DETAILED ACTION
Applicant’s response of November 13, 2025 has been fully considered. Claims 1 and 7 are amended. Claims 1-7 are pending.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Asada et al. (WO 2019/230700). For convenience, the citations below for Asada et al. are taken from English language equivalent US 2021/0222036.
Regarding claims 1, 3, and 4, Asada et al. teaches an oil-in-water emulsion (¶114) comprising a modified conjugated diene rubber having a hydrogen-bonding functional group in a part of the conjugated diene rubber (¶25), where the rubber is preferably a liquid rubber (¶88), and wherein the hydrogen bonding functional group is one or more selected from a hydroxy group, an aldehyde group, an acetalized product of an aldehyde group, a carboxy group, a salt of a carboxy group, an esterified product of a carboxy group, an acid anhydride of a carboxy group, a silanol group, and an esterified product of a silanol group (¶27). The emulsion will contain an oily agent mainly containing a mineral oil (a diluent having a vapor pressure at 20° C of 10 Pa or less; ¶63 of the instant specification describes mineral oil as being an oil which meets this limitation) (¶93, 94). The emulsion also contains water (¶116), an emulsifier (surfactant) (¶120), and sodium hydroxide for pH control (¶122).
While there is not one precise example which includes these components used together, Asada et al. teaches that all of these components may be used together to form the disclosed invention. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to form an oil-in-water emulsion containing a liquid modified conjugated diene rubber, a diluent, water, a surfactant, and sodium hydroxide, as taught by Asada et al., and would have been motivated to do so by a reasonable expectation of success in forming a sufficient adhesive composition using the oil-in-water emulsion.
Regarding claim 2, Asada et al. teaches that the conjugated diene unit of the conjugated diene rubber may include butadiene, isoprene, and/or β-farnesene (¶33).
Regarding claims 5 and 6, Asada et al. teaches that the emulsion contains from 0.5 to 15 parts by mass of a nonionic emulsifier/surfactant such as polyoxyethylene nonyl phenyl ether (¶121, 122)
Regarding claim 7, Asada et al. teaches forming an oil-in-water emulsion containing the claimed components (see above references). The components must be mixed in some way in order to achieve the emulsion; and the diluent (oil) is not removed from the emulsion because it is, in fact, and oil-in-water emulsion.
Response to Arguments
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767