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 .
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.
Claim 8 is 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 8, the limitation requiring that the second polymer “comprises greater than 50 wt% of one or more monomers units having a polymer Tg greater than -15°C” renders the claim indefinite because it is unclear what polymer is required to possesses a glass transition temperature. The instant disclosure merely includes “polymer Tg” values (c.f. p. 25, Table A), but does not specify where these values come from or what the requirements of the “polymer” are. Furthermore, the Specification states that “The following “polymer Tg” values in the Table A below may be used to calculate estimated polymer Tg values for the monomer units that are present in the first polymer and/or in the second polymer” (emphasis added). This implies that the “Polymer Tg” values provide a basis for some form of calculation to arrive at the claimed monomers’ “Polymer Tg” values; however, said calculation is not articulated within the instant disclosure. One having ordinary skill in the art would not be appraised of the calculation implied within the claims and, for instance, would be unable to determine if the claimed “polymer Tg” refers to a homopolymer of the corresponding monomer, a terpolymer, etc.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 6-7, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dunaway (US Patent No. 6,228,935 B1) in view of Gerst (US 2011/0033701 A1).
Regarding claims 1 and 3, Dunaway teaches high solids dispersions of polymer particles (Abstract), which is an aqueous dispersion of two sets of particles having two different particle size distributions (col. 15, claim 1). The dispersions are suggested for use as pressure sensitive adhesives (col. 14, lines 44-46). Dunaway teaches that the polymer particles are made up of two groups of polymer particles, the first group having a weight average diameter ranging from 0.05 to 0.7 microns, and the second group having a weight average diameter ranging from 0.7 to 4 microns (col. 6, lines 1-6). Dunaway therefore teaches a composition of polymers which are different from one another, and the two particle groups therefore read on the claimed first polymer “(A)” and second polymer “(B).” Dunaway further teaches that a preferred multimodal distribution of particles comprises between 20 and 70 wt% of particles between 0.7 and 4 microns (col. 6, lines 49-50). Therefore, Dunaway teaches that 50 wt% of the particles may fall within the range of 0.7 and 4 microns in size, which overlaps the claimed range of “greater than 450 nm,” establishing a prima facie case of obviousness. Finally, Dunaway teaches that the compositions have solids contents ranging from 70 to 92 wt% (Abstract), which falls within the claimed range of “greater than or equal to 65.5 wt%,” establishing a prima facie case of obviousness.
Dunaway differs from claim 1 because it is silent with regard to the claimed “polydispersity index” characteristic.
In the same field of endeavor, Gerst teaches aqueous polymer dispersions having a polymer content of at least 55 wt% (Abstract), useful for pressure sensitive adhesives (Abstract; Dunaway also contemplates the inventive dispersions within pressure sensitive adhesives at col. 14, lines 20-22). Gerst also teaches the use of polymodal particle size distributions ([0017]), teaches that the polymodality of particle size distributions may be characterized via polydispersity index ([0017]), and teaches that polymodal polymer dispersions customarily have polydispersity indices in the range of 0.4 to 2 ([0022]), which encompasses the claimed range of “0.5 to 2.0,” establishing a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art at the time of filing to employ the PDI taught by Gerst as a guideline when forming polymer particles with polymodal size distributions according to Dunaway. This represents the use of a suitable PDI in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding the limitations of claim 3, Dunaway is silent with regard to the claimed ratio of d90 and d10. However, as described above, Gerst teaches polymodal particle size distributions ([0017]), and teaches preferred ranges for d10 and d90 ([0023] and [0024]) of 80-130 nm and 200-340 nm, respectively. Since the ratio of these two variables is defined solely by themselves, the formulation of Gerst prefers a ratio d90/d10 ranging from about 1.53 to about 4.25, which overlaps the claimed range of “2.5 to 20.0,” establishing a prima facie case of obviousness. Furthermore, for the same reasons as those described above, it would have been obvious to one having ordinary skill in the art at the time of filing to employ the d90/d10 ratio of Gerst as a guideline within the formulation of Dunaway.
