DETAILED ACTION
Summary
This is a non-final rejection for application 18/021,014. The amendment in the RCE dated 8 April 2026 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8 April 2026 has been entered.
Election/Restrictions
Claims 2-4, 6-8 and 11 have been amended to incorporate the limitation of Claim 23 which is in Group III, the elected invention. Because of this, the restriction requirement between inventions I and III, as set forth in the Office action mailed on 23 January 2025, is hereby withdrawn and Claims 2-4, 6-8 and 11 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 8 is objected to because of the following informalities:
In Claim 8, please replace “bio-derived carbon content in carbon” with “bio-derived carbon content”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 2-4, 6-8, 11 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over BOLTON (WO-2015195616-A1).
Note: Since Claim 23 is the independent claim, its rejection is listed first. Claims 2-4, 6-8, 11 are included at the end.
Regarding Claim 23, BOLTON teaches a pressure sensitive adhesive that includes at least one natural elastomer and/or synthetic rubber elastomer and a polar phenolic tackifier (Abstract). BOLTON teaches a tape comprising of its pressure sensitive adhesive (Fig. 1; p. 2, lines 13-17). BOLTON teaches that its pressure sensitive adhesive can include block copolymers that are styrene block copolymers of the form A-B or A-B-A and combinations thereof where the elastomeric block ‘B’ can be polyisoprene or polybutadiene (p. 10, line 6-11) which are conjugated dienes. BOLTON exemplifies KRATON D1340 which is a styrene-isoprene block copolymer (Table 1, Table 2). This satisfies the requirement of a styrene-conjugated diene block copolymer base polymer.
BOLTON teaches that its adhesive composition as a storage modulus (G’, 25°C, 1Hz) of about 70,000 to 1,500,000 Pa (p. 14, lines 19-20) which overlaps the 10,000-500,000 Pa range recited by the claim. BOLTON further teaches ranges as narrow as 250,000 Pa or less (p. 14, line 25) and 250,000 or more (p. 14, line 29) with this amount of 250,000 Pa being within the range recited by the claim. BOLTON teaches a measuring frequency of 1 Hz ([0038]), while the claim recites a measuring equivalency of 10 Hz. Because the recited range for the storage modulus is so broad, the overlapping range with the prior art is so large and the difference is frequency is relatively close, a storage modulus within the recited range at the recited frequency is an obvious modification of the invention of BOLTON. BOLTON does not measure the storage modulus of its exemplary compositions, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of BOLTON, if needed, to produce an adhesive layer which has a shear storage modulus within the range of values taught by BOLTON at 1 Hz in its specification that would also be within the ranges recited by the claim at 10 Hz.
BOLTON teaches that its polar tackifier can include a phenolic moiety (p. 2, line 19) which may include two or more hydroxyl groups (p. 2, lines 16-27) and includes polyhydroxylated benzenes which satisfy structures (A-1) or (A-1’) recited by the claim including trihydroxybenzenes (p. 2, lines 31-37) which satisfy the requirement that n and n’ are 3. BOLTON teaches reacting the phenolic compounds with alkenyl compounds having at least 10 carbons and no acidic moieties to form polar tackifiers (p. 4, lines 21-23) and teaches reacting the phenolic compound with the alkenyl compound in such a way as to preserve the hydroxyl functionality of the phenolic group (p. 5, lines 20-28, path ‘b’ to products B and C). BOLTON teaches that is phenolic compound and its terpene reaction may be a 1:1 addition reaction (p. 6, lines 4-5) which results in a 50 mol% presence of structural units represented by structure (A) which is on the boundary of the 10-50 mol% recited by the claim. BOLTON further teaches that in some embodiments, the ratio may not be one to one and there may be two or more terpenes reacting with one phenolic compound (p. 6, lines 5-6) and teaches average phenolic:terpene reaction product ratios of 2:1 to 1:2, or 33-67 mol% of each, this overlaps the 10-50 mol% recited by the claim. BOLTON does not exemplify a terpene-phenol tackifier with 10-50 mol% trihydroxybenzene units, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of BOLTON and create a terpene-phenol tackifier with an amount of trihydroxybenzene that is within the amount taught by BOLTON that is also within the amount recited by the claim. 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). For more discussion see MPEP 2144.05-I.
