DETAILED ACTION
Applicant’s amendment submitted on November 20, 2025 (“amendment”) in response to the Office action mailed on August 22, 2025 (“previous OA”) have been fully considered.
Support for the amendment to claim 1 can be found in the original claims 2, 7, and 16 and support for the amendment to claim 12 can be found in paragraph 0043 of the published application.
In view of the amendment to the specification submitted on November 20, 2025, the objection to the specification as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims under 35 USC 112(b) as set forth in the previous OA is modified.
In view of applicant’s incorporation of subject matter of claims 2, 7, and 16 in claim 1, the rejection of claims 1, 4, 5, and 6 under 35 USC 102(a)(1) as being anticipated by Callahan, Jr. et al. (US 5322731) as set forth in the previous OA is moot.
In view of the amendment, the rejection of claims 1, 2, 5, and 10 under 35 USC 102(a)(1) as being anticipated by Schmitt et al. (US 5412035) is withdrawn.
In view of the amendment, a new rejection under 35 USC 112(b) is introduced.
In view of the amendment, a new rejection under 35 USC 112(d) is introduced.
In view of the amendment, a new rejection under 35 USC 103 over Schmitt et al. (US 5412035) is introduced.
A declaration by inventor Leonard Nelson under 37 CFR 1.132 (“declaration”) is reviewed but the declaration is not found persuasive.
Allowable Subject Matter
Claims 4, 14, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Schmitt et al. (US 5412035).
Schmitt discloses a pressure sensitive adhesive (PSA) composition containing a base resin (polymeric PSA component) and a crystalline polymeric additive (temperature responsive additive) having g a melting point greater than 23°C (abstract and claim 1).
Schmitt is silent as to disclosing claims 4, 14, and 18.
Claim Objections
Claim 7 is objected to because of the following informalities: claim 7 depends from cancelled claim 2. Appropriate correction is required.
For examination, claim 7 is considered to be dependent from claim 1.
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 8, 9, 15, and 17 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 8, this claim recites “the crystalline polymeric additive is a copolymer of C14-alkyl acrylate/C18-alkyl acrylate.” This claim depends from claim 1, wherein claim 1 recites the crystalline polymeric additive is selected from methacrylate or acrylate polymer. Therefore, it is unclear whether the copolymer mentioned in claim 8 is additional copolymer or further defines the methacrylate or acrylate polymer of claim 1.
As to claim 15, this claim recites “the temperature responsive additive, upon application of the heat to the PSA composition, increases the area of the surface of the polymeric PSA component it covers.” This recitation is indefinite, because it is unclear how the additive can increase the area of the surface of the polymeric PSA component. Further, the conditions at which heat is applied is not specified. Therefore, the recitation “upon application of heat” is indefinite.
As to claim 17, this claim recites “the adhesive layer”. There is a lack of antecedent basis with respect to these limitations in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 depends from claim 1, wherein claim 1 recites about 1 wt% to about 3 wt% of crystalline polymeric additive. Claim 7 recites about 0.1 wt% to about 6 wt%, about 1 wt% to about 5 wt%, or about 1 wt% to about 3 wt% of the additive. As such, claim 7 fails to further limit the subject matter of the claim upon which it depends, or fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 3, 5-10, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Schmitt et al. (US 5412035).
As to claim 1, Schmitt discloses a PSA composition containing a base resin (polymeric PSA component) and a crystalline polymeric additive (temperature responsive additive) having g a melting point greater than 23°C (abstract and claim 1). Further, Schmitt discloses that crystalline polymers in which the crystallinity results exclusively or predominantly from side chains which are attached to the polymer backbone. Further, Schmitt discloses that such polymers are often referred to as side chain crystallizable polymer or SCC’s (column 13, lines 5-11). Moreover, Schmitt discloses SCC polymer (crystalline polymeric additive selected from acrylate or methacrylate polymer) formed by polymerization of octadecyl acrylate, butyl acrylate, and acrylic acid (column 20, lines 10-11). A person having ordinary skill in the art would recognize that octadecyl acrylate disclosed by Schmitt meets monomeric unit of formula I, wherein R1 is H (acrylate) and R2 is C18 linear alkyl group.
