DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed on October 10, 2025 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has been timely paid, the finality of the previous Office action mailed on July 7, 2025 (“previous OA”) has been withdrawn pursuant to 37 CFR 1.114. Applicant’s amendment filed on October 10, 2025 (“amendment”) has been entered.
Support for the amendment to claim 1 can be found on page 20 of the specification.
The rejection of claim 1-6 and 9 under 35 USC 112(a) as set forth in the previous OA is maintained.
The rejection of claims 1-6 and 9 under 35 USC 112(b) as set forth in the previous OA is withdrawn.
In view of the amendment to claim 1, the rejection of claims 1-5 and 9 under 35 USC 103 as being unpatentable over Dollase et al. (US 20150037559 A1) and as evidenced by (a) product data sheet “RESIN PRODUCTS” from Belges Materials Supply and (b) product data sheet “POLYMERS PRODUCT GUIDE” from Kraton Corporation, as set forth in the previous OA is withdrawn. Dollase does not disclose the terpene phenolic resin having an OH number and a softening temperature as claimed.
In view of the amendment, a new rejection under 35 USC 112(d) for claim 9 is introduced.
In view of the amendment, a new rejection under 35 USC 103 over Dollase et al. (US 20150037559 A1) in view of Zollner et al. (US 20100104864 A1), and as evidence by product data sheet “POLYMERS PRODUCT GUIDE” from Kraton Corporation is introduced.
Claim Objections
Claims 1-3 are objected to because of the following informalities:
As to claim 1, at line 5, replace the recitation “the pressure-sensitive adhesive” with “the layer of pressure-sensitive adhesive” to provide consistency with the recitation “a layer of pressure-sensitive adhesive” first mentioned at line 4.
Further, as to claim 1, replace “the OH number” with “an OH number”.
As to claim 2, at lines 1-2, replace “pressure-sensitive adhesive” with “the layer of pressure-sensitive adhesive”.
As to claim 3, at lines 1-2, replace “the pressure-sensitive adhesive” with “the layer of pressure-sensitive adhesive”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 1, this claim recites “the at least one poly(meth)acrylate is present…of at least 40 wt%, based on a total weight of the layer of pressure-sensitive adhesive.” It is submitted that while there is support to claim at least 40 wt% of at least one poly(meth)acrylate in combination with at least 5 wt% of at least one polydiene block copolymer (see second full paragraph on page 19), there is no support to claim at least 40 wt% of the at least one poly(meth)acrylate without specifying corresponding amount of the polydiene block copolymer, because “at least 40 wt%” recitation is open ended range that is not supported by the specification.
As to claim 5, this claim recites “at least one copolymer of at least one C5 monomer and at least one C9 monomer”. The specification fails to provide support for the aforementioned recitation.
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 9 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 9 recites that the OH number of the at least one terpene phenolic resin of not more than 100 mgKOH/g and the softening temperature of the at least one terpene phenolic resin of at least 90°C and not more than 140°C. This claim depends from claim 1, wherein claim 1 recites the OH number of not more than 75 mgKOH/g and softening temperature of at least 110°C and not more than 140°C. Therefore, claim 9 fails 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.
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 1-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Dollase et al. (US 20150037559 A1) in view of Zollner et al. (US 20100104864 A1), and as evidence by product data sheet “POLYMERS PRODUCT GUIDE” from Kraton Corporation is introduced.
As to claim 1, Dollase discloses a pressure-sensitive adhesive (PSA) tape comprising a carrier layer and a layer of PSA arranged on the outside in the structure of the adhesive tape (0115). The PSA of Dollase comprises (a) 30-65 wt% based on the total weight of the adhesive, of at least one poly(meth)acrylate, (b) 5-20 wt% based on the total weight of the adhesive, of at least one synthetic rubber (polydiene block copolymer), (c) at least one tackifier compatible with the poly(meth)acrylates, and (d) at least one hydrocarbon resin compatible with the synthetic rubber (abstract, claim 1, 0061-0062). Further, as to claim 1, Dollase discloses that the tackifier resin is terpene phenolic resin (0076).
Further, as to claim 1 limitation “the at least one poly(meth)acrylate is present in the layer of pressure sensitive adhesive at a total concentration of at least 40 wt%, based on a total weight of the layer of pressure-sensitive adhesive”, Dollase as set forth previously discloses 30-65 wt% of at least one poly(meth)acrylate based on the total weight of the adhesive (claim 1 and abstract). Given that the claimed range of at least 40 wt% overlaps or lies within the range disclosed by Dollase (30-65 wt%), a prima facie case of obviousness exists. See MPEP 2144.05 (I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the amount of at least one poly(meth)acrylate as claimed and rendered obvious by Dollase, motivated by the desire to form the PSA of Dollase and Dollase desires poly(meth)acrylate in the formation of the PSA.
