DETAILED ACTION
This Office Action is responsive to the amendment filed on 3/12/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
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.
Response to Amendment
A claim which was previously canceled may be reinstated only by adding a new claim with a new claim number; see 37 CFR 1.121(c)(5).
Applicant’s amendment added two new claims which were assigned the claim numbers 25 and 26; however, it is noted that applicant previously canceled claims 25 to 30 in an amendment submitted on 1/5/2023. As such, the examiner notes for the record that the newly added claims 25 and 26 will be referred to herein as claims 31 and 32, respectively. Applicant is required to correct the numbering of the claims in any future submissions.
Claim Rejections - 35 USC § 103
Claims 1-3, 6-11, 21-23, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al, US2002/0016417 (of record).
The examiner notes that Mayers et al, US2013/0266762 (of record); Parkar et al, US20200362157 (of record); and Tsuru et al, US2008/0192098 (of record), are cited as evidence that Yamaguchi inherently meets claimed limitations.
Yamaguchi discloses a composition comprising a block copolymer a (meth)acrylic monomer, and a polymerization initiator (abstract; ¶0013-0017). Yamaguchi specifically teaches that said block copolymer may be a styrene/isobutylene block copolymer (¶0042), corresponding to the claimed styrene-isobutylene block copolymer (for claim 1). As said (meth)acrylic monomer, Yamaguchi discloses the use of monofunctional (for claim 2) compounds such as benzyl methacrylate and phenoxyethyl methacrylate (¶0045) or polyfunctional (for claim 3) compounds such as bisphenol A dimethacrylate (¶0046). The structures of these compounds are shown below.
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benzyl methacrylate 2-phenoxyethyl methacrylate
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bisphenol A dimethacrylate
Note that these compounds all have structures which contain benzene rings and are therefore aromatic, corresponding to the claimed aromatic ethylenically unsaturated monomer comprising (meth)acryl group(s) (for claim 1).
Regarding the amounts of each component: Yamaguchi teaches that the prior art composition comprises 30 to 79.99 wt% of the block copolymer, overlapping the claimed range (for claim 11), and 20 to 69.99 wt% of the (meth)acrylic monomer, overlapping the claimed range (for claims 1, 31, 32) (¶0062).
Regarding claims 6, 9, 10: As noted above, Yamaguchi teaches that benzyl (meth)acrylate is suitable for use as the (meth)acrylic monomer. Note that benzyl methacrylate has a refractive index of 1.568 (for claim 6) (see Mayers: Table 1) and a log P value of 2.98 (for claims 9, 10) (see Tsuru : Table 1).
Regarding claims 7, 8: As noted above, Yamaguchi teaches that 2-phenoxyethyl methacrylate may be used as the (meth)acrylate monomer. Note that this compound has an HLB value of 5.59 (see Parkar: Table 1B).
Yamaguchi does not specifically disclose the production of a composition wherein the amount of monomer is no greater than 30 wt%.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). As noted earlier in this Action, the prior art range for the amount of (meth)acrylate monomer overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious at the time the invention was effectively filed to prepare a composition comprising a styrene/isobutylene block copolymer and the claimed amount of (meth)acrylate monomer in view of the teachings of Yamaguchi (for claim 1).
Regarding the claimed properties of water vapor transmission rate (for claim 21), haze (for claim 22), modulus (for claim 24) and being an adhesive (for claims 23, 24): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed in the previous paragraphs, the prior art teaches the production of a composition that comprises the same components combined in the same amounts as used to define the claimed invention. As the composition taught by the prior art appears to be the same as the claimed composition, it is reasonably expected that its properties would not be materially different from those of the claimed composition (for claims 21, 22, 24). Furthermore, as the prior art composition is identical to the claimed composition, it is reasonably expected that it would be capable of performing the function of an adhesive (for claims 23, 24). The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art..
Claim(s) 1-3, 11-16, 21-24, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Nakashima et al, US2008/0139734 (of record).
Example 3 of Nakashima (¶0225; Table 1) discloses a composition comprising a SIBS (¶0205; Table 1), corresponding to the claimed SIBS (for claim 1); 3-methacryloxypropyltrimethoxysilane (¶0222; Table 1), corresponding to the claimed ethylenically unsaturated monomer comprising a (meth)acryl group (for claim 1) which is multifunctional (for claim 3); and a petroleum resin as a tackifier (¶0166-0167, 0217, Table 1), corresponding to the claimed additive (for claim 16).
