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 .
This office action is in response to the amendment filed 11/17/2025. Claims 1 and 8 are amended; claims 9-10 are withdrawn from consideration as being drawn to non-elected invention; and claim 11 is cancelled. Accordingly, claims 1-10 are currently pending in the application.
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 § 102
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 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 1-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al (US 2016/0009960 A1).
Regarding claims 1-2, and 8, Yamada et al disclose a pressure sensitive adhesive (i.e., reads on the pressure sensitive adhesive in present claim 1) comprising emulsion type acrylic pressure sensitive adhesive comprising an acrylic polymer (abstract). See example 1, wherein the acrylic polymer is prepared by polymerizing a monomer mixture comprising 2-ethylhexyl acrylate, methyl acrylate, methyl methacrylate (i.e., all three read on unsaturated carboxylic acid ester component (B2) other than component A in present claim 1; and ester compounds of (meth)acrylic acid in present claim 8), acrylic acid (i.e., reads on unsaturated carboxylic acid (B1) in present claim 1 and acrylic acid in present claim 8), and diacetone acrylamide. To the monomer mixture is added Adeka® Reasoap SR-10 of formula 10:
PNG
media_image1.png
60
331
media_image1.png
Greyscale
wherein X is a group represented by SO3NH4 (paragraphs 0054 and 0186-0187) and R1 represents an alkyl group (paragraph 0055). It is noted that R1 in Adeka® Reasoap SR-10 is a branched alkyl group having 10-14 carbon atoms and n = 10 (i.e., reads on the component A in present claim 1 wherein X is an ionic hydrophilic group’ “n” = 0 and “m” = 10; “y” = 0; “x” = 1; “z” = 1; “A2” = alkylene group having 2 carbon atoms; R2 and R3 = hydrogen; R1 is hydrocarbon group having 8 to 36 carbon atoms in present claim 1; branched aliphatic hydrocarbon group having 8 to 36 carbon atoms in present claim 2). The polymer may be a copolymer further having constituent derived from another (a3) other than monomers (a1) and (a2). Examples of other monomers include (meth)acrylamide (paragraphs 0049-0050). Hence, it is the Office’s position that diacetone acrylamide in example 1, is an optional monomer and not required (i.e., reads on monomer consisting of A, B1 and B2). The pressure sensitive adhesive, in addition to the polymer comprises a chain transfer agent (paragraph 0026) which reads on chain transfer agent in present claim 1.
Regarding claims 3 and 4, examples of anionic emulsifier include those represented by formula:
PNG
media_image1.png
60
331
media_image1.png
Greyscale
wherein X is a group represented by SO3Na (paragraphs 0054-0055) which read on anionic hydrophilic group in present claim 3; and anionic hydrophilic group in present claim 4 wherein X is SO3M and M represents an alkali metal.
Regarding claim 7, examples of anionic emulsifier include those represented by formula:
PNG
media_image1.png
60
331
media_image1.png
Greyscale
wherein X is a group represented by SO3Na (paragraphs 0054-0055) which reads on component A of general formula (I) wherein “z” = 1.
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.
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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al (US 2016/0009960 A1) in view of Gota et al (US 6,841,655 B1).
The discussion with respect to Yamada et al in paragraph 6 above is incorporated here by reference.
Yamada et al differ with respect to the species of component A.
However, Gota et al teach surfactants represented by formula:
PNG
media_image2.png
61
324
media_image2.png
Greyscale
wherein R1 represents a branched aliphatic hydrocarbon group, AO and AO’ each independently represent an oxyalkylene group having 2 to 4 carbon atoms, “x” = 1 to 10, L represents a group represented by formula:
PNG
media_image3.png
55
168
media_image3.png
Greyscale
wherein R2 and R3 each independently represent a hydrogen atom or a methyl group, “x” is an integer from 0 to 12, “y” is 0 or 1, and X is a hydrogen atom or ionic hydrophilic group (abstract). Among the branched aliphatic group those having 8 to 36 carbon atoms are preferred (col. 3, lines 6-7 and 57-60). The ionic group is cationic or anionic (col. 5, lines 33-36). Illustrative of the cationic hydrophilic group “X” are those represented by formula: -R7-NR8R9R10.Y wherein Y represents a halogen atom or a methyl sulfuric group, R7 represents an alkylene group having 1 to 4 carbon atoms, R8, R9 and R10 each represents an alkyl group having 2 to 4 carbon atoms or benzyl group (col. 6, lines 7-28). The polymerization degree “m” is preferably 2 to 100 (col. 4, lines 17-23) and “n” is preferably 0 to 100 (col. 4, lines 37-39). The surfactants can be used as emulsifiers for improving adhesion properties (col. 8, lines 49-59). Examples of surfactants wherein X is an anionic hydrophilic group include that represented by formula:
PNG
media_image4.png
62
334
media_image4.png
Greyscale
(col. 16, lines 30). Case law holds that selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).Therefore, in light of the teachings in Gota et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to use the surfactant with cationic hydrophilic groups such as -R7-NR8R9R10.Y because of the equivalence of anionic hydrophilic group of Yamada et al and cationic group of Gota et al, for above mentioned advantages of improves adhesion.
Response to Arguments
The objections, and rejections under 35 U.S.C. 101, 112(b), 102 and 103 as set forth in paragraphs 5, 7, 9, 12, and 16, of office action mailed 7/18/2025, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this office action, necessitated by amendment.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. 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.
/KARUNA P REDDY/Primary Examiner, Art Unit 1764