As to claim 1, the difference between the claimed invention and the prior art of Dollase is that Dollase is silent as to disclosing the OH (hydroxyl) number and the softening temperature of the terpene phenolic resin.
Zollner discloses a pressure sensitive adhesive comprising a crosslinked polyacrylate (claim 14 and abstract). Zollner further discloses that the PSA comprises tackifier which is compatible with the polyacrylate. Moreover, Zollner discloses that one particularly preferred tackifier is terpene-phenolic resins and/or rosin esters (0089). Additionally, as the specific example of terpene-phenolic resin, Zollner discloses a commercially available tackifier Dertophene® T110 terpene-phenolic resin tackifier, which has a softening point of 110°C and a hydroxyl value of 45-60 (read as 45-60 mg KOH/g by the examiner) (see 0168).
Dollase desires terpene-phenolic resin tackifier with the poly(meth)acrylate (0076). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select any of the commercially available terpene phenolic tackifier resin including Dertophene® T110 disclosed by Zollner and use it in the adhesive of Dollase, motivated by the desire to form the adhesive of Dollase with a suitable tack. Further, selection of known material based on its suitability for its intended use establishes a prima facie case of obviousness. See MPEP 2144.07.
As to claim 2, Dollase discloses this claim at 0062-0066 except for the mean diblock fraction of the polyvinylaromatic-polydiene block copolymers. However, it is submitted that Dollase discloses Kraton D1102 block copolymer (0124). The examiner submits that Kraton D1102 is styrene-butadiene-styrene block copolymer (A-B-A structure) with diblock content of 16% (see page 6 under “KRATONTM D SBS POLYMER GRADES”). Further, the examiner submits that Dollase discloses that the synthetic rubber of the PSA of the invention is a mixture of block copolymers having an A-B, A-B-A, (A-B)3 X or (A-B)4 X construction, and the mixture preferably comprises at least diblock copolymers A-B and/or triblock copolymers A-В-А. (0068). As such, the mixture of Dollase is free of diblock copolymers, such that the diblock fraction is zero and meets “not more than 40 wt%” recitation (“not more than 40 wt%” encompasses less than 40 wt% including zero).
As to claim 3, the disclosure of Dollase regarding claim 2 is incorporated here by reference. Further, as to the claimed mean vinyl fraction of less than 20%, this limitation is interpreted as vinyl fraction of zero. Dollase is silent as to disclosing mean vinyl fraction. Furthermore, no difference is seen between the claimed block copolymer and the block copolymer disclosed by Dollase. Accordingly, it is reasonable to presume that the block copolymer of Dollase would inherently have the claimed mean vinyl fraction.
As to claim 5, Dollase discloses further tackifier resins such as hydrogenated polymers of dicyclopentadiene (0079).
As to claim 9, Zollner as set forth previously discloses Dertophene® T110 terpene-phenolic resin tackifier, which has softening point of 110°C and hydroxyl value of 45-60 (KOH/g) (see 0168).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Dollase et al. (US 20150037559 A1) in view of Zollner et al. (US 20100104864 A1) and as evidence by product data sheet “POLYMERS PRODUCT GUIDE” from Kraton Corporation as applied to claim 1 above, and further in view of Chastek et al. (WO 2021130617 A1; US 20230084764 A1 is relied upon as equivalent document in the rejection).
Dollase is silent as to disclosing claim 6.
Chastek discloses a pressure sensitive adhesive (PSA) tape comprising a flexible backing (carrier layer) and a layer of PSA on the flexible backing (PSA arranged on the outside in the structure of the adhesive tape) (0122 and Figure 1). Further, the PSA of Chastek comprises a block copolymer having a rubbery and glassy segments (polydiene block copolymer) (0039 and 0050) mixed with a (meth)acrylic functional additive (0039). Further, the PSA of Chastek comprises two distinct tackifiers (0039).
Regarding claim 6, Chastek discloses that the flexible backing can be made of any known material suitable for tape backings. Further, Chastek discloses that materials suitable for the flexible backing include acrylic foam such as acrylic-based foam formed using expandable microspheres (polymethacrylate as matrix polymer) (0123).
It would have been obvious to use any carrier including a foam carrier as claimed and rendered obvious by Chastek in the adhesive tape of Dollase, motivated by the desire to form the adhesive tape of Dollase using a foam carrier.
Response to Arguments
Applicant’s arguments submitted in the amendment 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
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/ANISH P DESAI/Primary Examiner, Art Unit 1788
December 30, 2025