DETAILED ACTION
This is an Office action based on application number 17/911,675 filed 15 September 2022, which is a national stage entry of PCT/EP2021/055862 filed 9 March 2021, which claims priority to EP20163389.8 filed 16 March 2020. Claims 1-20 are pending.
Amendments to the claims, filed 15 September 2022, have been entered into the above-identified application.
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Withdrawn Rejections
The claim objections, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
The prior art rejections, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-9 and 11-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lakshmanan et al. (US Patent No. 4,761,450) (US 450) in view of Mussig et al. (US Patent Application Publication No. US 2011/0067799 A1) (US 799).
Regarding instant claims 1, 8, 11, 13, and 21:
US 450 discloses polymer blends useful as melt adhesives comprising at least a copolymer of butene-1 and ethylene and a hydrocarbon tackifier (col. 1, lines 8-11).
US 450 further discloses that the polymer blends are applied to substrates (col. 2, lines 3-11).
US 450 further discloses that the copolymer of butene-1 and ethylene have a melt index of about 0.3 to about 2000 grams/10 minutes (col. 2, lines 45-50). It is noted that the melt index of US 450 includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
While there is no disclosure in US 450 that the melt flow rate is measured according to the claimed process, absent evidence of criticality regarding how the melt flow rate is measured and given that the melt index includes the range presently claimed, it is the Examiner's position that US 450 meets the requirements of the instant claims.
US 450 further discloses that the hot melt adhesive comprises a paraffin or microcrystalline wax in order to adjust the viscosity thereof to facilitate the application of the adhesive to a substrate (col. 4, lines 32-36).
US 450 further discloses that the polymer blends are applied to substrates (col. 2, lines 3-11).
US 450 further discloses that the hot melt adhesive should possess a viscosity in the range of 500 to about 10,000 for ease of application (sentence bridging cols. 7-8)
US 450 does not explicitly disclose the melt viscosity of the of the hot melt adhesive.
However, since the instant specification is silent to unexpected results, the specific melt viscosity is not considered to confer patentability to the claims. As the ability to easily apply the hot melt adhesive to a substrate is a variable that can be modified, among others, by adjusting the viscosity of the hot melt adhesive, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the melt viscosity of the hot melt adhesive of US 450 to obtain the desired applicability to a substrate (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
US 450 does not explicitly disclose a bandage comprising a flat web material as a substrate wherein both main sides of the substrate are at least partially coated with a hot melt adhesive.
US 799 discloses an adhesive tape comprising a carrier and an adhesive, wherein the adhesive is coated at least on one side of the carrier and comprises an olefin polymer and a tackifier resin (Claim 1).
The term “coated on at least one side” is construed to meet the claimed “both main sides of the substrate being at least partially coated”.
US 799 further discloses that the adhesive tape is usable as a bandage (paragraph [0518]).
US 799 further discloses that the preparation and processing of the adhesive take place from the melt (paragraph [0084]), which is construed to meet the claimed hot melt adhesive.
US 799 further discloses that the carrier material is a textile such as wovens and nonwovens (paragraph [0077]), which is construed to meet the claimed flat web material substrate.
US 799 further discloses that the olefin polymer is a copolymer of ethylene and but-1-ene (paragraph [0015]), which is construed to meet the claimed first polyolefin of a proportion of monomer units derived from 1-butene and a proportion of monomer units derived from ethylene.
US 799 further discloses that the tackifier resin is inclusive of hydrocarbon resins, partially hydrogenated hydrocarbon resins, and completely hydrogenated hydrocarbon resins (paragraph [0023-0024]).
US 799 further discloses that the adhesive is prepared and processed from the melt, wherein the adhesive is coated onto both sides of a carrier material to produce a double-sided adhesive tape (paragraph [0071]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the hot melt adhesive of US 450 to prepare a bandage by coating both sides of a textile carrier as taught by US 799. The motivation for doing so would have been that US 799 discloses that a suitable use of hot melt adhesives composed of a 1-butene/ethylene copolymer and tackifier is the construction of bandages composed of textile carriers. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Therefore, it would have been obvious to combine US 799 with US 450 to obtain the invention as specified by the instant claim.
Regarding instant claim 2 and 16-17:
US 450 further discloses that the polymer blend comprises a low density ethylene polymer and an amorphous polypropylene (col. 1, lines 8-15), each of which meet the claimed “at least second polyolefin”.
Said “amorphous polypropylene” meets the limitations of claims 16-17.