Neither Dunaway nor Gerst directly mention the number average molecular weight of the inventive polymer particles. However, Dunaway teaches that the inventive polymers are formed from acrylic monomers in the presence of latex particles (col. 4, lines 29-49), and teaches that the latex particles have particle diameters less than 2 microns (col. 2, lines 42-45). Dunaway further narrows the apparent particle size range of the latex particles further, stating that the polymer particles sized between 0.05 and 0.7 microns are primarily composed of the latex particles (col. 6, lines 7-10). Dunaway therefore teaches a similar process to the one contemplated by the instant application: an acrylic monomer composition is polymerized in the presence of latex seed particles to produce an acrylic emulsion. Importantly, however, Dunaway appears to contemplate much high concentrations of seed latex particles relative to monomer components, compared to the instant specification (c.f. Examples of Dunaway wherein the latex particle emulsion routinely comprises over 50% of the formulation, col. 9-10 Tables I-II and instant Specification [0056] and [0057], where the Applicant specifies that the seed latex comprises around 0.05-4 wt% of the composition). This difference, absent any further guidance from Gerst or other prior art, would presumably lead to smaller particles having lower molecular weights, as the monomers will be distributed over a much greater number of seed latex particles.
Supplementing the teachings of Dunaway, Gerst specifically teaches that the adjustment of the ratio of seed polymer and monomer may directly influence the particle size within the resulting dispersion ([0066]). Furthermore, Gerst teaches that seed polymers 1 and 2 may be included in amounts ranging from 0.1 to 2% and 0.05 to 2%, respectively ([0064] and [0065]). Finally, as described above, Dunaway contemplates larger particle sizes than Gerst. Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to adjust the seed latex particles content of Dunaway to between 0.1 to 2% and 0.05 to 2%, as taught by Gerst, for the purpose of adjusting the final particle size of the resulting acrylic particles.
The emulsion system of Dunaway as modified by Gerst would therefore include two seed particles in concentrations overlapping those of the instant Application, reacting with acrylic monomers just as is reflected in the instant Application (c.f. col. 4, lines 29-42 and [0047] of the instant Specification), to produce particles whose sizes and distributions overlap those as claimed (see rejections of claims 1-3, above). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed molecular weights will therefore necessarily be present in Dunaway as modified by Gerst, and as applied above.
Regarding claim 2, Dunaway further teaches that a preferred multimodal distribution of particles comprises between 20 and 70 wt% of particles between 0.7 and 4 microns (col. 6, lines 49-50). Therefore, Dunaway teaches that 50 wt% of the particles may fall within the range of 0.7 and 4 microns in size, which overlaps claimed range of “455 nm to 1.0 micron,” establishing a prima facie case of obviousness.
Regarding claims 6-7, Dunaway teaches the incorporation of alkyl acrylates including ethyl, butyl, and ethylhexyl acrylates (col. 4, lines 29-33), all of which read on the claimed lists.
Regarding claims 9-10, Dunaway teaches that the inventive composition has a viscosity of less than 10,000 cps 70-80 wt% solids (col. 4, lines 26-28), but is silent with regard to the claimed viscosity at 65.5 wt% solids. Dunaway does not require the incorporation of a thickener, and thus teaches compositions which meet the limitation of “void of thickener” as required by claim 10.
As described above, however, Dunaway as modified by Gerst meets all of the compositional limitations of the claimed composition, having all of the same components with all of the claimed characteristics. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed viscosity characteristic will therefore necessarily be present in Dunaway as modified by Gerst, and as applied above.
Regarding claim 11, as described above, Dunaway is silent with regard to the incorporation of a thickener. However, Gerst teaches that pressure sensitive adhesive compositions may include thickeners ([0085]). It is prima facie obvious to select materials based on their art-recognized suitability for an intended purpose (MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate a thickener into the formulation of Dunaway, as Gerst recognizes thickeners as suitable for the formulation of pressure sensitive adhesives. In so doing, the composition of Dunaway as modified by Gerst would meet all of the claimed compositional limitations of the claimed composition, having all of the same components with all of the claimed characteristics. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed viscosity characteristic will therefore necessarily be present in Dunaway as modified by Gerst, and as applied above.
Regarding claim 12, Dunaway teaches the incorporation of an anionic surfactant (col. 9, line 24).
