Prosecution Insights
Last updated: April 19, 2026
Application No. 18/021,301

PRESSURE-SENSITIVE ADHESIVE COMPOSITION

Non-Final OA §103§112
Filed
Feb 14, 2023
Examiner
DESAI, ANISH P
Art Unit
1788
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Tesa SE
OA Round
1 (Non-Final)
44%
Grant Probability
Moderate
1-2
OA Rounds
3y 9m
To Grant
52%
With Interview

Examiner Intelligence

Grants 44% of resolved cases
44%
Career Allow Rate
309 granted / 709 resolved
-21.4% vs TC avg
Moderate +8% lift
Without
With
+8.5%
Interview Lift
resolved cases with interview
Typical timeline
3y 9m
Avg Prosecution
37 currently pending
Career history
746
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
45.0%
+5.0% vs TC avg
§102
15.1%
-24.9% vs TC avg
§112
31.2%
-8.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 709 resolved cases

Office Action

§103 §112
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. Information Disclosure Statement The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. Election/Restrictions Applicant's election with traverse of Group I, claims 1-7 in the reply filed on March 9, 2026 is acknowledged. The traversal is on the ground(s) that any search of Group I would encompass and surpass groups 2-3. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I- III do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth on pages 3-4 of the previous Office Action. The requirement is still deemed proper and is therefore made FINAL. The examiner further submits that upon reconsideration of the restriction requirement, the restriction requirement between Group I, claims 1-7 and Group II, claim 8 is withdrawn . Accordingly, claim 8 is examined with claims 1-7 in the current OA. Claims 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 9, 2026. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claims 2, 4, 5, 6, and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention . As to claim 2, this claim at line 2 recites “monomers a)”. It is unclear whether this recitation refers to additional monomers or further refers to “a) 45-75 wt % of at least one monomer selected…2-octyl acrylate” as set forth in the parent claim 1. For purpose of the examination, the aforementioned recitation in claim 2 is interpreted as referring to 60-70 wt % of the (a) “at least one monomer selected from the group consisting of…2-octyl acrylate” of claim 1. As to claim 4, this claim recites “the monomer composition comprises monomers b) at total of 27 to 35 wt %”. It is unclear whether this recitation refers to additional monomers or further refers to “b) 24-50 wt % of at least one alkyl (meth)acrylate…4 carbon atoms”. For purpose of the examination, the aforementioned recitation in claim 4 is interpreted as total amount of the (b) “at least one alkyl (meth)acrylate…4 carbon atoms” in the monomer composition is 24-35 wt %. As to claim 5, this claim recites “a copolymer which can be traced back to…0.5 to 10 wt % of acrylic acid”. It is unclear whether the copolymer recited by “a copolymer” is additional copolymer or further refers to the copolymer of claim 1. For purpose of the examination, claim 5 is interpreted as the pressure sensitive adhesive of claim 1 includes 40-80 wt % of the at least one copolymer of claim 1. As to claim 6, this claim recites “the peel adhesion-boosting resin”. This claim depends from claim 1, wherein claim 1 recites “at least one peel adhesion-boosting resin”. Therefore it is unclear whether the recitation “the peel adhesion-boosting resin” refers to “at least one peel adhesion-boosting resin” of claim 1. As to claim 7, this claim recites “peel adhesion-boosting resin”. This claim depends from claim 1, wherein claim 1 recites “at least one peel adhesion-boosting resin”. Therefore it is unclear whether the recitation “peel adhesion-boosting resin” refers to “at least one peel adhesion-boosting resin” of claim 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. Claim(s) 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hardy et al. (US 20100151241 A1) . As to claim 1, Hardy discloses a pressure-sensitive adhesive (PSA) (0002). The PSA of Hardy includes a copolymer comprising (a) 60 wt % to less than 90 wt % of 2-octyl (meth)acrylate, which is inclusive of 2-octyl acrylate of claim 1 (0005, 0009-0010, and claim 10), (b) from 10 to 39.5 wt % of butyl (meth)acrylate (at least one alkyl (meth)acrylate whose alcohol component has 1 to 4 carbon atoms) (claim 10), and from 0.5-10 wt % of (meth)acrylic acid, which is inclusive of acrylic acid of claim 1 (0005 and claim 10). Moreover, as to claim 1, Hardy discloses that the PSA includes tackifier resin (at least one peel adhesion boosting-resin ) (0047). As to claimed range of 45-75 wt % of at least one monomer selected from the group consisting of isoamyl acrylate, n-heptyl acrylate, and 2-octyl acrylate, the claimed range overlaps or lies within the range disclosed by Hardy above (60 wt % to less than 90 wt % of 2-octyl acrylate) such that a prima facie case of obviousness exists. See MPEP 2144.05 (I). As to the claimed range of 24-50 wt % of at least one alkyl (meth)acrylate whose alcohol component has 1 to 4 carbon atoms, the claimed range overlaps or lies within the range disclosed by Hardy above (10 to 39.5 wt % of butyl (meth)acrylate) such that a prima facie case of obviousness exists. See MPEP 2144.05 (I). As to claim 1, in l ight of the overlap between the claimed PSA and that disclosed by Hardy, it would have been obvious to one of ordinary skill in the art to use a PSA that is both disclosed by Hardy and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention . As to claims 2 and 3, Hardy as set forth previously discloses 60 wt % to less than 90 wt % of 2-octyl acrylate. As to claim 4, Hardy as set forth previously discloses 10 to 39.5 wt % of butyl (meth)acrylate). As to claims 5 and 7, Hardy discloses 1 parts to about 300 parts by weight of tackifying resin per 100 parts by weight of the acrylate copolymer (0048). Thus, calculated wt % of the tackifying resin in the PSA composition of Hardy is 1/301 * 100 or 0.33 wt % to 300/400 * 100 = 75 wt % and balance acrylic copolymer is 25 wt % to 99.67 wt %. The claimed ranges of the acrylic copolymer and the tackifying resin overlaps or lie within the ranges disclosed by Hardy, such that a prima facie case of obviousness exists. See MPEP 2144.05 (I). As to claim 6, Hardy discloses rosin and polyterpene resins (0047). As to claim 8, Hardy discloses adhesive tape having a backing or substrate (carrier material) and the PSA on one outer side of the backing or substrate (0057) Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Product information “2-Octyl Acrylate (2-OA)” from BASF, Sanderson et al. (US 4077926) discloses a PSA. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT ANISH P DESAI whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-6467 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon-Fri 8:00 am ET to 4:30 PM ET . 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, FILLIN "SPE Name?" \* MERGEFORMAT Alicia Chevalier can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1490 . 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. /ANISH P DESAI/ Primary Examiner, Art Unit 1788 March 29, 2026
Read full office action

Prosecution Timeline

Feb 14, 2023
Application Filed
Mar 29, 2026
Non-Final Rejection — §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
44%
Grant Probability
52%
With Interview (+8.5%)
3y 9m
Median Time to Grant
Low
PTA Risk
Based on 709 resolved cases by this examiner. Grant probability derived from career allow rate.

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