DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 4-5 and 9-10 in the amendments filed 1/28/2026.
The Examiner respectfully apologizes for inadvertently including claims 26-29 in the rejections under 35 U.S.C. 112(b) of the previous action. As provided in the objections to claims 26-27 and claims 28-29 as set forth in paragraphs 17-18 of said previous action, those claims were not to be treated on the merits. However, the current claim amendments have resolved the issues that provoked said objections, and as such, claims 26-29 are examined as set forth below.
Response to Amendment
Applicant’s arguments, see the amendments to the specification filed 1/28/2026, with respect to the objection to the specification as set forth in paragraph 3 of the action mailed 10/29/2025, 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 The objection to the specification has been withdrawn.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 1/28/2026, with respect to the objections to claims 2-10, 12-14, 16-18, 20-22, 24 and 26-29 as set forth in paragraphs 5-18 of the action mailed 10/29/2025, have been fully considered and are persuasive. The objections to claims 2-10, 12-14, 16-18, 20-22, 24 and 26-29 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 1/28/2026, with respect to the rejections of claims 5, 8, 10 and 18-24 and claims 26-27 and claims 28-29 under 35 U.S.C. 112(b) as set forth in paragraphs 20-24 of the action mailed 10/29/2025, have been fully considered and are persuasive. The rejections of claims 5, 8, 10, 18-24 and claims 26-29 have been withdrawn.
The Examiner also notes that claim 29 was included in the rejection of claim 28 as claim 29 depends from claim 28.
Specification
The disclosure is objected to because of the following informalities: from Table 1, it unclear what is intended by the “non-thermoplastic random polymer” as it is further parenthetically referenced as a “styrene block polymer.”
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “…wherein said at least one thermoplastic block polymer…”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “…wherein said at least one non-thermoplastic random polymer…”. Appropriate correction is required.
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
Claims 26-29 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.
Claim 26 recites the limitation "the film" in line 4. There is insufficient antecedent basis for this limitation in the claim as a film has not been previously introduced.
Regarding claim 26, it is unclear what is intended via the recitation “an adhesive” in item (iii).
Regarding claim 27, it is unclear what is intended via the recitation “an adhesive composition”.
Claim 27 recites the limitation "the layer" in line 2. There is insufficient antecedent basis for this limitation in the claim as a layer has not been previously introduced.
Claim 28 recites the limitation "the outer surface" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim as an outer surface has not been previously introduced.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 7-8, 11-20 and 23-25 is/are rejected under 35 U.S.C. 102 as being anticipated by Hatfield et al. (US 2006/0229411 A1), and in light of the evidence provided by JP4762468 B2 of which the original document and the machine translation were provided with the previous action.
Regarding claim(s) 1, 3, 8, 11 and 15, Hatfield teaches a hot melt pressure-sensitive adhesive (HMPSA) comprising:
component a) of a linear A-B-A triblock copolymer(s) of styrene-butadiene (thermoplastic block copolymer, A-B-A structure, current claim 3);
component(s) b) comprising (i) random copolymers of styrene and butadiene (non-thermoplastic random polymer, A-B structure, current claim 8) and (iii) A-B diblock copolymers of styrene-butadiene;
component c) at least one tackifier resin (current claim 11);
component d) at least one plasticizer (current claim 15);
component e) at least one filler; and,
component f) at least one stabilizer (para 0001, 0004-0010).
Hatfield also teaches that the:
(i) random copolymers of styrene and butadiene are prepared via emulsion polymerization (emulsion polymerized styrene butadiene polymer) (para 0019);
that the linear A-B-A triblock copolymer(s) of styrene-butadiene (i.e., S-B-S triblock) have a styrene content of 5 to 25 % total weight (para 0013), which overlaps that presently claimed (15 to 45 % by weight), and the (iii) A-B diblock copolymers of styrene-butadiene (S-B diblock) have a styrene content of 15 to 40 % total weight (para 0016), which overlaps that presently claimed (15 to 45 % by weight);
and that the (i) random copolymers of styrene and butadiene have a styrene content of 15 to 40 % total weight (para 0016), which overlaps that presently claimed (20 to 30 % by weight). Hatfield further teaches that the (i) random copolymers of styrene and butadiene a Mooney viscosity of less than 60, which overlaps that presently claimed (40 to 55 %).
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).
Therefore, 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 block and random polymers of Hatfield with the presently claimed styrene contents based on the crystallinity required of the polymers, and resultant HMPSA composition/layer(s), of the prior art’s intended application as in the present invention.
Regarding claim 2, Hatfield teaches that said A-B-A triblock copolymer(s) is present at 5 to 25 % the total weight of the HMPSA (5 to 50 weight %) (para 0013).