Nakashima further teaches that the prior art composition may comprise a carbon-carbon unsaturated bond-containing component (D) to improve retention of adhesion (0146). Said component (D) may be an aromatic monomer (¶0149), wherein the unsaturated bond is a carbon-carbon double bond CH2=CH2-(¶0150: formula 8) which is bonded to the main structure of the compound through an oxygen atom (¶0152; see species -O-), corresponding to the claimed vinyl ether group (for claim 1). The prior art component (D) therefore reads on the claimed aromatic ethylenically unsaturated monomer (for claim 1). Note that component D is only required to contain one unsaturated group and therefore is monofunctional (for claim 2).
Regarding the amount of monomer: The composition of Example 3 contains about 3.3 parts ethylenically unsaturated monomers as component (I) (see Table 1).Nakashima exemplifies the inclusion of component (D) in amounts in the range of 10 parts or less (see Tables 2-5). Addition of component D to the composition of Example 3 would therefore results in an ethylenic monomer content of up to 13.3 parts. Based on the amounts of the other components reported in Table 1, this would be a content of ethylenic monomers up to about 4.7 wt% (for claims 1, 31, 32).
Regarding claim 11: Based on the amounts of all components listed in Table 1, it is calculated that the SIBS content of Nakashima’s Example 3 is equal to [30/(100+30+70+1.2+40+20+10+.3+3)] × 100, which is about 10.9 wt%.
Regarding claims 12, 13: The composition of Nakashima’s Example 3 further comprises an isobutylene-based copolymer APIB (¶0203; Table 1); note that styrene was not used as a monomer in the production of APIB (¶0196). The prior art APIB therefore corresponds to the claimed second polyisobutylene polymer (for claim 12). As reported in Table 1, the prior art composition comprises 10 parts APIB and 30 parts SIBS; the weight ratio of SIBS to APIB therefore is 30: 100, i.e. about 1: 3.33 (for claim 13).
Regarding claim 14: As discussed earlier in this Action, Nakashima discloses a composition comprising a SIBS as a thermoplastic resin, 3-methacryloxypropyltrimethoxysilane, a petroleum resin as a tackifier, and an isobutylene-based copolymer APIB. Nakashima further teaches that the thermoplastic resin is included in an amount in the range of 1 to 300 parts by weight per 100 parts of the isobutylene-based resin (¶0126). The weight ratio of SIBS to isobutylene-based resin therefore ranges from 1: 100 to 300 :100; i.e. 0.01:1 to 3:1, overlapping the claimed range (for claim 14).
Regarding claim 15: “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Nakashima is silent regarding the weight average molecular weight of the isobutylene polymer; however, the prior art teaches that the isobutylene polymer has a number average molecular weight of 1000 to 500000 (¶0086). One of ordinary skill in the art will recognize that a polymer’s weight average molecular weight is necessarily greater than or equal to its number average molecular weight. As such, it is reasonably inferred that the weight average molecular weight of the isobutylene polymer is greater than or equal to 1000, overlapping the claimed range (for claim 15).
Nakashima does not specifically disclose the production of a composition comprising aromatic ethylenically unsaturated monomer containing a (meth)acryl group or a vinyl ether group.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07). As noted above, Nakashima teaches the use of compounds corresponding to the claimed aromatic monomer as component (D), which is added to improve retention of adhesion. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Nakashima’s example 3 by adding component (D) to improve retention of its adhesive properties.
Regarding the claimed properties of water vapor transmission rate (for claim 21), haze (for claim 22), modulus (for claim 24) and being an adhesive (for claims 23, 24): As discussed in the previous paragraphs, the prior art discloses a composition which appears to be identical to the claimed composition. It is therefore reasonably expected that its properties would necessarily be the same as claimed and inherently be not different from those of the claimed composition (for claims 21, 22, 24). Furthermore, as the prior art composition is identical to the claimed composition, it is reasonably expected that it would be capable of performing the function of an adhesive (for claims 23, 24). The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed composition would not be present in the prior art composition; see In re Fitzgerald cited earlier in this Action.
Response to Arguments
Applicant's arguments filed 3/12/2026 have been fully considered but they are not persuasive.
Regarding the rejection over Yamaguchi: Applicant argues that the prior art does not render obvious the claimed invention because none of the examples comprises a styrene-isobutylene block copolymer.
In response, it has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). Applicant’s argument is not persuasive, as the rejection of record is based on the broad disclosure of Yamaguchi, not its examples.