Further, as to claim 1, , Schmitt discloses that the relative amounts of the PSA component and the additive can vary widely. According to Schmitt, the PSA can for example comprise 1-99% of the PSA component and 1 to 99% of the additive. Further, Schmitt discloses that the PSA component is present in amount 50 to 99%, preferably 65 to 95%, particularly 70 to 90%, especially 70 to 80%, and the additive is present in amount 1 to 50%, preferably 5 to 35%, particularly 10 to 30%, especially 20 to 30% (column 16, lines 10-25). Claimed range of the additive amount (about 1 wt% to about 3 wt%) overlaps or lies within the range disclosed by Schmitt (e.g. 1 to 50%) such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 1, Schmitt is silent as to disclosing property “wherein the crystalline polymeric additive forms crystalline phase-separated nanometer-sized domains”. 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). Given that Schmitt renders obvious claimed PSA composition, absent any factual evidence on the record, it is reasonable to presume that the Schmitt inherently possesses the aforementioned claim property.
As to claim 3, Schmitt does not explicitly disclose acrylic-rubber hybrid. However, Schmitt discloses “Known PSA's which can be used to provide the PSA component in this invention include PSA's based on polymers of one or more acrylic or methacrylic esters; olefin copolymers; polysiloxanes; polyurethanes; polymers of vinyl esters; polyamides; and natural and synthetic rubbers, in particular natural rubber adhesives; styrene/butadiene latex-based adhesives; thermoplastic rubbers of the A-B-A block copolymer type (where A represents a thermoplastic polystyrene end block and B represents a rubber midblock of polyisoprene, polybutadiene or poly(ethylene/butylene)); butyl rubber; polyisobutylene; acrylic adhesives such as polyacrylates and vinyl acetate/acrylic ester copolymers; and polymers and copolymers of vinyl ethers such as polyvinylmethyl ether, polyvinylethyl ether, and polyvinylisobutyl ether. The base polymer in the PSA component may be a single polymer, or a mixture of polymers….” (column 11, lines 40-60). Given that Schmitt discloses that the base polymer can be a single or a mixture of polymers, a person having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to select any one or a mixture of polymers including acrylic and rubber polymers to arrive at the claimed acrylic-rubber hybrid, because Schmitt desires that mixture of polymers are used to form the PSA composition.
As to claim 5, Schmitt discloses the PSA composition comprises solvent (column 15, lines 20-25).
As to claim 6, Schmitt discloses polybutene (PB), Lanolin (LAN), and SCC polymer as additives (see Table on column 19, lines 30-40 to column 20, line 5). However, Schmitt also discloses PSA compositions that are free of PB and LAN (see Table C e.g. Ex A02, A03 etc.).
As to claim 7, Schmitt discloses that the relative amounts of the PSA component and the additive can vary widely. According to Schmitt, the PSA can for example comprise 1-99% of the PSA component and 1 to 99% of the additive. Further, Schmitt discloses that the PSA component is present in amount 50 to 99%, preferably 65 to 95%, particularly 70 to 90%, especially 70 to 80%, and the additive is present in amount 1 to 50%, preferably 5 to 35%, particularly 10 to 30%, especially 20 to 30% (column 16, lines 10-25). Claimed range of additive amount (about 0.1% to about 6 wt%) overlaps or lies within the range disclosed by Schmitt (e.g. 1 to 50%) such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 8, Schmitt does not explicitly disclose this claim. However, Schmitt discloses that preferred additives for use in this invention are polymers comprising 60 to 100% of units derived from at least one monomer selected from the group consisting of alkyl acrylates, alkyl methacrylates, N-alkyl acrylamides, vinyl ethers, and vinyl esters containing 12 to 30, preferably 12 to 22 carbon atoms (column 14, lines 15-25). Given that Schmitt discloses at least one alkyl acrylate monomer containing 12 to 30 or 12 to 22 carbon atoms, absent any unexpected results, a person having ordinary skill in the art would have found it obvious to select an additive polymer having more than one alkyl acrylate monomer including C14 and C18 alkyl acrylate monomers.