Regarding claim 7, Hatfield teaches that component b) comprises 2 to 20 % by weight of the adhesive composition (para 0016), and that the weight ratio of component a) (i.e., the SBS triblock copolymer) to the styrene/butadiene block copolymer is 8:1 to 1:1 (para 0017) with another embodiment comprising a diblock/triblock compositions comprising 40 to 80 weight percent SB diblock and 20 to 60 weight percent SBS triblock (para 0019).
The combined weight of component a) and b) is 12 to 28 percent of the total weight of the adhesive composition (para 0021), with the SB-based block copolymers and the random SB-based copolymers in a ratio of 1.5:1 to 3:1 (para 0019). Thus, Hatfield teaches the random SB-based copolymer in an amount relative to the HMPSA composition that overlaps that presently claimed (5 to 25 weight%).
Therefore, it would have been obvious one of ordinary skill in the art before the effective filing date of the present invention to provide the HMPSA composition of Hatfield with the random SB-based copolymer in the presently claimed proportions based on the attendant properties provided via components a) and b) as required by the prior art’s intended application as in the present invention.
Regarding claim 12, Hatfield teaches that the tackifier is present at 50 to 75 % by weight (para 0022), which overlaps that presently claimed.
Indeed, it would have been obvious one of ordinary skill in the art before the effective filing date of the present invention to provide the HMPSA composition of Hatfield with the presently claimed proportions of tackifier resin(s) based on the desired degree of tack required of the prior art’s intended application as in the present invention.
Regarding claims 13-14, Hatfield teaches that the tackifier resin, inter alia, ESCOREZ 5600 (para 0032) is a hydrocarbon resin, which demonstrates a molecular weight of 520 and a softening point of 100 ℃ (see para 0053 of JP4762468 B2).
Regarding claim 16, Hatfield teaches that the plasticizer is selected from, inter alia, isoprene oligomers (polyisoprene), and is present at 5 to 25 weight% (para 0034).
Regarding claim 17-18, Hatfield teaches that the plasticizer is selected from, inter alia, oligomers of isoprene, propylene and butene; adipate and benzoate esters; and vegetable and animal oils (para 0034), all of which are identical to those presently disclosed for providing the presently claimed solution viscosity (60 to 90 cSt at 40 ℃) and aniline point range (98 to 130 ℃).
Regarding claims 19-20, Hatfield teaches wax(es) selected from, inter alia, paraffin wax, and is present at 0 to 10 by weight% (para 0035).
Regarding claims 23-24, Hatfield teaches that the stabilizers are selected from, inter alia, a phosphite compound, and is present at 0.2 to by weight% (para 0036).
Regarding claim 25, Hatfield teaches that the adhesive has a melt viscosity of 500 to 250,000 mPa·s (500 to 250,000 cps) at 150 ℃, which overlaps that presently claimed in both viscosity range and temperature of determination; a Tg of -20 to 40 ℃, which overlaps that presently claimed; and an elastic modulus (G’) of 1 × 105 to 6× 106 dynes/cm2 (para 0011), which overlaps that presently claimed.
Indeed, it would have been obvious one of ordinary skill in the art before the effective filing date of the present invention to provide the HMPSA composition of Hatfield with the presently claimed viscosity, Tg and elastic modulus (G’) based on the properties required of the prior art’s intended application, and at the temperature of use, as in the present invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatfield et al. (US 2006/0229411 A1) in view of Sugimoto et al. (JP 2016204665 A), the original document and machine translation of which are included with the current action; and in light of the evidence provided via Satake et al. (US 5814685), Kanner et al. (US 7070051 B2) and the Aldrich Data Sheet.
Regarding claim 6, Hatfield is silent to the glass transition temperature (Tg) and solution viscosity of the component a) triblock SBS copolymer.
However, Sugimoto teaches hotmelt adhesives (title) comprising SBS block copolymer (A1) comprising a solution viscosity of 100 to 250 mPa·s (page 3).
In addition, the Examiner notes that it is established in the art that the Tg of a polymer is proportional to the individual Tg values of its constituent monomers, and their respective proportions as evidenced via Satake (see column 4, lines 5-19 therein), and that the Tg of hot melts and PSA compositions, and thus their respective polymeric components, is selected based on the balance of tack, peel and cohesion as evidenced via Kanner (see column 8, line 28 to column 9, line 8 therein). The Aldrich Data Sheet demonstrates the Tg values for trans-butadiene (Tg = -58 ℃) and styrene (Tg = 100 ℃).
Therefore, it would have been obvious one of ordinary skill in the art before the effective filing date of the present invention to provide the HMPSA composition of Hatfield with component a) comprising the presently claimed solution viscosity and Tg based on the component a)’s contribution to the HMPSA’s overall viscosity and Tg required by the prior art’s intended application as in the present invention.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatfield et al. (US 2006/0229411 A1) in view of Daily et al. (US 2002/0193474 A1).
Regarding claims 21-22, Hatfield is silent to the type(s) and proportions of the disclosed filler of component 3).
