DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of claims 16-18 in the amendments filed 10/23/2025.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 10/23/2025, with respect to the rejection of claims 1-6, 10 and 13-15 over Awata et al. under 35 U.S.C. 102(a)(1) as set forth in paragraph 3 of the action mailed 5/6/2025, have been fully considered and are persuasive. The rejection of claims 1-6, 10 and 13-15 has been withdrawn.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 18, the recitation that the ester group concentration in the polyester resin (A) is 6 mmol/g or less (or 5 mmol/g or less) provides for the ester group concentration to be less than 2 mmol/g or less (e.g., 1 mmol/g), which is not supported by the specification as originally filed. See, for example, paragraph 0068 of said specification.
Claim Rejections - 35 USC § 103
Claim(s) 1-6, 10, 13-15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Awata et al. (JP 2019172809 A) in view of Yasuhara (JP 2004137295 A). The Examiner notes that citations from the ‘809 reference were taken from a machine translation as provided by the Applicant cited on the IDS filed 7/29/2022; and that citations from the ‘295 reference were taken from a machine translation, which is included with the current action.
Regarding claim(s) 1-6, 10, 13-15 and 18, Awata 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 compound (a2), polycarboxylic acid compounds, current claim 3) 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 (current claim 5) (para 0013). The copolyester resin (A) further comprises a dimer acid or dimer diol (compound (a1)) (para 0014).
Awata also teaches that the PSA comprises a curing agent (C) (para 0015) such as, inter alia, a polyfunctional isocyanate compound (current claim 10) to crosslink the polyester resin (A) (adhesive agent, current claim 13) (para 0064); and is employed to coat a substrate towards providing a double-side tape (current claims 14-15). The weight-average molecular weight (Mw) of the polyester resin (A) is 30000 or more (current claim 6) (para 0034), which comprises, as the aromatic dicarboxylic acid component, terephthalic acid (current claim 4) (para 0020).
As noted above, of the 100 mol% of polyvalent carboxylic acid component, the aromatic dicarboxylic acid component is 30 mol% or less, such as 5 mol% or less; and that the total dimer acid and dimer diol is 5 to 25 mol% based on 200 mol%, such as not less than 15 mol%, of the total polyvalent carboxylic acid and polyhydric alcohol components (para 0033), which equates to not less than 30 mol% based on 100 mol% of the polyvalent carboxylic acid component. The Examiner notes that the mol% of each of the aromatic dicarboxylic acid component and the total dimer acid/dimer diol component provides the presently claimed molar concentration ratio (X1/X2) of greater than 1.0 and 1.8 or more (current claim 2).
Awata is silent to the copolyester resin (A) comprising an ester group concentration of 6 mmol/g or less (current claim 1) or 5 mmol/g or less (current claim 18).
However, Awata does contemplate hydrolysis resistance for the disclosed polyesters (para 0029), as well as heat resistance (para 0001).
In addition, Yasuhara teaches an adhesive comprising a polyester (page 1). Yasuhara also teaches that polyesters experience hydrolysis via the ester bonds, with hydrolysis resistance in hot and humid environs improved by increasing the molecular weight of the repeating units comprising said polyesters, as well as the attendant maintenance is viscosity and adhesive strength (page 9, line 17 to page 10, line 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the copolyester resin (A) of Awata with the presently claimed ester group concentration towards said polyester demonstrating the heat and hydrolysis resistance required of the prior art’s intended application as in the present invention.
Claim(s) 7-9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Awata et al. (JP 2019172809 A) in view of Yasuhara (JP 2004137295 A) and in further view of Tanaka et al. (US 10287465 B2).
Regarding claim(s) 7-9, Awata/Yasuhara teaches the PSA comprising a copolyester resin (A) as set forth above, and to include additives (para 0071).
Awata/Yasuhara is silent to a tackifier comprising an aromatic structural unit, a softening point of 80 to 170 ℃, and present in an amount of 2 to 200 parts by weight based on 100 parts by weight of the copolyester resin (A).