As to claim 9, Schmitt does not disclose mole fractions of C14 alkyl acrylate and C18 alkyl acrylate. However, as set forth previously, the disclosure of Schmitt encompasses additive polymer containing C14 and C18 alkyl acrylate monomers. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05 (II)(A). A person having ordinary skill in the art would have found it obvious to select a workable range of C14 alkyl acrylate and C18 alkyl acrylate to form the additive having suitable molecular weight, melting point or glass transition temperature.
As to claim 10, Schmitt’s PSA composition is useful for medical use (column 17, lines 30-35 and lines 54-65). Further, it is submitted that 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). Schmitt teaches PSA composition that is identical to the claimed PSA composition. As such, absent any factual evidence on the record, it is reasonable to presume that the PSA composition of Schmitt is inherently biologically inert.
As to claims 12 and 15, it is submitted that 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). Given that Schmitt renders obvious claimed PSA composition, absent any factual evidence on the record, it is reasonable to presume that the Schmitt inherently possesses limitations of claims 12 and 15.
Response to Arguments
Applicant's arguments submitted in the amendment have been fully considered but they are not persuasive.
First, paragraph 15 of the declaration mentions “temperature sensitive polymer (TSP)”. However, the claimed invention recites “temperature responsive additive is a crystalline polymeric additive”. As such, it is not clear whether the TSP is same as the temperature responsive additive recited in claims. The examiner respectfully submits that applicant has the burden of explaining the data in any declaration. See MPEP 716.02 (b)(II). For purpose of addressing the declaration, the examiner assumes that the TSP is same as the temperature responsive additive.
As to applicant’s argument highlighting paragraphs 16-17 of the declaration on page 7 of the amendment regarding the criticality of crystalline phase-separated nanodomains, the examiner respectfully submits that applicant’s argument is not commensurate in scope with the claimed invention. The claimed invention does not exclude acrylic acid and Mw of the temperature responsive additive is not specified.
Further, as to applicant’s comment in paragraph 15 of the declaration that the present applicant uses a temperature sensitive polymer which is homogeneous copolymer without core-shell enclosure, the examiner respectfully submits that applicant’s argument is not commensurate in scope with the claimed invention. The claimed invention does not require temperature sensitive polymer which is homogeneous copolymer without core-shell enclosure (see claim 1).
As to applicant’s argument referring to paragraph 22 of the declaration on page 9 of the amendment referring to the Mw of the additive disclosed in Schmitt being less than 25,000 not forming the phase separated domains, the examiner respectfully submits the molecular weight of the additive disclosed in Schmitt is not strictly limited to less than 25,000, because Schmitt discloses that the molecular weight is “preferably less than 25,000” (column 14, lines 40-41). The examiner submits that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123 (II).
As to applicant’s arguments referring to paragraphs 24-30 of the declaration on pages 9-10 of the amendment, the examiner respectfully submits that it is unclear how applicant arrives at the conclusion in paragraph 30 of the declaration, based on paragraphs 24-29. It appears that applicant is using a sample “AH-115”. However, it is unclear how the disclosure in paragraphs 25-29 factually establishes that the crystalline polymeric additive of Schmitt cannot inherently form crystalline phase-separated nanometer-sized domains. The examiner respectfully submits that applicant has the burden of explaining the data in any declaration. See MPEP 716.02 (b)(II). The examiner also notes that at present the claimed invention does not recite any molecular weight. Accordingly, applicant’s arguments are not found persuasive.
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.
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 February 23, 2026