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 .
Claim Rejections - 35 USC § 103
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(s) 1, 3, 7, 9-10 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suen (2014/0027056) in view of Laferte et al. (WO 2019/115952) as evidenced by Jing et al. (2015/0240105).
US 2020/0317962 is being used as an English equivalent to WO 2019/115952 since it is national stage entry of the international application.
Regarding claims 1, 7 and 16-17: Suen teaches a reactive hotmelt adhesive composition [abstract] comprising 40 wt% silane modified polymer Max 951, 20 wt% of acrylate polymer Krystalex 3100, 0.9 wt% 3-methacryloxypropyltrimethoxysilane (claimed c)), and 0.1 wt% silquest A-1110 (claimed d)). Silquest A-1110 is 3-aminopropyltrimethoxysilane (248.35 g/mol) as evidenced by Jing et al. [0038].
0.9 wt% when converted to the claimed significant digits is 1 wt%. See Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1320–21 (Fed. Cir. 2001) where the district court interpreted 0.91 to include the values between 0.905 and 0.914, based on the reasoning that numbers in that range would be rounded to 0.91.
The silane modified polymer of Suen has the following structure:
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Suen teaches that acrylate polymer is present in an amount of 10 wt% [0036]. It would have been obvious to use 10 wt% of Krystalex 3100 in the example of Suen.
Suen fails to teach the claimed formula even though it is within the formula taught by Suen [0018].
However, Laferte et al. teach that Geniosil STP-E10 is a silane modified polymer for hotmelt adhesive compositions [0003; 0068].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Geniosil STP-E10 as taught by Laferte et al. as the silane modified polymer in Suen. It is a simple substitution one known element for another to obtain predictable results.
Regarding claim 3: Suen teaches a polyacrylate [0017; Examples].
Regarding claim 9: Suen teaches 24 wt% tackifier [Examples; Table 1].
Regarding claim 10: Suen teaches 0 to 50 wt% of a filler [0046-0047]. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suen (2014/0027056) and Laferte et al. (WO 2019/115952) as evidenced by Jing et al. (2015/0240105) as applied to claim 1 above as evidenced by Stark et al. (2010/0006217).
Suen teaches Elvacite 2903 [Examples; Table 1] is a copolymer of two different methacrylates as evidenced by Stark et al. [0066 (2971 is clearly a typographical error for 2903)].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 4, 7, 9, 10 and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/692435. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 4/23/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that Suen fails to teach amended polymer a). The applicant amended claim 1 to include the limitations of claim 2. Claim 2 was rejection over Suen in view of Laferte et al. because Laferte et al. teach the claimed polymer a). The applicant has not provided any argument regarding the rejection of Suen in view of Laferte et al.
With regard to the double patenting rejection, the applicant has made the argument that the instant application is the earlier filed application. This is not persuasive because the double patenting rejection is not the only remaining rejection.
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 JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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