However, Tanaka teaches a polyester-based PSA comprising a tackifier (abstract) derived from plant raw material and having a softening point of 100 to 170 ℃ (column 2, line 64 to column 3, line 4) towards a balance of adhesion and repulsion resistance (column 10, lines 7-19), and selected from, inter alia, an aromatic modified terpene resin towards the inclusion of a plant-derived raw material (column 9, lines 25-53) in consideration of carbon neutrality and environmental friendliness (column 5, lines 7-11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to include the presently claimed tackifier in the presently claimed proportions towards the PSA of Awata/Yasuhara demonstrating a balance of tackifying properties, adhesion and repulsion resistance, and environmental friendless, based on the requirements of the prior art’s intended application as in the present invention.
Regarding claim 12, while Awata/Yasuhara does not disclose the presently claimed biomass degree for the inventive PSAs, Awata does disclose that the polyhydric alcohol component of polyester resin (A) (para 0030 of Awata) are identical to those disclosed in Tanaka as providing plant-derived (i.e., biomass components) (column 6, lines 4-15 of Tanaka) as are the dicarboxylic acids of both references such as sebacic acid (see column 5, lines 32-40 of Tanaka and para 0020 of Awata).
Awata also teaches that the acrylic resin (B), which comprises the majority of the PSA composition (para 0046), comprises alkyl (meth)acrylate(s) in the majority such as, inter alia, octyl and isooctyl (meth)Acrylate monomers (para 0048-0049), which are also derived from natural resources and comprise a majority of carbons.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA of Awata/Yasuhara/Tanaka with a biomass proportion identical to that presently claimed towards said PSA providing environmental friendless as in the present invention.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Awata et al. (JP 2019172809 A) in view of Yasuhara (JP 2004137295 A) and in further view of Hatakeyama et al. (WO 2018/174198 A1). The Examiner notes that citations from the ‘198 publication were taken from a machined translation, which was included with the previous action.
Regarding claim(s) 11, Awata/Yasuhara teaches the PSA comprising a copolyester resin (A) as set forth above, and to include additives (para 0071).
Awata/Yasuhara is silent to a hydrolysis inhibitor.
However, Hatakeyama teaches a PSA comprising, inter alia, hydrolysis inhibitors towards improved durability under high temperatures and humidity, and eliminating catalysis of protonic carboxyl end groups (“Others” section on page 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA of Awata/Yasuhara with a hydrolysis inhibitor towards said PSA demonstrating improved durability under high temperatures and humidity, and eliminating catalysis of protonic carboxyl end groups as in the present invention.
Claim(s) 1, 3-4 and 16-18 and claims 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Petke et al. (US 4554303) in view of Yasuhara (JP 2004137295 A).
Regarding claims 1 and 16-18, Petke teaches an adhesive composition (claim 7) comprising a copolyester (polyester resin (A)) derived from comprising 100 mole % of a dibasic acid comprising 40 to 100 mol % of terephthalic acid (aromatic structural unit (a2)) and 0 to 60 mol % of a dimer acid (structural unit (a1)) (claim 1), wherein the mol % of the terephthalic acid and the dimer acid provides an overlap with the presently claimed molar ratio (X1/X2) of greater than 1.0, and overlap with the presently claimed dimer acid proportion of 35 to 90 mol % (current claim 16) and 15 to 55 mol % (current claim 17). For example, 60 mol % of the dimer acid and 40 mol % of the terephthalic acid is 60 mol %/40 mol %, or 6:4 or 3:2.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Petke is silent to the copolyester comprising an ester group concentration of 6 mmol/g or less (current claim 1) or 5 mmol/g or less (current claim 18).
However, Yasuhara teaches an adhesive comprising a polyester (page 1). Yasuhara also teaches that polyesters experience hydrolysis via the ester bonds, with hydrolysis resistance in hot and humid environs improved by increasing the molecular weight of the repeating units comprising said polyesters, as well as the attendant maintenance is viscosity and adhesive strength (page 9, line 17 to page 10, line 2). Yasuhara further teaches that the concentration of ester groups is decreased via increasing the molecular weight of the repeating units of the copolyester (page 11, line 16 to page 12, line 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the copolyester of Petke with the presently claimed mol % of high molecular weight dimer acid towards decreasing the concentration of ester group concentration towards said copolyester of Petke demonstrating the heat and hydrolysis resistance required of the prior art’s intended application as in the present invention.