BOLTON teaches that its composition further comprises at least one nonpolar tackifier (p. 8, line 5; Claim 10). BOLTON teaches that its nonpolar resin can be a rosin ester (p. 8, lines 17-18 and line 28), a polyterpene resin (p. 8, line 20, Table 1, Claim 11) or resins derived from coal tar or petroleum (p. 8, lines 24-25). BOLTON exemplifies a C5 aliphatic resin (Quintone K100) as its non-polar resin (Table 1, Table 2). BOLTON generally teaches that its nonpolar tackifier is present in 8-50 wt% (p. 12, lines 1-4), and claims an amount of nonpolar tackifier of 10-45 wt% (Claim 12). BOLTON teaches that the elastomer component may be present in amounts of 20-65 wt% (p. 12, lines 12-16). This calculates to a range of 100*10/65 to 100*45/20, or 15.3-225 parts of nonpolar tackifier per 100 parts of the elastomeric polymer which overlaps the recited range of 10-100 parts per 100 parts polymer. BOLTON teaches many examples where its nonpolar tackifying resin (K100) is present in amounts of between 20-70 parts per 100 parts of the two elastomeric rubbers (Kraton D1340, CV60) (Table 2, Examples 1-17) which are within the range recited by the claim.
BOLTON generally teaches the recited (T2) resins, the rosin ester (p. 8, lines 17-18 and line 28), a polyterpene resin (p. 8, line 20, Table 1, Claim 11), and resins derived from coal tar or petroleum (p. 8, lines 24-25), but BOLTON does not exemplify one of these recited (T2) resins, exemplifying a C5 aliphatic resin (Quintone K100) as its non-polar resin (Table 1, Table 2) instead, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of BOLTON and use a rosin ester, terpene resin or a petroleum resin as its nonpolar tackifying resin based on the teachings of its specification.
Regarding Claim 24, modified BOLTON teaches the invention of Claim 23. BOLTON teaches that its styrene block copolymers may contain a triblock copolymer such as styrene-isoprene-styrene triblock copolymer (p. 10, lines 15-19).
Regarding Claim 2, modified BOLTON teaches the invention of Claim 23 where BOLTON teaches that its phenolic compound that satisfies Claim 23 may be reacted with a terpene (p. 4, line 25). BOLTON is silent on the Young’s modulus of its terpene-phenolic tackifiers, but BOLTON teaches similar terpene-phenolic compounds that are exemplified in the instant specification. BOLTON teaches that its terpenes are dimers, trimers and higher oligomers of isoprene (p. 4, lines 26-27), requiring at least 10 carbon atoms (p. 4, lines 21-22). BOLTON generally teaches that its terpene phenolic tackifiers have average molecular weights of 200-3000 g/mol, or about 400-800 g/mol or about 500-700 g/mol (p. 6, lines 19-22). Note that all of the exemplary terpene-phenols in the instant specification have Young’s moduli of at least 74 MPa, which is several times higher than the recited limit of 10 MPa, with the only exception being Synthesis Example M which is formed from 90 mol% isoprene monomer (isoprene has 5 carbons). Since BOLTON requires 10 carbon atoms in its terpene, (p. 4, lines 21-22), one would inherently expect that its terpene-phenols would have a Young’s modulus of 10 MPa or higher as is recited by the claim.
Regarding Claim 3, modified BOLTON teaches the invention of Claim 23 where BOLTON teaches that its polar tackifier component is a phenolic compound that satisfies Claim 23 is reacted with an alkenyl compound having at least 10 carbons (p. 4, lines 21-22). The teaching of an alkenyl compound satisfies the requirement of an aliphatic hydrocarbon containing an unsaturated double bond.