Regarding instant claim 3:
US 450 further discloses that the low density polyethylene is present in an amount of from 2.5 to 40 parts and the amorphous polypropylene is present in an amount of 5 to 87.5 parts based on the total content of the adhesive (col. 4, TABLE I). The disclosed ranges and the totals include the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 4:
US 450 further discloses that the butene-1 copolymer is present in an amount of from 5-60 parts and the hydrocarbon tackifier is present in an amount of 5-40 parts based on the total content of the adhesive (col. 4, TABLE I).
Said amounts produce a range of proportionate ratio that includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claims 5 and 19:
US 450 further discloses that the hot melt adhesive comprises a paraffin or microcrystalline wax in order to reduce the viscosity thereof to facilitate the application of the adhesive to a substrate (col. 4, lines 32-36).
Said wax is construed to meet the claimed lubricant because the term “lubricant” is an intended limitation of the term.
Regarding instant claim 6:
US 450 further discloses that the wax is present in an amount up to 40 weight percent based on the final adhesive composition (col. 4, lines 47-49), which overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 7:
US 450 further discloses that the butene-1 copolymers contain about 1.5 to about 20 weight percent of ethylene (col. 2, line 45-58). Said amounts lead to an amount of 1-butene derived monomer units that includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 9:
US 450 discloses the hot melt adhesive based on a first polyolefin comprising ana proportion of units derived from 1-butene and a proportion of units derived from ethylene and a hydrocarbon tackifier as cited in the rejection of claim 1, above.
US 450 does not explicitly disclose the film strength of the hot melt adhesive.
However, the prior art encompasses an embodiment that is substantially identical to Applicant’s claimed invention (see the rejections of the claims 1-7, which recite the composition of the claimed hot melt adhesive). One of ordinary skill in the art would readily conclude that such a substantially identical composition encompassed by the prior art would have the same properties as the claimed composition (i.e., film strength).
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 12:
US 450 discloses the hot melt adhesive based on a first polyolefin comprising ana proportion of units derived from 1-butene and a proportion of units derived from ethylene and a hydrocarbon tackifier as cited in the rejection of claim 1, above.
US 450 does not explicitly disclose the peel strength at room temperature of a composite of two substrates coated with the hotmelt adhesive.
However, the prior art encompasses an embodiment that is substantially identical to Applicant’s claimed invention (see the rejections of the claims 1-7, which recite the composition of the claimed hot melt adhesive). One of ordinary skill in the art would readily conclude that such a substantially identical composition encompassed by the prior art would have the same properties as the claimed composition (i.e., the claimed peel strength of a composite of two substrates coated with the hot melt adhesive).
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claims 14-15:
US 450 discloses the hot melt adhesive of claim 12, as cited above.
US 450 does not explicitly disclose a method of manufacturing a bandage.
However, US 799 discloses an adhesive tape comprising a carrier and an adhesive, wherein the adhesive is coated at least on one side of the carrier and comprises an olefin polymer and a tackifier resin (Claim 1).
US 799 further discloses that the adhesive tape is usable as a bandage (paragraph [0518]).
US 799 further discloses that the olefin polymer is a copolymer of ethylene and but-1-ene (paragraph [0015]), which is construed to meet the claimed first polyolefin of a proportion of monomer units derived from 1-butene and a proportion of monomer units derived from ethylene.
US 799 further discloses that the tackifier resin is inclusive of hydrocarbon resins, partially hydrogenated hydrocarbon resins, and completely hydrogenated hydrocarbon resins (paragraph [0023-0024]).
US 799 further discloses that the adhesive is prepared and processed from the melt, wherein the adhesive is coated onto both sides of a carrier material to produce a double-sided adhesive tape (paragraph [0071]).
US 799 further discloses that the adhesive is solventless (paragraph [0058]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the hot melt adhesive of US 450 to prepare a bandage by coating both sides of a textile carrier as taught by US 799. The motivation for doing so would have been that US 799 discloses that a suitable use of hot melt adhesives composed of a 1-butene/ethylene copolymer and tackifier is the construction of bandages composed of textile carriers. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Therefore, it would have been obvious to combine US 799 with US 450 to obtain the invention as specified by the instant claim.
Regarding instant claim 18:
US 450 further discloses that while the amorphous polypropylenes can be homopolymers of propylene, it is within the purview of the invention to use substantially amorphous products based on propylenes copolymerized with olefins (col. 3, lines 54-58).