Yamaguchi is not limited to the compositions specifically disclosed in its examples As discussed earlier in this Action, Yamaguchi discloses a fitting composition comprising a thermoplastic block copolymer and a (meth)acrylic monomer, wherein a styrene/isobutylene block copolymer (¶0042) and an aromatic monomer such as benzyl (meth)acrylate (¶0045) taught to be suitable embodiments of said thermoplastic block copolymer and (meth)acrylic monomer, respectively. Contrary to applicant’s arguments, the mere fact that Yamaguchi does not disclose an example which anticipates the claimed composition does not teach away from its broader disclosure which renders the claimed composition obvious.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07). Yamaguchi specifically teaches that a styrene/isobutylene block copolymer and an aromatic (meth)acrylate monomer such as benzyl methacrylate are suitable embodiments of the thermoplastic block copolymer and (meth)acrylic monomer, respectively. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition using a styrene/isobutylene block copolymer and an aromatic (meth)acrylate monomer such as benzyl methacrylate as the thermoplastic block copolymer and (meth)acrylic monomer.
Applicant argues that there is not rationale with respect to dependent claims 16, 23, and 24.
Regarding claims 16, 24: Claim 16 is not rejected over Yamaguchi; arguments regarding claim 16 are therefore irrelevant to the rejection over Yamaguchi. The rejection of claim 24 is withdrawn in view of its dependency from claim 16.
Regarding claim 23: As noted earlier in this Action and in paragraph 22 of the Office Action mailed on 12/29/2025, it has been held that “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
The prior art renders obvious a composition comprising the same components combined in the same amounts as the claimed invention. It is therefore reasonably expected that it would have the same properties as the claimed composition. The burden is therefore shifted to applicant to provide evidence that the prior art composition would not have adhesive properties. As such evidence has not been provided, the rejection is maintained.
Regarding the rejection over Nakashima: Applicant argues that because the composition of the prior art’s Example 3 does not contain an aromatic monomer ethylenically unsaturated monomer, Nakashima does not teach or suggest all the claimed limitations.
Applicant’s argument is not persuasive because it does not consider the full disclosure of the prior art teachings, see Merck & Co. v. Biocraft Laboratories cited earlier in this Action, and does not address the basis of the rejection of record. As discussed earlier in this Action and in paragraphs 26-27 of the Office Action mailed on 12/29,2025, Nakashima specifically teaches that up to 10 parts of an ethylenically unsaturated aromatic monomer may be added to the prior art composition to improve retention of adhesion.
Contrary to applicant’s arguments, the rejection of record does not allege that the composition of Nakashima’s Example 3 anticipates the claimed invention. Rather, the rejection of record is based on the premise that, because Nakashima specifically teaches that an aromatic monomer may be added to improve retention of adhesion, it would have been obvious to one of ordinary skill in the art to modify the composition of Example 3 to include such a monomer for that purpose. It is therefore not persuasive to merely argue that the prior art does not teach an Example that anticipates the claim.
Applicant alleges that the claimed invention yields unexpected results.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)).
As written, the claimed invention recites a composition wherein the amount of ethylenically unsaturated monomer is “no greater than 30 wt%”; note that this range reads on all values less than 30 wt%. In contrast, the provided examples comprise ethylenically unsaturated monomer(s) in a total amount of 16.6 wt% (Ex. 1-4, 7-13), 16.7 wt% (Ex. 19-23), 20 wt% (Ex. 14,15) or 28.4 wt% (Ex. 6). No data is presented from compositions containing less than 16.6 wt%-i.e., approximately half the claimed range is unrepresented. The data therefore is not commensurate in scope with the claimed range.
Furthermore, as written the claim generically recites the use of at least one “aromatic ethylenically unsaturated monomer comprising one or more groups selected from (meth)acryl or vinyl ether”. The provided examples all comprise aromatic monomers that are (meth)acrylates wherein the aromatic ring comprises only carbon atoms. No data is presented from compositions wherein the monomer contains the vinyl ether structure. The cited data therefore is not commensurate in scope with the broad range of compounds that fall within the scope of the claimed monomer.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range; see In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP § 716.02(d)(II)). Furthermore, note that the examples provided in the specification do not demonstrate the criticality of the claimed range. EX-5 (Table 2) discloses a composition comprising a styrene/isobutylene block copolymer and a combined total of 44.3 wt% aromatic ethylenically unsaturated monomer. As reported in Table 6 of the specification, Ex. 5 is characterized by similar properties to the other inventive examples despite containing aromatic ethylenically unsaturated monomer in an amount outside the claimed range. Applicant’s argument that the claimed invention yields unexpected results therefore is not 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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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