However, Daily teaches hot melt adhesives (title) comprising fillers such as, inter alia, talc towards reducing costs and increasing the viscosity (para 0031).
Indeed, it would have been obvious one of ordinary skill in the art before the effective filing date of the present invention to provide the HMPSA composition of Hatfield with the presently claimed fillers, and in the presently claimed proportions, based on the viscosity required of the prior art’s intended application as in the present invention.
Claim(s) 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatfield et al. (US 2006/0229411 A1).
Regarding claim 26, Hatfield teaches that the HMPSA is coated on the face(s) of a flexible backing sheet (substrate) to form tapes and labels (para 0051).
Regarding claim 27, while Hatfield does not disclose a thickness of an adhesive layer resulting from the coating of the HMPSA on the backing sheet, the choice of thickness of an adhesive layer would have been an obvious and recognizable choice to one skilled in the art based on the thickness of the HMPSA layer, and the resultant label, required of the prior art’s intended application as in the present invention.
Claim(s) 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatfield et al. (US 2006/0229411 A1).
Regarding claims 28-29, Hatfield teaches that the HMPSA compositions are applicable to, inter alia, pre-applied labels and container labeling (para 0001, 0038), and towards bonding materials (labelled article) to each other such as, inter alia, wood (para 0051), wherein one of the bonded materials comprises an outer surface to which the disclosed HMPSA is attached.
Response to Arguments
Applicant’s arguments, see the amendments to the specification filed 1/28/2026, with respect to the objection to the specification as set forth in paragraph 2 of the action mailed 10/29/2025, have been fully considered but they are not persuasive.
The Examiner acknowledges the amendments to Table 1 and paragraph 0059 of the specification. However, the inconsistency is still disclosed given that a random polymer is not a block polymer, nor vice versa, nor has the Applicant argued the merits of the objection. That is, a random polymer is not exemplified by a block polymer. Thus, the objection is maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 1/28/2026, with respect to the rejections of claims 1-4, 8-9, 11, 13-20 and 23-24 over Hatfield et al. under 35 U.S.C. 103; claims 5, 7 and 10 over Hatfield et al. under 35 U.S.C. 103; claims 6 over Hatfield et al. in view of Sugimoto et al. under 35 U.S.C. 103; claims 12 over Hatfield et al. under 35 U.S.C. 103; claims 21-22 over Hatfield et al. in view of Daily et al. under 35 U.S.C. 103; and claim 25 over Hatfield et al. under 35 U.S.C. 103 as set forth in paragraphs 26 and 29-33 of the action mailed 10/29/2025, have been fully considered but they are not persuasive.
The Examiner respectfully acknowledges paragraph 0016 of Hatfield, and submits that the paragraph contains relevant citations of the disclosed Hatfield invention in, and of itself, but is also relevant in consideration of the disclosed invention of Hatfield in its entirety when considering what the skilled artisan would have understood. In addition, it is respectfully noted that the portions of said paragraph 0016 highlighted by the Applicant teaches that the SB diblock copolymers contained therein are directed to the amount of the diblock copolymers with respect to the total weight of the adhesive composition. The presently claimed proportions of the diblock content (i.e., 40 to 70 % by weight) is relative to the recited thermoplastic block polymer and not the HMPSA composition.
Thus, while paragraph 0016 is relevant to the content of diblock, cited paragraph 0018, as set forth and in the previous action, is indeed directed towards teaching or rendering obvious the presently claimed average diblock content range. Indeed, in this respect, paragraph 0016 instructs one skilled in the art as to the proportions of the (iii) SB diblock copolymer(s) and the and the (i) random copolymers comprising the adhesive composition as cited in the current and previous prior art rejections. The Applicant’s attention is respectfully directed to the updated prior art rejections as provided above, which are based on the amendments to the presently claimed invention, for a further demonstration of the Examiner’s position on this matter, to include the withdrawal of the rejection of previous claim 1 under 35 U.S.C. 102 as provided in paragraph 26 of said previous action, and the inclusion of the subject matter of now-canceled claims 5 and 7 into the updated obviousness rejection of current claim 1.
In regards to the Applicant’s assertions that the Hatfield invention teaches away from the 40 to 70 % by weight content of the recited diblock, the Examiner submits that the cited paragraph 0016 actually demonstrates that the reference provides the skilled artisan with the instruction towards reducing the diblock content. Thus, as noted above, Hatfield, at paragraph 0018, one skilled in the art would be informed that the content of the diblock disclosed in paragraph 0018 of Hatfield of 40 to 80 weight percent relative to the block copolymer composition, which overlaps that presently claimed, was adjustable to ranges such as those disclosed in said paragraph 0018.
Therefore, the Examiner respectfully submits that the disclosure of the Hatfield reference, to include but not limited to said paragraph 0016, teaches or renders obvious the presently claimed invention to included the presently recited proportions of the diblock content relative to the thermoplastic block copolymer. 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). Examiner’s emphasis.
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 4/22/2026
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