Regarding Claim 4, modified BOLTON teaches the invention of Claim 23. BOLTON teaches that its phenolic compound that satisfies Claim 23 may be reacted with a terpene (p. 4, line 25). BOLTON teaches specific reaction schemes for generating terpene phenolic tackifiers (p. 5, lines 14-21; p. 6, lines 4-18).
Regarding Claim 6, modified BOLTON teaches the invention of Claim 23. BOLTON teaches that its phenolic compound that satisfies Claim 23 may be reacted with a terpene (p. 4, line 25). BOLTON generally teaches that its terpene phenolic tackifiers have average molecular weights of 200-3000 g/mol, or about 400-800 g/mol or about 500-700 g/mol (p. 6, lines 19-22) with the narrowest ranges taught by BOLTON being within the recited range of 400-10,000 g/mol.
Regarding Claim 7, modified BOLTON teaches the invention of Claim 23. BOLTON teaches that its phenolic compound that satisfies Claim 23 may be reacted with a terpene (p. 4, line 25). BOLTON teaches that its terpene-phenolic compounds generally have glass transition temperatures of 400-120°C (p. 6, lines 19-25) which is within the recited range of 0-200°C.
Regarding Claim 8, modified BOLTON teaches the invention of Claim 23. BOLTON teaches that its phenolic compound that satisfies Claim 23 may be reacted with a terpene (p. 4, line 25). BOLTON teaches that terpenes are a class of hydrocarbons that are widely occurring in plants and animals (p. 4, lines 25-26) that are dimers, trimers and higher oligomers of isoprene (p. 4, lines 26-27) and teaches many specific terpenes of biologic origin (p. 4, lines 31-38) BOLTON teaches reaction product ratios between its phenolic compound and terpene of between 2:1 and 1:2 (p. 6, lines 17-18), or 33-67 mol% terpene. Isoprene has five carbons, so terpenes that are dimers of isoprene have ten carbons. A simple trihydroxybenzene that satisfies the A-1 or A-1’ structural requirement of Claim 23 has six carbons. A 33-67 mol% of a bioderived dimer of isoprene reacted with trihydroxybenzene calculates to % of carbons deriving from the biologic terpene of 45-77% which is well above the recited limit of 10%. Note that the use of terpenes that are trimers and higher oligomers of isoprene would increase that percentage. BOLTON is silent on whether its exemplary terpene-phenolic resins are ultimately bioderived but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of BOLTON, if needed, and use terpenes of biologic origin in the synthesis of its terpene-phenol tackifiers, based on the teaching of its specification.
Regarding Claim 11, modified BOLTON teaches the invention of Claim 23. BOLTON teaches that its phenolic compound that satisfies Claim 23 may be reacted with a terpene (p. 4, line 25). BOLTON teaches that in the addition reaction between a terpene and a phenol, that two or more terpenes may react with one phenolic compound (p. 6, lines 5-6) and that its phenolic compound may have more than one potential reactive site (p. 6, lines 7-8). The case where two or more terpenes reacted to the phenolic compound would place the phenolic compound in the backbone structure. The case where one terpene would react with a phenolic compound would place the phenolic compound in the terminal of the backbone. Either of which would satisfy the claim.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over BOLTON (WO-2015195616-A1) in view of NISHIKAWA (US-20150079385-A1).
Regarding Claim 25, modified BOLTON teaches the invention of Claim 23 above where BOLTON teaches that its pressure sensitive adhesive can include block copolymers that are styrene block copolymers of the form A-B or A-B-A and combinations thereof (p. 10; lines 6-11). BOLTON does not teach the diblock proportion of its styrene elastomer component. NISHIKAWA, in an invention of a pressure-sensitive adhesive sheet (Abstract) containing a base polymer which is block copolymer of a monovinyl-substituted aromatic compound and a conjugated diene compound (Abstract) which can be a styrene-based block copolymer ([0025]) and a tackifier component which can be terpene-phenol resin ([0039]), teaches that base polymer can have triblock and diblock components ([0024]). NISHIKAWA teaches that its base polymer preferably comprises 30 mass% or more of the diblock copolymer, preferably 40% or 50% or 60% or more ([0030]). NISHIKAWA exemplifies QUINTAC 3520 which has a diblock fraction of 78% ([0206]) which satisfies the claim. NISHIKAWA teaches that higher diblock produces tight adhesion to an adherend increasing the peel strength ([0030]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of BOLTON with the teachings of NISHIKAWA and use a styrene-based block copolymer with a diblock content of 50% or 60% or more for the purpose of producing tight adhesion to an adherend and increasing the peel strength.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over BOLTON (WO-2015195616-A1) as evidenced by EICHLER (US-20180362822-A1).
