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 .
Response to Amendment/Arguments
Predicated on an indication of allowable subject matter in claims 23 and 29, Applicants amended each of these claims to place them in independent form. However, the Examiner has since concluded that an indication of patentable subject matter in claim 23 was premature/erroneous and claim 29 had been mistakenly listed among the claims containing allowable subject matter and, in fact, was included in a statement of rejection over Tayanagi. Further, an updated/modified survey of the prior art yielded an additional disclosure that also forms a basis for rejection. To the extent that these issues were avoidable mistakes, and Applicant wasn’t previously given the opportunity to consider positions taken herein, this Office action will NOT be made final.
Claim Rejections - 35 USC § 102
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 23 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tayanagi, JP 3473049 for the reasons outlined in the previous Office communication and as evidenced by the attached document entitled “Thermal Transitions of Homopolymers: Glass Transition (Tg) & Melting Point ™ Temperatures”.
Tayanagi discloses as suitable embodiments of prior art component (B) in [0034-0040] fluoroolefin/vinyl ether copolymers where there are seven named fluoroolefins and favored vinyl ether compounds are outlined in the first two lines of [0039]. It is well-established that the glass transition temperature of copolymers is intermediate of the magnitude of the Tg values of the respective homopolymers. That is to say, if a homopolymer of monomer A has a Tg of, for instance, -45° C and that derived from a monomer B has a Tg of -10° C, than a random copolymer of the two will have glass transition temperature in between these. In this connection, Applicant is encouraged to review the attached NPL disclosure that summarizes the glass transition temperature of various homopolymers including those of methyl-, ethyl- and butyl vinyl ether and also vinylidene fluoride, each of which has a Tg of between 0 and -60° C. Likewise, the Tg of poly(vinylidene fluoride), which is a homopolymer of one the seven fluoroolefins identified in [0034] is -40° C. Hence, a copolymer of vinylidene fluoride with any of the several vinyl ether compounds alluded to in [0039] will inherently possess a glass transition temperature within the specified range.
Concerning claim 29, the Examiner had earlier pointed out that the prior art composition has utility as a hot melt PSA [0032] and any article onto which it is coated will be anticipatory of the invention defined by claim 29.
Claim 29 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kohl et al., U.S. Patent Application Publication No. 2015/0027637.
Kohl et al. teach a two-part, moisture-curable hot melt adhesive comprising a silylated polymer selected from silylated polyethers, polyolefins, or polyacrylates (abstract). To the composition may be added a curing catalyst selected from those outlined in [0027]. In the exemplification summarized in [0047], there is no express mention of a catalyst but, on the other hand, the composition whose makeup is described therein contains an amine-functional silane adhesion promoter, which one of ordinary skill recognizes as auto-catalytic. Indeed, amine compounds are among the classes of compound disclosed in association with the cure catalyst and, in fact, amine-functional silane adhesion promoters are the last type of catalyst mentioned in that passage. As for the requirement for a poly(vinyl ether compound), this category of polymer material is mentioned as suitable permutation of a water-soluble/swellable thickening agent in [0031].
Any article/substrate to which the prior art hot melt composition is applied is anticipatory of claim 29.
Claim Rejections - 35 USC § 103
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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kohl et al., U.S. Patent Application Publication No. 2015/0027637 in view of Imai et al., U.S. Patent # 4,001,159 and the product data sheet for Polysciences product No. 03032.
Kohl, it is acknowledged, only mentions poly(vinyl ether) compounds in a cursory manner and, therefore, is not anticipatory of a poly(vinyl ether) with a particular glass transition temperature. The Examiner takes notice, though, of the fact that poly(vinyl methyl ether) and methyl vinyl ether-maleic anhydride copolymer are two familiar, commercially-available, embodiments of a polyvinyl ether-based thickener, the former of which conforms with the glass transition temperature limitation whereas the latter does not. The Examiner submits that the employment of either of these would be obvious, particularly insofar as the empirical data in Applicants’ Specification is not designed to demonstrate the glass transition temperature limitation to be especially critical to the practice of the instant invention. Rather, the comparative trials are simply devoid of any poly(vinyl ether compound).
The Examiner attaches as evidence the documented provision of poly(methyl vinyl) ether thickener in an olefin/acrylate-based copolymer composition. See column 5, lines 30-31 of Imai. See also the product data sheet for Polysciences product data no. 03032, which is poly(vinyl methyl ether) aqueous solution having application as a rheology modifier.
Simply as a means of potentially advancing prosecution, Applicant is reminded of discussions that were had in which Applicant’s representative had submitted for the Examiner’s consideration a new claim intended to overcome Tayanagi. That proposal was accompanied by a shift in the dependency of most of the dependent claims from claim 19 to the new claim. The Examiner simply wishes to reiterate that it was determined that Kohl, in addition to claims 23 and 29 was also found to teach the subject matter of most of the proposed claims, save for claims 19, 22 and 25. Of course, claims 17-18, 20-22, 24-28, and 30-31 are presently allowed given that neither Tayanagi nor Kohl contemplates a tackifying resin as claim 19 requires nor was it clear why one of ordinary skill would have been motivated to incorporate one into either of these two compositions.
Allowable Subject Matter
Claims 17-22, 24-28, and 30-31 are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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January 19, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765