Such a disclosure is construed to encompass an embodiment wherein a hot melt adhesive comprises a second polyolefin composed of a blend of amorphous propylene homopolymer and amorphous propylene-based copolymer.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 450 in view of US 799 as applied to claim 1 above, and further in view of Minami et al. (US Patent Application Publication No. US 2005/0119428 A1) (US 428).
Regarding instant claim 10:
US 450 in view of US 799 discloses the bandage containing the hot melt adhesive comprising the 1-butene copolymer of claim 1, as cited in the 35 U.S.C. §103 rejection above.
US 450 in view of US 799 does not explicitly disclose the elongation at break of the hot melt adhesive.
However, US 428 discloses a hot-melt adhesive containing a 1-butene-based polymer (paragraph [0001]).
US 428 further discloses that 1-butene-based polymers having an elongation at break of 100% or more have excellent tenacity (paragraph [0022]). The elongation at break recited by US 428 includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the hot-melt adhesive comprising the 1-butene copolymer of US 450 has the elongation at break taught by US 428. The motivation for doing so would have been to ensure that the hot-melt adhesive composition has excellent tenacity.
Therefore, it would have been obvious to combine US 428 with US 450 in view of US 799 to obtain the invention as specified by the instant claim.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US 450 in view of US 799 as applied to claims 1 and 11 above, and further in view of Berry (US Patent No. 4,414,970) (US 970).
Regarding instant claim 20:
US 450 in view of US 799 discloses the bandage comprising the woven or nonwoven textile substrate as cited in the 35 U.S.C. §103 rejection of claims 1 and 11, above.
US 450 in view of US 799 does not explicitly disclose that the textile is elastic in a longitudinal and/or transverse direction.
However, US 970 discloses an elastic bandage comprising at least a fabric, wherein the bandage has a recoverable elastic strength in the length direction (Claim 1) (i.e., the fabric bandage is elastic in at least the longitudinal direction).
US 970 teaches that elastic bandages are used to provide support and to assist in the healing of strained muscles and in the treatment of various venous conditions where it is important to maintain a level of compressive force for considerable periods of time (col. 1, lines 6-11).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use impart elasticity to the fabric of US 450 in view of US 799 as taught by US 970. The motivation for doing so would have been to produce a bandage that can maintain a level of compressive force necessary for various therapeutic processes.
Therefore, it would have been obvious to combine US 970 with US 450 in view of US 799 to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
In response to Applicant’s amendments, the grounds of rejection are altered while relying on the previously cited prior art references. Applicant’s arguments regarding the prior art references of record are fully considered, but are unpersuasive.
Applicant first argues the merits of the newly claimed melt flow rate of the polyolefin. Applicant indicates that US 799 is silent with regard to the melt flow rate. Applicant further argues that US 450 discloses a melt flow rate of 3 to about 5000 g/10 minutes or above, but that US 450 refers to hot melt adhesives used in industry for bonding, joining, or manufacturing various structures and packaging. Applicant further argues that US 450 explicitly mentions that het viscosity should be below 15,000 mPa·s, which is lower than in the present disclosure for the preparation for bandages. Applicant concludes that one of skill in the art would not think to apply the teachings of US 450 to achieve a coated surface that can be easily removed by hand, such as a bandage.
Applicant’s arguments are unpersuasive. In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, US 799 further discloses that the adhesive tape is usable as a bandage, wherein the preparation and processing of the adhesive take place from the melt (paragraph [0084]), which is construed to meet the claimed hot melt adhesive. US 799 further discloses that the carrier material is a textile such as wovens and nonwovens, which is construed to meet the claimed flat web material substrate. US 799 further discloses that the olefin polymer is a copolymer of ethylene and but-1-ene. As both US 450 and US799 disclose adhesives composed of a copolymer of ethylene and butylene, it would have been within the ambit of one of ordinary skill in the art to substitute one for another. Applicant’s argument that the polymers of US 450 are insufficient to produce the bandages of the claims and in US 799 are conclusory and not supported by a reasoned argument and supporting evidence. As to the claimed melt flow rate, the range disclosed by US 450 includes the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05. As to the claimed melt viscosity, US 450 discloses that the hot melt adhesive should possess a viscosity in the range of 500 to about 10,000 for ease of application. If this is within the scope of melt viscosity, then said range overlaps the claimed range. Further, as mapped out above, it would be obvious to one of ordinary skill in the art to optimize, through routine experimentation, the melt viscosity the adhesive composition to obtain ease of application.
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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/TAM/Examiner, Art Unit 1788 05/21/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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