Regarding Claim 26, modified BOLTON teaches the invention of Claim 23 above where BOLTON teaches styrene block copolymers including styrene-isoprene block copolymers (p. 10; lines 6-11) and exemplifies KRATON D1340 (Table 2). BOLTON teaches that the styrene content of its styrene block copolymer is between 5-50 wt% (p. 10, lines 22-24) which overlaps the requirement that the styrene content is 20 wt% or less. BOLTON does not teach the styrene content of its exemplary KRATON D1340 block copolymer. Here, EICHLER is used as an evidentiary refence to teach the styrene content of the KRATON D1340 component taught by BOLTON. EICHLER teaches that KRATON D1340 is 9% styrene (Table 1) which satisfies the claim.
Allowable Subject Matter
Claims 14-15, 18, 20-22, 28 and 30-31 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art, BOLTON (WO-2015195616-A1), cited in the rejections above teaches an adhesive which contains a non-polar tackifier in the recited amount and also a polar tackifier formed from reacting a terpene with a phenol where the phenol may be a trihydroxybenzene in an amount which overlaps the recited amount, but BOLTON does not teach an acrylic base polymer as is recited in Claim 14. EGASHIRA (WO-2019059081-A1), cited in the previous office action, teaches an adhesive with an acrylic base polymer and a tackifier component which may include a rosin ester, polymerized rosin ester, terpene resin, petroleum resin, terpene-phenol resin and suggests that they may be used in combination, but EGASHIRA does not exemplify a terpene phenol and does not teach that its terpene phenol is formed from trihydroxybenzenes in the amount recited by Claim 14. There is not sufficient evidence that one would be motivated to combine the inventions of EGASHIRA and BOLTON, and to make all of the modifications necessary in order to arrive at the invention of Claim 14.
Response to Arguments
Applicant's arguments filed 8 April 2026 have been fully considered but they are not persuasive.
The amendments to Claims 2-4, 6-8 and 11 have changed its preamble and included the limitations of Claim 23. The restriction between Groups I and III is withdrawn and Claims 2-4, 6-8 and 11 have been rejoined.
Applicant argues that BOLTON fails to disclose or suggest a phenol content in amended Claim 14. In response, BOLTON teaches reacting phenols with terpenes, that its phenols may be trihydroxybenzenes as is now required by the amended claims. BOLTON teaches reaction product ratios of phenol to terpene of between 2:1 and 1:2 (p. 6, lines 15-18), which corresponds to a phenol mol% of 33-67 mol%. While BOLTON does not exemplify a terpene-phenol resin based on trihydroxybenzene in the recited amount, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures "including unpreferred embodiments" must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize a terpene-phenol resin based on trihydroxybenzene in the recited amount given that BOLTON teaches one in its specification.
Applicant argues that its specific combination of features provides notably improved fluorine adhesion (adhesion to PTFE) which is not suggested or expected from the combination of references cited in the previous rejections. In response, the evidence does not support that this property is commensurate with the scope of the claims. In particular, Claim 23 does not recite amounts of its T1 component. To the extent that any improvement in fluorine adhesion has been shown, it is limited to exemplary embodiments, and it has not been shown that the improvement would hold over any amount of T1 that could be included in the adhesive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R FOSS whose telephone number is (571)272-4821. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
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 L 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.
/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights