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 .
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.
3. Claims 19, 23-26, 28, 31 have been amended, claims 1-18, 22, 27, 29-30, 33 have been cancelled, claims 34-36 have been withdrawn and claims 19-21, 23-26, 28, 31-32, 34-36 are pending as amended on 12/19/25.
4. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application is a 371 of PCT/EP2021/073515 08/25/2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application EP 20305951.4 08/26/2020 EP 20306087.6 09/24/2020 filed on 02/22/23.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/25 has been entered.
Response to Amendment
8. Applicant's amendment filed on 12/19/25, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claims 23-26, 28-31 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph filed on 12/19/25, have been fully considered but are moot in view of amendment. The previous rejections have been withdrawn.
10. Applicant's arguments with respect to the rejection of claims 19-21, 32-33 under 35 U.S.C. 103 as being unpatentable over Schroeyers (US 2011/0104487) filed on 12/19/25, have been fully considered but are moot in view of amendment. The previous rejections have been withdrawn.
Claim Interpretation
Regarding claims 23-26, 28, 31, it has been noted that independent claim 19 recites several copolymer(s) (a) and copolymer(s) (b). Originally claims 23-26, 28, 31 were depends from now cancelled claim 22. The amended claim 19 does not contains any features of cancelled claims 22. As such there is confusion to know exactly which copolymers have been directed to dependent claims 23-26, 28, 31. Claims 23-26, 28, 31 are rejected under 112. However, no prior art rejection can be applied.
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 applicant regards as his invention.
Claims 23-26, 28, 31 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.
Claim 23 recites the limitation "linear styrene block copolymer(s) (a) and linear styrene block copolymer(s) (b)" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claims 24-25 recites the limitation "copolymer (a)” and “copolymer (b). There is insufficient antecedent basis for this limitation in the claim.
Claims 26, 28, 31 recites the limitation "copolymer(s) (a)” There is insufficient antecedent basis for this limitation in the claim.
It has been noted that independent claim 19 recites several copolymer(s) (a) and copolymer(s) (b). Originally claims 23-26, 28, 31 were depends from now cancelled claim 22. The amended claim 19 does not contains any features of cancelled claims 22. As such there is confusion to know exactly which copolymers have been directed to dependent claims 23-26, 28, 31. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 19-21, 32 are rejected under 35 U.S.C. 103 as being unpatentable over Yuta (WO 2020/040175)
Regarding claims 19-21, Yuta discloses a hot melt adhesive composition comprising copolymer comprising from 30 to 80 wt% of aromatic vinyl monomer such as styrene with the shore A hardness 63 or less (para [0014], [0018]-[0019]), overlapping instant claim 19 range of 5 to 35 wt% and encompassing claim 19 range of shore hardness A of 60 or less or claim 20 range of shore hardness A of 50 or less, wherein the polymeric composition is 100% SIS (styrene-isoprene-styrene) (para [0147]-[0148]). Yuta further discloses tackifying agent in an amount of 23.1 wt% to 80 wt% (from 30 to 400 parts by weight per 100 parts by wight of the copolymer; para [0125]), encompassing claim 19 range of 40 to 65 wt%. and softener (read on plasticizer) 9.1 to 77.8 wt% (from 10 to 350 parts by weight per 100 parts by wight of the copolymer; para [0126]), encompassing claim 19 range of 15 to 40 wt%, wherein the composition does not contain propylene-based polymer.
A prima facie case of obviousness exists for the hot melt adhesive composition, where of aromatic vinyl monomer such as styrene is 30 to 80 wt%, overlapping the requirement of claim 19, the shore A hardness 63 or less, tackifying agent in an amount of 23.1 wt% to 80 wt%, and softener in an amount of 9.1 to 77.8 wt%, encompassing the requirements of claims 19-20. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). MPEP 2111.01
Regarding claim 32, since claimed hot melt adhesive composition is obvious over Yuta, the properties of the composition such as Brookfield viscosity would be necessarily be the same as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Conclusion
References Hisasue (EP 3098242), Schroeyers (US 9879160), Tapio (WO 2020/121278), Ishii (EP 3842504), Abba (US 2009/0264580), Curry (US 2013/ 0130027), Hatfield (US 2005/0013996), Admed (EP 2066758) were cumulative in nature to the above rejection and thus not set forth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766