DETAILED ACTION
Examiner’s Note
The Examiner respectfully notes that the Substitute Specification and the Marked-up Specification filed 6/20/2025 have been considered. The Examiner notes that the marked-up version of the Specification filed 6/20/2025 is being interpreted as taken from the Specification filed 3/21/2023, which was also amended on 3/21/2023 to include the foreign priority information, but did not include reference to the Drawings. The Examiner submits that all of the Specification amendments filed 5/4/2023 are NOT entered for consideration. The Specification amendments filed 6/20/2025 (see the marked-up copy) include the addition of the foreign priority information, but the Examiner is interpreting this as an inadvertent repeat of the above-noted amendments filed 3/21/2025. The Specification amendments filed 6/20/2025 also have amended the Specification to include the description of the Drawings (see the marked-up copy). Thus, the Substitute Specification filed 6/20/2025 is entered, and is now the version of the Specification under examination.
The Examiner acknowledges the cancelation of claims 11-12 and the addition of new claims 20-23 as set forth in the amendments filed 6/20/2025, and as taken from the claim listings filed 3/21/2023 and consisting of claims 1-19.
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 .
Election/Restrictions
Newly submitted claim 21 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: see the Species Restriction portion of the action mailed 9/12/2024, wherein claims 11-12 were restricted from each other, and wherein the Applicant elected Species II (see Applicant’s response filed 10/14/2024) reciting that the plasticizer had a Mw of 3,000 to 20,000 g/mol as in new claim 22, and did not elect claim 11, which recites the Mw as provided in new claim 21 (i.e., 100,000 to 1,000,000 g/mol).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 has been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment
Applicant’s arguments, see the Specification amendments and the remarks filed 6/20/2025, with respect to the objection to the Specification as set forth in paragraph 4 of the action mailed 12/4/2024, have been fully considered and are persuasive. The objection to the Specification has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/20/2025, with respect to the rejection of claims 1-5, 7-10, 12-14 and 16-19 under 35 U.S.C. 112(b) as set forth in paragraphs 6-8 of the action mailed 12/4/2024, have been fully considered and are persuasive. The rejection of the claims has been withdrawn, EXCEPT as noted below.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 20 is 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.
Regarding claim 20, while the Specification as originally filed provides support for a “tackifier resin component,” there is no support for the presently claimed “resin component,” which is broader in scope than the presently disclosed “tackifier resin component.”
Claims 1-5, 7-10, 13-14, 16-19 and 22-23 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.
Regarding claim 1, it is unclear from the claim limitations whether the polydiene blocks are indeed dienes given that B = ethylene and propylene does not provide a diene as ethylene and propylene are mono-enes.
Claim 20 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.
Regarding claim 20, it is unclear from the claim limitations whether the polydiene blocks are indeed dienes given that B = ethylene and propylene does not provide a diene as ethylene and propylene are mono-enes.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7-9, 13, 16 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fenske et al. (US 2019/0292416 A1) in view of Khandpur et al. (US 2002/0136891 A1), and in light of the evidence provided by Holguin et al. (US 6558790 B1).
Regarding claim(s) 1-5, 7-9 and 23, Fenske teaches an adhesive composition (para 0001, 0010-0011) comprising:
(a) 25-50 wt% of a saturated vinylaromatic block copolymer, which overlaps that presently claimed (38 to 58 wt%, 20 to 36 wt%, current claim 3), selected from, inter alia, polystyrene-poly(ethylene-co-propylene)-polystyrene (elastomer component, fully hydrogenated polyvinylaromatic-polydiene block copolymer, ABA construction, B = ethylene and propylene) (para 0024), and having a weight-average molecular weight (Mw) of 50,000 to 500,000 g/mol and a vinyl aromatic block proportion of 25-40 wt% (current claim 2) (para 0028);
(b) 20-50 wt% of a first hydrocarbon tackifier resin, and (c1) 0-10 wt% and (c2) 5-25 wt% of a second tackifier resin(s), which overlaps that presently claimed (current claim 7), wherein (b) is selected from, inter alia, hydrogenated polyterpene resins (current claim 8) and wherein the overall second tackifier is 0-10 wt% when the plasticizer is 5-25 wt% (para 0052);
(d1) 5-25 wt% and (d2) 5-15 wt% of an aliphatic alkyl ester plasticizer(s) (para 0012-0019), and that the proportions of mineral oils as plasticizers are at most 1 wt% (at least one plasticizer selected from mineral oils, current claim 23) (para 0056), and wherein the sum of (d1), (d2) and mineral oils overlaps that presently claimed (current claim 9). Fenske moreover teaches that the softening temperature of the first tackifier resin is from 110 to 140 ℃ (greater than 95 ℃) (para 0030).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Fenske also teaches that the adhesive further comprises a diblock in tandem with the SEPS as the elastomer component such as, inter alia, polystyrene-poly(ethylene-propylene) (SEP) (A’ = A and B’ = B, current claim 4) (para 0024) in an amount of 10-30 wt%, which provides an overlap with presently claimed elastomer component comprising at least 60 wt% of the SEPS and at most 25 wt% of the diblock SEP (current claim 5) towards a balance of tack, wet-out, cohesion and adhesion (para 0026-0027).
