DETAILED ACTION
Applicant’s amendment submitted on June 23, 2026 in response to the Office action (OA) mailed on April 1, 2026 (“previous OA”) have been fully considered.
Support for the amendment to claim 1 can be found in paragraphs 0049-0050 of US Patent Application Publication No. 20230295473 A1 of the present application.
In view of the amendment, the rejection of claims 2, 4, 5, 6, and 7 under 35 USC 112(b) as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims 1-8 are rejected under 35 USC 103 as being unpatentable over Hardy et al. (US 20100151241 A1), as set forth in the previous OA is withdrawn. Hardy does not disclose 24-50 wt% of isobutyl acrylate as monomer b, as claimed in claim 1.
In view of new claim 11, a new ground of rejection under 35 USC 112(a) is introduced.
In view of the amendment, a new rejection under 35 USC 103 over Lipscomb et al. (US 20170037282 A1) in view of Hardy et al. (US 20100151241 A1) is introduced.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 recites open ended range of shear holding power of ≥ 3,000 minutes, which is not supported by the specification. The examiner further submits that Table 3 of the present specification discloses individual data point of holding power. However, this disclosure does not provide support to for the claimed range of shear holding power.
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(s) 1-3, 5-8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lipscomb et al. (US 20170037282 A1) in view of Hardy et al. (US 20100151241 A1).
As to claim 1, Lipscomb discloses a pressure-sensitive adhesive (PSA) composition comprising polymerized units derived from alkyl (meth)acrylate monomers (at least one copolymer which can be traced back to a monomer composition) and a crosslinking monomer comprising at least two terminal groups selected from allyl, methallyl, or combinations thereof (abstract).
Further, as to claimed monomer (a), Lipscomb discloses 2-octyl (meth)acrylate monomer (0025), which includes 2-octyl acrylate (0025 and 0016).
Further, as to claimed monomer (b), Lipscomb discloses that the PSA comprises at least 50 wt% of one or more low Tg monomers (0036 and 0027). As specific examples of the low Tg monomers, Lipscomb discloses monomers such as isobutyl acrylate (0029).
Further, as to claimed monomer (c), Lipscomb discloses that the copolymer comprises 0.5 to 15 parts by weight based on 100 parts by weight total monomer or polymerized units of acid functional monomer such as acrylic acid (0038-0039). Further, Lipscomb discloses that the copolymer comprises less than 1.0 wt% of polymerized units derived from acid functional monomers such as acrylic acid (0039), which overlaps with the claimed range of 0.5-10 wt% of acrylic acid.
Furter, as to claim 1, Lipscomb discloses that the PSA composition contains tackifiers (peel adhesion boosting resin) (0130 and 0136).
As to claim 1, the difference between the claimed invention and the prior art of Lipscomb is that Lipscomb is silent as to disclosing the amount of the monomer (a) of 45-75 wt% of the monomer.
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 (claim 10), and from 0.5-10 wt% of (meth)acrylic acid, which is inclusive of acrylic acid (0005 and claim 10). The claimed range of 45-75 wt% 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).
Lipscomb desires 2-octyl acrylate monomer (0025). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the 2-octyl acrylate monomer of Lipscomb in the amount disclosed by Hardy, motivated by the desire to form the PSA of Lipscomb and Lipscomb further desires 2-octyl acrylate.
As to claim 2, Hardy as set forth previously 60 wt% to less than 90 wt% of 2-octyl (meth)acrylate, which is inclusive of 2-octyl acrylate (0005, 0009-0010, and claim 10). The claimed range of 60-70 wt% overlaps or lies within the range disclosed by Hardy above such that a prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 3, Lipscomb discloses 2-octyl (meth)acrylate monomer (0025), which includes 2-octyl acrylate (0025 and 0016).
As to claim 5, Lipscomb does not explicitly disclose the amount of copolymer as claimed. However, Lipscomb’s adhesive composition includes (meth)acrylic polymer (0021). Absent any new and unexpected results, it would have been obvious to arrive at a workable range of the copolymer including the claimed, motivated by the desire to form the PSA of Lipscomb. Alternatively, 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 range of the acrylic copolymer overlaps or lies within the ranges disclosed by Hardy, such that a prima facie case of obviousness exists. See MPEP 2144.05 (I). it would have been obvious to arrive at a workable range of the copolymer including the claimed from the disclosure in Hardy, motivated by the desire to form the PSA of Lipscomb.
As to claim 6, Lipscomb discloses tackifiers such as rosin esters (0137).
As to claim 7, Lipscomb discloses tackifier amount of from 5 to 50 wt% (0136), which overlaps with the claimed range of 25-50 wt%.
As to claim 8, Lipscomb discloses an adhesive tape comprising e.g. a backing and an adhesive layer disposed on the backing (0148).
As to claim 11, Lipscomb as modified by Hardy do not explicitly disclose claimed property of shear holding power. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). The PSA of Lipscomb as modified by Hardy as set forth previously renders obvious claimed PSA. Accordingly, absent any factual evidence on the record, it is reasonable to presume that the PSA of Lipscomb as modified by Hardy would inherently have the claimed shear holding power.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lipscomb et al. (US 20170037282 A1) in view of Hardy et al. (US 20100151241 A1) as applied to claim 1 above, and further in view of Rehmer et al. (US 5026806).
Lipscomb is silent as to disclosing claim 4.
Rehmer discloses a contact adhesive (column 1, lines 5-10) based on (meth)acrylate copolymers of (a) 5-97.4 wt% of isoamyl acrylate and/or isoamyl methacrylate, (b) from 0-89.9 wt% of (meth)acrylate whose homopolymers have Tg of below -30°C, (c) from 2.5-30 wt% of alpha, beta monoolefinically unsaturated compounds whose homopolymers have Tg of above -30°C, (d) from 0 to 10 wt% of monolefinicallly unsaturated acids and/or their anhydrides, (e) from 0 to 20 wt% of further olefinically unsaturated monomers having one or more of functional groups, and (f) from 0.1 to 5 wt% of a copolymerizable benzophenone derivatives (column 2, lines 25-50).
Further, Rehmer discloses that examples of the alpha, beta monoolefinically unsaturated compounds whose homopolymers have Tg of above -30°C include methyl methacrylate, vinyl acetate, ethyl acrylate, methyl acrylate, and isobutyl acrylate (column 2, lines 60-68). Therefore, a person having ordinary skill in the art would recognize that monomer such as isobutyl acrylate is used in the amount of 2.5-30 wt%. The claimed range of 27-35 wt% of monomer b overlaps with the range disclosed by Rehmer such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
Lipscomb desires isobutyl acrylate monomer (0029). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed amount of monomer b rendered obvious from Rehmer, motivated by the desire to form the copolymer of Lipscomb and to form the adhesive of Lipscomb.
Response to Arguments
Applicant’s arguments submitted in the amendment have been considered but are moot in view of the new ground of rejection as set forth in the current OA.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. DE 102012201913 A1 discloses acrylate based polymer containing adhesive composition.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
July 21, 2026
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