DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 2 and 17 in the amendments filed 4/22/2026.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/15/2026 has been entered.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 4/22/2026, with respect to the rejection of claims 1-18 under 35 U.S.C. 112(a) as set forth in paragraph 5 of the action mailed 1/22/2026, have been fully considered and are persuasive. The rejection of claims 1-18 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 4/22/2026, with respect to the rejection of claims 1, 3-4 and 16-18 and claims 14-15 over Petke et al. in view of Yasuhara under 35 U.S.C. 103 as set forth in paragraph 9 of the action mailed 1/22/2026, have been fully considered and are persuasive. The rejection of claims 1, 3-4 and 16-18 and claims 14-15 has been withdrawn.
Petke’s copolyester is derived from comprising 100 mole % of a dibasic acid comprising 40 to 100 mol % of terephthalic acid (i.e., aromatic structural unit (a2)) and 0 to 60 mol % of a dimer acid (i.e., structural unit (a1)) (claim 1), which provides a mol% ratio of 60 mol%:40 mol%, or 1.5, which is below that presently claimed (i.e., 1.8 or more).
Petke is also silent to the copolyester comprising an ester group concentration of 2 to 6 mmol/g or less.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “…molar concentration (X2) of the structural unit derived from the at least one compound (a1)…”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “…a proportion of the structural unit derived from the at least one compound (a1) is 15 to 55 mol%…”. Appropriate correction is required.
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.
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.
Claims 1, 3-16 and 18 are 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.
Regarding claim 1, it is unclear from the claim limitations, and in light of the specification (see, for example, paragraph 0050), what is, and is not, being claimed given that it is unclear what is intended via the recitation that the compound (a1) is present at the mol% based on an overall amount of the polyester resin (A). Indeed, as written, the mol% of the compound (a1) appears to be based on how much polyester resin (A) is present (e.g., present in the recited adhesive composition) rather than based on the polyester resin (A) in and of itself; for example, 15 to 55 mol% based on 100 mol% of the polyester resin (A).
Regarding claim 2, it is unclear from the claim limitations if the “aromatic polycarboxylic acid compound” is intended to further limit the “aromatic dicarboxylic acid compound” of current claim 1, or if the “aromatic polycarboxylic acid compound” is in addition to the “aromatic dicarboxylic acid compound” of current claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 2, current claim 1 requires aromatic compound (a2) to comprise an aromatic dicarboxylic acid compound, which is not further limited by the aromatic polycarboxylic acid compound recited in the current claim.
Allowable Subject Matter
Claims 1, 3-16 and 18 are allowable over the prior art.
The following is an Examiner’s statement of reasons for allowance:
JP 2019172809 A to Awata et al. teaches a pressure-sensitive adhesive (PSA) comprising a copolyester resin (A) (polyester resin (A) adhesive composition) comprising 100 mol% of a polyvalent carboxylic acid component comprising 30 mol% or less of an aromatic dicarboxylic acid component (aromatic dicarboxylic acid compound (a2)) and 40 mol% or more of an alicyclic dicarboxylic acid; 100 mol% of a polyhydric alcohol component comprising 30 mol% or more of a glycol component with a hydrocarbon side chain; wherein the copolyester resin (A) has a number-average molecular weight (Mn) of 15000 to 30000 (para 0013). The copolyester resin (A) further comprises a dimer acid or dimer diol (compound (a1)) (para 0014).
Of the 100 mol% of polyvalent carboxylic acid component, the aromatic dicarboxylic acid component is 30 mol% or less or such as 1 mol% or less (para 0024). The content of the dimer acid, based on the 100 mol% of the polyvalent carboxylic acid component, is 1 to 20 mol% (para 0033), which provides the dimer acid:aromatic polycarboxylic acid molar ratio as high as 20 mol% to 1 mol% (molar concentration ratio (X1/X2) of 1.8 or more).
The sum of the content of the dimer acid and dimer diol is 5 to 25 mol% based on 200 mol% of the total polyvalent carboxylic acid and polyhydric alcohol components (para 0033). Assuming that the copolyester resin (A) is comprised entirely of the polyvalent carboxylic acid and polyhydric alcohol components, the dimer acid and dimer diol (i.e., presently claimed compound (a1)) is 2.5 to 12.5 mol% based on 100 mol% of the copolyester resin (A), which is below that presently claimed (i.e., 15 to 55 mol% based on the overall amount of the polyester resin (A)).
Awata is also silent to the copolyester resin (A) comprising an ester group concentration of 2 to 6 mmol/g or less.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 1, 3-16 and 18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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, Alicia A Chevalier can be reached at 571-272-1490. 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.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 7/22/2026
Prosecution Insights