While Fenske does not specify that the adhesive composition is a pressure-sensitive adhesive (PSA) composition, the Examiner respectfully notes that one skilled in the art would recognize that the adhesive of the prior were intended to have PSA properties, or it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the components of the adhesive of Fenske (see para 0002 therein) towards providing a PSA based on the adhesive properties required of the prior art’s intended application
Fenske is silent to the ethylene fraction of the SEPS block copolymer and to the molecular weight of the SEPS block copolymer being the PEAK molecular weight (versus the Mw noted above) (current claim 1), and to the SEP diblock having a peak molecular weight of less than 100,000 g/mol (current claim 5).
However, Khandpur teaches that the ethylene component of ethylene/propylene copolymers contributes to the decrease in the amorphous character (increased crystallinity) (para 0049). In addition, the Examiner notes that it is established in the art that the molecular weight of compounds is selected based on the balance of coatability, cohesion and tack required of the compounds contribution to the composition comprising the copolymer as evidenced via Holguin (see column 4, lines 20-24).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select the molecular weight of the base block copolymer of Fenske (either the peak or weight-average molecular weight) identical to that presently claimed, and to further adjust the proportion of ethylene in said base block polymer, based on the balance of crystallinity, coating properties, cohesion and tack required of the prior art’s intended application as in the present invention.
Regarding claim(s) 13 and 16, Fenske teaches an adhesive tape comprising at least one layer of the adhesive composition (para 0073) on a carrier (para 0074), and that the tape is applied to substrate such as, inter alia, polypropylene (para 0084).
Claim(s) 14 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fenske et al. (US 2019/0292416 A1) in view of Khandpur et al. (US 2002/0136891 A1) and in further view of Kopf et al. (US 10717905 B2).
Regarding claims 14 and 17-19, Fenske/Khandpur teaches the adhesive tape comprising an adhesive layer on a carrier as in the rejection of claims 1-5, 7-9, 13, 16 and 23 as set forth above.
Fenske/Khandpur is silent to the carrier being a foam carrier being a viscoelastic foamed poly(meth)acrylate layer.
However, Kopf instructs that polyacrylate viscoelastic foam carriers are known for use with synthetic rubber adhesives (column 1, line 52 to column 2, line 3) such as vinyl-aromatic/diene-based adhesives (column 2, line 35 to column 3, line 28).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the viscoelastic polyacrylate foam carriers as the carriers for the adhesives of Fenske/Khandpur as in the present invention.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fenske et al. (US 2019/0292416 A1) in view of Khandpur et al. (US 2002/0136891 A1) and in further view of Kopf et al. (US 10717905 B2), and in light of the evidence provided by Holguin et al. (US 6558790 B1).
Regarding claim(s) 20, Fenske/Khandpur/Kopf teach the presently claimed invention as recited in at least current claims 1, 14 and 17-18 set forth above, which is equally applicable to the current claim.
Claim(s) 1, 10 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai et al. (JP 2021188051 A) in view of Bieber et al. (US 2021/0324244 A1), and in light of the evidence provided by Holguin et al. (US 6558790 B1).
Regarding claims 1, 10 and 22, Arai teaches a PSA tape comprising an adhesive layer comprising a tackifier and a hydrogenated base polymer (para 0005-0006) such as, inter alia, SEBS having a styrene content of less than or equal to 20 % by weight (para 0009-0013). The Examiner notes that a SEBS block copolymer comprises EB middle block, which is identical to a fully hydrogenated polydiene block as presently claimed in recited item ii) of the presently recited hydrogenated polyvinylaromatic-polydiene block copolymer having an ABA structure (wherein EB block teaches the B and the styrene blocks of the prior art teach the A).