Regarding claim 13, Dunaway teaches the use of ammonia to adjust the pH of the latex emulsion (col. 9, lines 1-4), which reads on the claimed “neutralizing agent.” Regarding claim 14, Dunaway teaches the application of the inventive composition to a substrate via rolling, brushing, or spraying to provide an adhesive film thereon (col. 14, lines 35-37). Dunaway as modified by Gerst meets all of the claimed compositional limitations of the claimed “water-based pressure sensitive adhesive,” as described in the rejection of claim 1, above. The coated substrate of Dunaway therefore reads on the claimed “article.”
Regarding claim 15, Dunaway teaches that the inventive composition has a viscosity of less than 10,000 cps 70-80 wt% solids (col. 4, lines 26-28), but is silent with regard to the claimed viscosity at 65.5 wt% solids.
As described above, however, Dunaway as modified by Gerst meets all of the compositional limitations of the claimed composition, having all of the same components with all of the claimed characteristics. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed viscosity characteristic will therefore necessarily be present in the adhesive layer of Dunaway as modified by Gerst, and as applied above.
Furthermore, claim 15 is recognized as containing a product-by-process limitation. Claim 14 requires that the composition has been dried to form a layer. Water will not be present (or will be present in amounts well below 34.5 wt%). The viscosity at 65.5wt% solids content, required by claim 15, relates to a precursor material used to form the article of claim 14 and not to the article itself; therefore, the viscosity need not be taught by the prior art in order to read on the claim.
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dunaway (US Patent No. 6,228,935 B1) in view of Gerst (US 2011/0033701 A1), and further in view of Di Stefano (US 2003/0077443 A1).
Regarding claim 5, Dunaway as modified by Gerst teaches all of the limitations of claim 1 as described above. Dunaway as modified by Gerst differs from claim 5 because it is silent with regard to the polymers having the claimed glass transition temperature ranges.
In the same field of endeavor, Di Stefano teaches a pressure sensitive adhesive with a good balance of adhesive and cohesive properties (Abstract), which is achieved by mixing a high Tg polymer emulsion with an aqueous pressure sensitive adhesive emulsion (Abstract). Di Stefano teaches that the high Tg polymer within the high Tg polymer emulsion has a Tg ranging from 30 to 300°C (Abstract), and that it may be formed from acrylate or methacrylate esters ([0010]). Di Stefano further teaches that the aqueous pressure sensitive adhesive is derived from alkyl acrylates and alkyl methacrylates, and possesses a Tg ranging from -10 to -90°C ([0003]).
As described above, Dunaway teaches dispersions of polymer particles (Abstract) useful as pressure sensitive adhesives (col. 14, lines 19-21). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 214.406), and Di Stefano teaches the inventive polymers as useful for balancing the properties of the pressure sensitive adhesive. Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the acrylic-based polymers of Di Stefano, which bear glass transition temperatures of 30 to 300°C and -10 to -90°C, respectively, within the pressure sensitive adhesive formulation of Dunaway as modified by Gerst. The glass transition temperatures of these materials fall within the claimed ranges of “greater than -20°C” and “less than -20°C,” respectively, establishing prima facie cases of obviousness.
Response to Arguments
Applicant's arguments filed February 23, 2026 have been fully considered but they are not persuasive.
Firstly regarding 35 USC 112(b), the amended version of claim 8 which now recites a “polymer Tg” fails to overcome rejection under 35 USC 112(b) because, as described in the rejection of claim 8 above, the addition of the word “polymer” within the claim does not render the claim definite.
Applicant’s remaining arguments are directed towards prior art rejections under 35 USC 103.
Applicant contends that the particle size and molecular weights of polymer particles are not directly related to one another. That argument notwithstanding, the claimed molecular weights will inherently be present in the modified composition within the prior art, as described above. This is because the composition within the prior art is manufactured using a process which is substantially identical to the process contemplated within the instant disclosure (see rejection of claim 1, above). Furthermore, in rebutting the Examiner’s assertion that polymer molecular weights are correlated to particle size, the Applicant states that “particle size and molecular weight are determined by emulsion polymerization kinetics” (see Applicant’s remarks, p. 8). This assertion supports the conclusion that the claimed molecular weight will be inherently present within the prior art: if the polymerization conditions are substantially identical (as shown previously and above), then the reaction kinetics will follow suit, and the resulting particle size and molecular weights will likewise arise therefrom.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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