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 .
Response to Arguments
Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive.
Specifically, the Applicant argues that Suzuki does not teach art that necessarily comprises the characteristics of claim 1. However, Suzuki does teach a composition that is substantially identical to the composition as claimed and therefore does read on the limitations of claim 1.
The Applicant also argues that because the pressure sensitive adhesive can be pressure bonded at 23C the softening temperature cannot also be in the recited range of 150-300C.
However, the Applicant has not provided evidence in support of this assertion and has not established that the prior art adhesive would have a softening temperature outside the claimed range.
The Applicant argues that if a person of ordinary skill in the art were to apply the property of softening at 200C or higher of Hayashi to Suzuki’s adhesive the Tg of the resin would significantly increase and the adhesiveness at room temperature which the Applicant claims is the purpose of Suzuki would be lost. However, Suzuki does not teach the intended purpose is room temperature adhesion. Therefore, there is motivation to combine the teachings of Hayashi and Suzuki.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki JP2019119872A.
Regarding claims 1 and 3-7, Suzuki teaches a polyester-based adhesive composition containing a polyester having a carboxyl group on a side chain (Abstract).
The composition further comprises an epoxy crosslinking agent (p. 9, lines 17-20). Exemplary crosslinking agents include N,N,N’,N’-tetraglycidyl m-xylene diamine (p. 9, lines 28-29). This reads on an epoxy-based crosslinking agent having two or more tertiary amino groups and two or more epoxy groups.
The molar ratio of the amount of functional groups in the epoxy compound to the carboxyl groups of the polyester resin is preferably 40-150 moles epoxy groups per 100 moles carboxyl groups (p. 11, lines 7-10). Because the crosslinking agent contains 4 epoxy groups, the ratio of moles of epoxy compound to moles of carboxyl groups in the polyester will be 10-37.5 per 100 moles carboxyl groups. This overlaps with the claimed range of 3-30 parts by mole per 100 parts by mole of carboxyl groups of the polyester resin. Suzuki teaches the adhesive composition is heat resistant (Title).
Suzuki teaches that the molar ratio of the amount of functional groups in the epoxy compound to the carboxyl groups of the polyester resin is preferably 40-150 moles epoxy groups per 100 moles carboxyl groups (p.11, lines 7-10). This is equivalent to a ratio of 1:0.4 – 1:1.5 of carboxy group to epoxy group. This overlaps with the claimed range.
Suzuki teaches the crosslinking agent is N,N,N’,N’-tetraglycidyl m-xylene diamine (p. 9, lines 28-29). This reads on the claimed “tertiary amino group and epoxy group contained in the epoxy amino compound form a diglycidyl group.
Suzuki teaches the crosslinking agent is N,N,N’,N’-tetraglycidyl m-xylene diamine (p. 9, lines 28-29). The molecular weight of this compound is 360.4 g/mol. This falls within the claimed range of a molecular weight of less than 800.
Suzuki teaches a transesterification catalyst can be blended into the polyester forming reaction (Page 6 Lines 33-34). Suzuki does not then teach a further purification test to remove the transesterification catalyst. Therefore the resulting crosslinked polyester will comprise residual transesterification catalyst. This reads on the limitations of claim 5.
Suzuki teaches the carboxylic acid component is terephthalic acid (Page 4 Lines 9-15). This reads on the claimed “aromatic polyester.”
Suzuki is silent on the softening temperature of the polyester resin.
However, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness been established. See MPEP 2112.01. Therefore the composition of Suzuki necessarily comprises the claimed softening temperature.
Suzuki teaches the weight average molecular weight is between 10,000 and 100,000 (Page 9 Lines 18-20). However Suzuki is silent on the PDI and the number average molecular weight of the polymer. However, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case obviousness been established. See MPEP 2112.01. Therefore the composition of Suzuki necessarily comprises the claimed PDI. The composition of Suzuki comprising the PDI of 1.3-1.8 and a Mw of 10,000-100,000 would necessarily result in an Mn value of 5,555-76,923. This overlaps with the claimed range of 6000 to 20000.
Suzuki teaches the polyester resin A-1 has an acid value of 70.1 mg KOH / g of material (Page 17 Lines 30-40). It would have been obvious to select A-1 as the polyester resin of Suzuki because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Suzuki teaches the polyester has a molecular weight of 28,900 (Page 17 Lines 30-40). This corresponds to the number of acid groups of 36 because these are divalent acids the number of divalent acids would be 18 this falls within the claimed range of 3-50.
Claims 1 and 6 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Suzuki JP2019119872A in view of Hayashi US 5134028A.
Regarding claims 1 and 6, Suzuki teaches a polyester-based adhesive composition containing a polyester having a carboxyl group on a side chain (Abstract).
The composition further comprises an epoxy crosslinking agent (p. 9, lines 17-20). Exemplary crosslinking agents include N,N,N’,N’-tetraglycidyl m-xylene diamine (p. 9, lines 28-29). This reads on an epoxy-based crosslinking agent having two or more tertiary amino groups and two or more epoxy groups.
The molar ratio of the amount of functional groups in the epoxy compound to the carboxyl groups of the polyester resin is preferably 40-150 moles epoxy groups per 100 moles carboxyl groups (p. 11, lines 7-10). Because the crosslinking agent contains 4 epoxy groups, the ratio of moles of epoxy compound to moles of carboxyl groups in the polyester will be 10-37.5 per 100 moles carboxyl groups. This reads on the claimed range of 3-30 parts by mole per 100 parts by mole of carboxyl groups of the polyester resin. Suzuki teaches the adhesive composition is heat resistant (Title). However, Suzuki is silent on the softening temperature of the polyester resin.
Suzuki teaches that the molar ratio of the amount of functional groups in the epoxy compound to the carboxyl groups of the polyester resin is preferably 40-150 moles epoxy groups per 100 moles carboxyl groups (p.11, lines 7-10). This is equivalent to a ratio of 1:0.4 – 1:1.5 of carboxy group to epoxy group. This overlaps with the claimed range.
Suzuki teaches the weight average molecular weight is between 10,000 and 100,000 (Page 9 Lines 18-20). However Suzuki is silent on the PDI and the number average molecular weight of the polymer. However, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case obviousness been established. See MPEP 2112.01. Therefore the composition of Suzuki necessarily comprises the claimed PDI. The composition of Suzuki comprising the PDI of 1.3-1.8 and a Mw of 10,000-100,000 would necessarily result in an Mn value of 5,555-76,923. This overlaps with the claimed range of 6000 to 20000.
Hayashi teaches a polyester resin (Title). Hayashi teaches the polyester resin is heat resistant (Col. 2 Lines 61-68]). Hayashi also teaches that the polyester resin is a strong adhesive (Col. 2 Lines 61-68). Hayashi also teaches the composition can be formed into a film (Col. 20 Lines 65-66). Hayashi also teaches the composition softens at temperatures above 200C (Col. 10 Lines 60-65). This overlaps with the claimed range of 150-300C.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ Hayashi’s softening temperature as a guideline or target when forming Suzuki’s composition, as this range is shown to be suitable for similar polyester composition used in heat resistant applications. Hayashi teaches that this high temperature softening is what makes the composition of Hayashi heat resistant. It would have been obvious for a heat resistant adhesive of Suzuki to also have a high temperature softening in the range taught by Hayashi. This represents the use of a suitable softening temperature range in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Additionally, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness been established. See MPEP 2112.01. Therefore the composition of Suzuki in view of Hayashi necessarily comprises the claimed softening temperature.
Conclusion
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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