While Arai teaches the content of the ethylene in the EB block of the SEBS block copolymer is present at a lower limit of 1.2:1 to 2:1 mol % ethylene:butylene, while that presently claimed in presented in wt%, Arai instructs that the ratio is not particularly limited, but is provided to further improve the resistance to alkaline solutions (para 0014). In addition, given that butylene has a molar weight twice that of ethylene, the 2:1 mole ratio provides the ethylene at 50 wt% of the EB block, which overlaps that presently claimed. Arai also teaches that the PSA comprises a plasticizer (para 0028).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
The Examiner notes that, while Arai teaches that the molecular weight of the base polymer is provided in Mw rather than the presently claimed peak molecular weight, Arai does teach that the block copolymer has an Mw of 100,000 to 500,000 (para 0017); and that it is established in the art that the molecular weight of compounds is selected based on the balance of coatability, cohesion and tack required of the compounds contribution to the composition comprising the copolymer as evidenced via Holguin (see column 4, lines 20-24).
Arai further teaches that the base polymer is 100 parts by weight for 0-5 parts by weight or less of tackifiers (T2) and (T3) and 3 to 80 parts by weight of tackifier resin (T1) (claims 1-2) towards a balance of a suppressed increase in adhesion and adhesive residue, removability, and resistance to alkaline solutions (para 0022, 0027). The Examiner notes that proportions of 100 parts by weight base polymer and 3 to 80 parts by weight tackifier (T1) (assuming 0 parts by weight of (T2) and (T3)) provides an overlap with the presently claimed proportions of the elastomer component a) of 38 to 58 wt%.
Arai also teaches that the tackifier (T1) has a softening point of 145 ℃ or higher (greater than 95 ℃) (claim 5).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select the molecular weight of the base block copolymer of Fenske (either the peak or weight-average molecular weight) identical to that presently claimed, to adjust the proportion of ethylene in said base block polymer, and to provide said base block copolymer in the presently claimed proportions based on the balance of resistance to alkaline solutions, coating properties, cohesion and tack required of the prior art’s intended application as in the present invention.
Arai is silent to the plasticizer comprising butylene/iso-butylene copolymer (Type 2) having an Mw of 3000 to 20,000 g/mol.
However, Bieber teaches PSA polymeric foam layers comprising polyisobutylene and ethylene/propylene plasticizers having Mw of at least 10,000 g/mol (para 0101-0107), which overlaps that presently claimed. The Examiner respectfully reminds the Applicant that:
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA of Arai with the presently claimed plasticizer having the presently claimed Mw based on the balance of plasticizing properties, coating properties, cohesion and tack required of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/20/2025, with respect to the rejection of claims 1-5, 7-10, 12-14 and 16-19 under 35 U.S.C. 112(b) as set forth in paragraph 6 of the action mailed 12/4/2024, have been fully considered but they are not persuasive.
The claims have not been amended to overcome the rejection, nor has the Applicant’s remarks addressed the rejection; thus, the rejection is maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 6/20/2025, with respect to the rejection of claims 1-5, 7-9, 13 and 16 over Fenske et al. in view of Khandpur under 35 U.S.C. 103 and claims 14 and 17-19 over Fenske et al. in view of Khandpur and in further view of Kopf et al. under 35 U.S.C. 103; as set forth in paragraphs 11-12 of the action mailed 12/4/2024, have been fully considered but they are not persuasive.
The Examiner respectfully acknowledges the Applicant’s assertions towards considering the presently claimed invention as a whole, and in this spirit, the Applicant’s attention is respectfully directed to the prior art rejections of at least current claim 1 and claim 20 as set forth above, wherein it is noted that the cited prior art teaches or renders obvious all the limitations of the presently amended invention; and in accordance with the conditions required via the obviousness statutes, the cited case law (such as overlapping numerical ranges), and the skill and knowledge available to one skilled in the art. Respectfully, while Fenske/Khandpur do not mention foams for the disclosed carrier, Fenske/Khandpur do not dissuade one skilled in the art from employing the polyacrylate viscoelastic foams of Kopf as carriers; indeed, Kopf instructs the skilled artisan that such carriers are known to be employed with vinyl-aromatic/diene-based rubber adhesives such as the SEPS conspicuously disclosed in Fenske/Khandpur.
In regards to the Applicant’s position on the alleged different applications for the Fenske adhesive and those presently claimed, the Applicant is respectfully reminded that
“[T]he discovery of a previously unappreciated property of a prior art composition, or of
a scientific explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use,
new function or unknown property which is inherently present in the prior art does not
necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
433 (CCPA 1977).
