in view of Kaarnakari rzani discloses the hot melt adhesive composition of claim 1 comprising Komotack KS 2100 i.e., a Rosin Ester tackifier [Example 1], reading on a bio-based tackifying agent that is rosin-based.
Regarding Claims 9 and 10, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1 as set forth above and incorporated herein by reference.
Corzani does not particularly teach the properties of the bio-based tackifying agent has a neat Molten Gardner Color of from 0 to 2.
However, the properties of Molten Gardner Color are functions of the tackifying agent. Corzani teaches the same tackifying agent as set forth in the rejection above. Therefore, the property of Molten Gardner Color in the tackifying agent of Corzani will be the same property as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding Claim 11, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1. In Example 1, the bio-based tackifying agent is Komotack KS 2100, which is a rosin ester-based tackifying agent [0060]. Corzani does not then disclose a terpene-based tackifying agent is used in this embodiment. However, in the Abstract, Corzani teaches terpene tackifiers and rosin ester tackifiers are both suitably used as tackifiers in the disclosed hot melt adhesives. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a blend of a rosin ester-based tackifying agent and terpene-based tackifying agent to prepare the hot melt adhesive in Example 1 of Corzani. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining various tackifiers would have been obvious given their known and shared intended use in the hot melt adhesive compositions of Corzani.
Regarding Claim 12, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1 as set forth above and incorporated herein by reference.
Corzani does not particularly teach the properties of bio-based and thermoplastic polymers considered sustainable by the mass balance approach.
However, the properties of sustainability by the mass balance approach are functions of the styrene block copolymer. Corzani teaches the same styrene block copolymer as set forth in the rejection above. Therefore, the property of sustainable by the mass balance approach in the styrene block copolymer of Corzani will be the same property as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding Claim 13, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1 comprising Vector 4411 A, i.e., a styrene isoprene-styrene block copolymer [Example 1].
Regarding Claim 15, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1, comprising Vector 4411 A i.e., a styrene-isoprene-styrene block copolymer containing about 44% styrene [0060] reading on an average styrene content from 20% to 45% by weight.
Regarding Claim 16, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1, comprising 14.0% of Vector 1411A [Corzani, Example 1] which is a styrene-isoprene-styrene block copolymer reading on 10% by weight to 25% by weight of a styrene block copolymer, 5-70% weight of rosin ester tackifiers [Corzani, Abstract] thereby reading on 45-75% bio-based tackifying agent, and 27% of polydecene as set forth in the rejection of claim 1, thereby reading on 10% to 30% weight of an aliphatic plasticizer.
Regarding Claim 19, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1, wherein the hot melt can be used inside hygienic absorbent articles [0053], therefore it is reasonably assumed that the article is disposable and because the hot melt can be used inside the article it can be readily envisioned that the hot melt adhesive is used between two substrates reading on a disposable absorbent article comprising a first substrate, a second substrate, the hot melt adhesive composition of claim 1, wherein the adhesive is disposed on one of the substrates.
Regarding Claim 21, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1, wherein the styrene block copolymer is present in the adhesive composition in about from 3 wt% to 35 wt% [0024] thereby encompassing the claimed range of from 15% to 25% by weight.
Claim 5 is rejected under 35 U.S.C. 103 as being obvious over Corzani in view of WO02/31044 to Kaarnakari et al. as applied to claim 1 above, and further in view of CN106957666 to Xie.
Regarding Claim 5, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 2 as set forth above and incorporated herein by reference.
Corzani in view of Kaarnakari is silent regarding that the polyalphaolefin plasticizer is bio-based.
However, Xie teaches a lignin semi-coke produced from wood fiber raw materials through a tubular stepped vacuum continuous hydrolysis process as raw material. The semi-coke is then used for gasification, Fischer-Tropsch synthesis, two-stage polymerization, and alkylation to produce bio-based polyalphaolefin synthetic oil [Xie, 0040]. Corzani and Xie are analogous art as they are from the same field of endeavor, namely the use of bio-based ingredients and renewable feedstocks in industrial applications.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a bio-based polyalphaolfein as taught by Xie as the plasticizer suggested by Corzani in view of Kaarnakari thereby arriving at the claimed invention.
The motivation to modify Corzani in view of Kaarnakari with Xie is bio-based polyalphaolefin synthetic oils feature inexpensive and readily available raw materials, a green process, and reliable product performance, [Xie, 0040]
Claim 14 is rejected under 35 U.S.C. 103 as obvious over Corzani in view of WO02/31044 to Kaarnakari et al. as applied to claim 1 above, and further in view of US9868853 to Hogan.
Regarding Claim 14, Corzani in view of Kaarnakari teaches the hot melt adhesive of claim 2 as set forth above and incorporated herein by reference.
Corzani in view of Kaarnakari does not teach the styrene block copolymer is bio-based.
However, Hogan teaches block styrene copolymer that are produced using styrene derived from biobased source material [Col 6 ,Line 65 to Col 7, Line 2]. Corzani and Hogan are analogous art as they are from the same field of endeavor, namely utilization of biobased materials.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute Hogan’s biobased styrene block copolymer with Corzani’s styrene block copolymer, thereby arriving at the claimed invention.
The motivation to modify Corzani in view of Kaarnakari with Hogan is to have a more sustainable product that is not produced from the limited petroleum-derived benzene [Col 1, lines 32-34]
Claims 17, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Corzani in view of WO02/31044 to Kaarnakari et al. as applied to claim 1 above, and further in view of US20170362478 to Blomker.
Regarding Claim 17, 18 and 20, Corzani in view of Kaarnakari discloses the hot melt adhesive composition of claim 1 as set forth above and incorporated herein by reference.
Corzani does not particularly teach an article selected from the group consisting of a paper tape or a paper label.
However, Blomker discloses a pressure sensitive adhesive [title] used to make an adhesive tape comprising a carrier that preferably comprises paper [0139] reading on a paper tape. Blomker teaches a biodegradable adhesive tape wherein the pressure sensitive adhesive is transferred onto a biodegradable carrier [abstract] i.e., substrate, that preferably is selected from paper, woven fabric made of cotton, hemp, jute, or cellulose [0139] i.e., paper substrate. Blomker and Corzani are analogous art as they are from the same field of endeavor, namely pressure sensitive adhesives.
Before the effective filing date at the time of the invention, it would have been obvious to one of ordinary skill in the art to use Corzani’s hot melt composition in a paper tape, as suggested by Blomker.
The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Blomker shows that a hot melt adhesive is known in the art to be suitable for a biobased paper tape.
Response to Arguments
Upon further consideration and in light of the amendment, the arguments filed 2/28/2025, with respect to the rejections of claims 1-21 under Corzani have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration and in light of the amendment, a new ground of rejection is made in view of Corzani in view of Kaarnakari.
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 DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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