Regarding claims 3-4, as noted above, Petke teaches terephthalic acid (aromatic polycarboxylic acid compound).
Regarding claims 14-15, Petke teaches an adhesive film (adhesive layer; or an adhesive sheet, wherein the adhesive layer necessarily has two sides) (claim 8).
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 10/23/2025, with respect to the rejections of claims 1-6, 10, 13-15 and 18 over Awata et al. in view of Yasuhara under 35 U.S.C. 103; claims 7-9 and 12 over Awata et al. in view of Yasuhara and in further view of Tanaka et al.; and claim 11 over Awata et al. in view of Yasuhara and in further view of Hatakeyama et al. as set forth in the current action, have been fully considered but they are not persuasive.
The Examiner respectfully acknowledges the calculations performed by the Applicant towards determining the concentration of the ester in groups comprising the exemplary polyester resins of (A-3) and (A-6). In response to the amendment to at least claim 1, the rejection under 35 U.S.C. 102(a)(1) has been withdrawn as provided above. However, the Applicant is also respectfully reminded that the “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” (In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967)).
In this regard, and in response to the Applicant’s against Awata employed in an obviousness rejection of at least current claim 1, the Applicant is respectfully directed to the prior art rejections set forth above, wherein it is noted Awata in view of the analogous Yasuhara invention teaches or renders obvious all the limitations of the presently claimed invention, to include the amended portions of current claim 1 and the limitations recited in new claim 18.
The Examiner also respectfully disagrees with the Applicant’s assertions that there is no reason to modify Awata towards teaching or rendering obvious the presently amended limitations requiring a polyester resin (A) having 6 mmol/g or less of ester group. Firstly, Awata does discuss the inclusion of dimer acids or dimer alcohols towards high hydrophobicity and adhesion to nonpolar substrates (para 0032-0033), and second, while Awata does discuss “preferable” proportions of the dimer compound(s), Awata does not dissuade one skilled in the art away from proportions outside the ranges disclosed, especially if the application required more (or less) hydrophobicity and more (or less) adhesive strength to the nonpolar substrate than contemplate by Awata’s application(s).
Thirdly, Awata does discuss hydrolysis resistance for the disclosed copolyester resin (A) (para 0029) as well heat resistance (para 0001, 0012), which is provided via adjusting the concentration of ester groups in a polyester as cited via the analogous Yasuhara invention noted above. It is also significant to note that the presently claimed invention as recited in at least current claim 1 does not specify the proportions of the claimed dimer compounds other than a relative amount versus the aromatic compound (a2).
Lastly, the Applicant is respectfully reminded that, as set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of the presently claimed molar concentration ratio (X1/X2) of greater than 1.0. In this regards, the Examiner notes that “greater than 1.0” is unbounded in its upper limit, and thus provides for compounds (a1) to be excessively high and/or compound (a1) to be excessively low. Table 2 presently disclosed provides inventive polyester resins (A-1) to (A-10) employed in inventive Examples 1-14, while polyester resins (A’-1) to (A”-3) were employed in Comparative Examples 1-7. Inventive polyester resin (A-1) demonstrates an upper limit of (X1)/(X2) of 5.7. Thus, it is unclear if the alleged unexpectedly superior adhesive properties would be present for molar ratios above 5.7, which is encompassed by the presently recited invention.
Also, it is significant to notes that Comparative Example 6 demonstrates an initial peel strength to SUS-BA of 16 N/25 mm, a peel strength to SUS-BA after 72 hours of 17 N/25 mm, interfacial peeling, and an “o” evaluation (see Table 4), which is comparable to Inventive Examples 2 and 6 (see Table 3). Comparative Example 6 comprises dimer acid (a1), but contains none of aromatic compound (a2).
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/18/2026