While the Fenske may not specify an application specifically designated for use with foam carriers, Fenske/Khandpur would find additional merit outside the Fenske/Khandpur invention as instructed by Kopf. In this spirit, the Examiner respectfully submits that (Examiner’s emphasis):
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
In this light, the Examiner respectfully reiterates that there is nothing in the cited prior art that would disqualify the adhesives of Fenske/Khandpur for employment with the foams of Kopf, or towards adhering with the surfaces (e.g., automotive parts) presently disclosed.
In regards to the presently claimed polyvinylaromatic fraction, the Examiner submits that, while KRATON 1657 provides a styrene content outside that recited in at least current claims 1 and 20, other inventive examples of Fenske demonstrate styrene contents within the presently claimed range. Furthermore, one skilled in the art would recognize the advantages of employing the adhesives of Fenske comprising copolymers comprising the presently claimed styrene as instructed by Fenske; specifically, towards a balance of sufficient physical crosslinking and tackiness (see para 0028 of Fenske).
The Examiner acknowledges Fenske’s use of plasticizer’s different from those presently claimed, and towards Fenske’s “teaching away” from the presently claimed “Type II” plasticizers required of current claims 10 and 22. However, Fenske, and its remedying references, were not employed to teach current claims 10 and 22. Also, current claim 1 permits mineral oils as plasticizers (current claim 20 does not require a specific kind of plasticizer) while current claim 9 only requires that the plasticizers recited in said claim 1 be present in an amount of not more than 20 wt%. As set forth above in the prior art rejections, Fenske does allow for up to 1 wt % of mineral oils, which is not more than 20 wt%, and thus Fenske teaches the plasticizer limitations of the claimed invention. Moreover, current claim 1 recites that the plasticizer has “at least one plasticizer” selected from the recited components, and thus the claim language allows for the inclusion of the other plasticizers disclosed in Fenske (e.g., aliphatic or cycloaliphatic carboxylic acids).
Turning now to the secondary Khandpur disclosure, the Applicant’s attention is respectfully directed to the Examiner’s responses set forth above in regards to the foam backings. Also, the Examiner respectfully notes that Khandpur was employed solely towards remedying Fenske’s silence regarding the ethylene content of polymers which they comprise. That is, Khandpur instructs the skilled artisan that the ethylene content of a polymer, regardless of the specific proportions disclosed in the Khandpur reference, are considered towards the degree of crystallinity, or lack thereof, required of the Fenske application.
It is noted that the "test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary reference... Rather,
the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981)
and that "combining the teachings of references does not involve an ability to combine
their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Similarly, Holguin was employed only to demonstrate that the skilled artisan would recognize that molecular weight of a polymer (acrylic, styrene-based, etc.)are made in consideration of a composition’s coatability, cohesion and tack. Lastly, the Examiner respectfully submits that the Applicant’s assertions that the “overbroad generalization” of Holguin provide no “specific technical teaching to further delimit Fenske and Khandpur” are not persuasive. Holguin does indeed delimit the Fenske/Khandpur disclosures in regards to molecular weight considerations, and as acknowledged by the Applicant, are known in the art.
Also, the above-noted citations did not attempt to teach or suggest “varying all the parameters” nor were they bereft of indicating which parameters were critical or which choices were likely to be successful. Indeed, the only parameter considered was the molecular weight, and Holguin clearly instructed that said parameter was critical and to what end the selection of said parameter would result.
Applicant’s arguments, see the claim amendments and the remarks filed 6/20/2025, with respect to the rejection of claim 1 over Arai et al. under 35 U.S.C. 103 and claims 10 and 12 over Arai et al. in view of Khandpur and in further view of Bieber et al. under 35 U.S.C. 103; as set forth in paragraphs 13-14 of the action mailed 12/4/2024, have been fully considered but they are not persuasive.
In regards to the Arai/Holguin combination, and the Applicant’s assertions against the same, the Examiner respectfully directs the Applicant’s attention to the Examiner’s rebuttal as provided above for Holguin’s instruction for the Fenske/Khandpur combination. The Applicant’s attention is also respectfully directed to the updated prior art rejections over Arai, wherein it is noted that Arai, as remedied via Bieber, teaches or renders all the limitations as presently recited in current claims 1, 10 and 22, to include the specific limitations recited for the plasticizer in said claims. The Examiner notes that Khandpur was not employed in the current rejection.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 6/24/2025