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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 11, 2026 has been entered.
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 – 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over CN 101165123 to Zhang et al. (hereinafter Zhang) in view of US 2016/0037560 to Dollase et al. (hereinafter Dollase), as evidenced by EP 0531788 to Ostrowicki et al. (hereinafter Ostrowicki). For the purposes of examination, citations for Zhang and Ostrowicki are taken from machine translations of the document obtained from the European Patent Office website in September 2025.
Regarding Claim 1. Zhang teaches a pressure-sensitive adhesive [0014] comprising:
an acrylic copolymer that is copolymerized from one or more comonomers selected from alkyl acrylates or alkyl methacrylates [0016], i.e. a poly(meth)acrylate; and
a nitrile rubber constituting 2 – 40 weight percent of the pressure-sensitive adhesive composition [0015] – [0017]. The nitrile rubber may be THERBAN® 1707 [0029]. Ostrowicki provides evidence that THERBAN® 1707 is an acrylonitrile-butadiene copolymer [0032].
Zhang does not teach a tackifier is further included in the pressure-sensitive adhesive. However, Dollase teaches the concept of providing terpene phenolic resins and rosin derivatives, i.e. aromatic hydrocarbon resins, as tackifiers in a pressure sensitive adhesive composition [0076] The tackifier is preferably included in the pressure sensitive adhesive composition in an amount of 7 to 25 weight percent [0077]. Zhang and Dollase are analogous art as they are from the same field of endeavor, namely pressure sensitive adhesive compositions. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include an aromatic hydrocarbon resin as a tackifier in the pressure sensitive adhesive composition of Zhang. The motivation would have been that the Dollas teaches the introduction of such tackifiers in the disclosed amounts function to increase the autohesion, i.e. the tack or inherent stickiness, of the pressure sensitive adhesives in which they are included [0073] – [0077].
Regarding Claim 2. Zhang teaches the pressure-sensitive adhesive of Claim 1 wherein the nitrile rubber may be THERBAN® 1707, which the reference describes as having an acrylonitrile content of 34 weight percent [0029].
Regarding Claim 3. Zhang teaches the pressure-sensitive adhesive of Claim 1 wherein the nitrile rubber may be THERBAN® 1707, which the reference describes as hydrogenated [0029].
Regarding Claim 4. Zhang teaches the pressure-sensitive adhesive of Claim 1 wherein the nitrile rubber may be THERBAN® 1707 [0029]. Ostrowicki provides evidence that THERBAN® 1707 has a Mooney viscosity at 100°C of 70 ME [0032].
Regarding Claim 5. Zhang teaches the pressure-sensitive adhesive of Claim 1 may be cut into strips 1 inch wide and 5 inches long [0040], i.e. it may be prepared in a web form.
Regarding Claim 6. Zhang teaches the pressure-sensitive adhesive of Claim 1 comprises 60 to 98 weight percent of the acrylic/poly(meth)acrylate polymer [0016].
Regarding Claim 11. Zhang teaches an adhesive tape comprising the pressure sensitive adhesive of Claim 1 [0040].
Claims 7 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over CN 101165123 to Zhang et al. (hereinafter Zhang) in view of US 2016/0037560 to Dollase et al. (hereinafter Dollase), as evidenced by EP 0531788 to Ostrowicki et al. (hereinafter Ostrowicki) – as applied to Claim 1 above - and further in view of DE 2017218264 to Lohmann et al. (hereinafter Lohmann). Citations for Lohmann are also taken from a machine translation of the document obtained from the European Patent Office website in September 2025.
Regarding Claims 7 and 8. Zhang teaches the pressure sensitive adhesive of Claim 1 but does not expressly teach it is foamed and/or comprises microballoons. However, Lohmann teaches the concept of foaming pressure sensitive adhesives by adding microballoons thereto [0076]. Zhang and Lohmann are analogous art as they are from the same field of endeavor, namely pressure sensitive adhesives. Before the effective filing date of the instantly claimed invention, it would have been obvious to add microballoons to the composition of Zhang to provide a foamed pressure sensitive adhesive. The motivation would have been that foaming the adhesive with microballoons will result in a reduction in the density of the adhesive [0082], which would reduce the overall weight of articles comprising the adhesive.
Regarding Claim 9. Zhang teaches the pressure sensitive adhesive of Claim 1 but does not expressly teach passing the components thereof through a compound and extrusion apparatus via a continuous process. However, Lohmann teaches the concept of compounding a pressure-sensitive adhesive in a continuous unit which is preferably a twin-screw or planetary roller extruder [0102]. Before the effective filing date of the instantly claimed invention, it would have been obvious to prepare the pressure sensitive adhesive of Zhang in an extruder as taught by Lohmann. The motivation would have been that Lohmann shows that an extruder is a suitable device for the compounding of a pressure sensitive adhesive [0102].
Regarding Claim 10. Zhang teaches the pressure sensitive adhesive of Claim 1 but does not expressly teach it is further used in a method comprising bonding components of an automobile. However, Lohmann teaches the concept of preparing a tape comprising a pressure-sensitive adhesive and using this tape to bond plastic parts in automotive engineering [0097] – [0098]. Before the effective filing date of the instantly claimed invention, it would have been obvious to provide the pressure sensitive adhesive of Zhang in a method of bonding automotive parts as taught by Lohmann. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Lohmann shows that pressure sensitive adhesives are known in the art to be suitably used in methods of bonding components of automobiles [0097] – [0098].
Response to Arguments
Applicant's arguments filed April 29, 2026 have been fully considered. The Office responds as follows:
A) Applicant argues that previously applied secondary reference Melnikova does not teach a pressure sensitive adhesive comprising a tackifier in the newly claimed amount of 8 to 18 weight percent. However, in light of the amendment to independent Claim 1, Melnikova is no longer applied as a secondary reference. US 2016/0037560 to Dollase et al. is relied upon in the new grounds of rejection under 35 U.S.C. 103 to teach the concept of providing a tackifier in the instantly claimed amount.
B) Applicant argues that the presently claimed invention achieves an expected and superior balance of properties by using the presently claimed specific, lower tackifier range of 8 to 18 weight percent in the pressure sensitive adhesive, citing in particular Examples 1 – 6 of the instant specification.
The Office respectfully submits that the data provided in not commensurate in scope with the instant claims. For example, instant Claim 1 sets forth the tackifier is selected from the group consisting of (meth)acrylate resins and aromatic hydrocarbon resins. The claimed (meth)acrylate resins and aromatic hydrocarbon resins each correspond to a large genus of compounds comprising numerous possible species. However, only one species of each genus is tested in the inventive examples, namely PARALOID® DM55 as an acrylate resin and PICCO® AR100 as an aromatic hydrocarbon resin. The data provided is not then sufficient to rebut the prima facie case because the experiments are not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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