DETAILED ACTION
Examiner’s Note
In light of the new ground(s) of rejection set forth below, the following action is made non-final. The proposed amendments filed 7/24/2026 have been considered, and are entered.
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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 17 recites the solution viscosity and the aniline point of the at least one plasticizer, but neither property associated with the plasticizer is mentioned in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “…40% to 70% by weight of the at least one thermoplastic block 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 1-3, 6-8 and 11-25 and claim 26 and claims 28-29 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.
Regarding claim 1, it is unclear from the claim language what is, and what is not, unequivocally being recited given that it is unclear if the styrene monomer content of 15 to 45 % by weight is referring to the total at least one thermoplastic block polymer (to include a di-block polymer), or only to the di-block polymer.
Claim 12 recites the limitation "the at least one tackifier resin" in line 2. There is insufficient antecedent basis for this limitation in the claim as an at least one tackifier resin (versus the at least one tackifier of current claim 11) has not been previously introduced.
Claim 13 recites the limitation "the at least one tackifier resin" in line 2. There is insufficient antecedent basis for this limitation in the claim as an at least one tackifier resin (versus the at least one tackifier of current claim 11) has not been previously introduced.
Claim 14 recites the limitation "the at least one tackifier resin" in line 2. There is insufficient antecedent basis for this limitation in the claim as an at least one tackifier resin (versus the at least one tackifier of current claim 11) has not been previously introduced.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 7-8, 11-12 and 14-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasitskaya et al. (US 2022/0213354 A1) in view of Hatfield et al. (US 2006/0229411 A1).
Regarding claim 1, Kasitskaya teaches a hotmelt, pressure-sensitive adhesive (HMPSA) composition comprising:
(A) a blend of an SIS elastomeric block copolymer and an SB elastomeric copolymer;
(B) at least one tackifying compound selected from:
(I) at least one tackifying rosin ester having a softening point (SP) ranging from 95 to 125 ℃, and
(II) at least one rosin phenolics having a softening point (SP) ranging from 95 to 125 ℃, and
(III) at least one hydrogenated dicyclopentadiene resin having a softening point (SP) of at least 125 ℃; and,
(C) a plasticizer;
wherein said SB copolymer is one or more of;
(i) a copolymer of SB,
(ii) a block copolymer of SB,
(iii) a radial, block copolymer of SB,
(iv) a linear, block copolymer of SB,
and (v) a linear, random-block copolymer of SB (para 0012-0018).
The Examiner notes that the SIS elastomeric block copolymer teaches the presently claimed at least one thermoplastic styrene-isoprene block copolymer. The Examiner also notes that claim 12 of the reference recites that the SB copolymer is a linear random copolymer, which teaches a non-thermoplastic styrene butadiene polymer.
Kasitskaya also teaches that the SIS elastomeric block copolymer is a blend of an S-I-S tri-block and an S-I diblock with the S-I di-block present at 15 to 85% by weight of the SIS block copolymer (para 0153-0155), which overlaps that presently claimed (40 to 70% by weight). Kasitskaya further teaches that the SIS elastomeric block copolymer has a styrene content of 20 to 24% by weight (15 to 45% by weight) (para 0156-0158); and that the SB copolymer has a styrene content of 23 to 27% by weight (20 to 30% by weight) (para 0174-0176).
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).
Kasitskaya is silent to the Mooney viscosity of the SB copolymer.
However, Hatfield teaches adhesive compositions comprising random SBR copolymers that have a Mooney viscosity of less than 60, which overlaps that presently claimed (40 to 55 %), towards blending of the SBR copolymer with other components of the hot melt pressure sensitive adhesive (para 0019).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ SB copolymers having the presently claimed Mooney viscosity towards the overall viscosity of the resultant HMPSA and the miscibility of the SB copolymer with the HMPSA as required by the prior art’s intended application as in the present invention.
While Kasitskaya does not discloses that the SB copolymer was formed via emulsion polymerization, the Applicant is respectfully reminded that,
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Kasitskaya teaches the non-thermoplastic random SB copolymer of the claimed composition, Kasitskaya clearly meet the requirements of the present claims.
Regarding claims 2 and 7, Kasitskaya teaches that the total elastomeric copolymer content of the HMPSA is 20 to 50% by weight (para 0147-0149), wherein the SIS and SB are present at 45 to 55% by weight and 45 to 55% by weight, respectively, based on the total elastomeric content (para 0150-0152). Thus, the SIS elastomeric block copolymer is present in an amount ranging from 9 to 28% by weight, based on the total content of the HMPSA (i.e., 5 to 50 weight%, current claim 2); and the SB copolymer is present in an amount ranging from 9 to 28% by weight, based on the total content of the HMPSA (i.e., 5 to 25 weight%, current claim 7).
Regarding claim 3, the SIS block copolymer teaches an A-B-A structure.
Regarding claim 8, the SB linear random copolymer teaches an A-B structure.
Regarding claim 11, as noted above, Kasitskaya teaches that the HMPSA composition comprises (B) at least one tackifying compound (i.e., a tackifier).
Regarding claim 12, Kasitskaya teaches that the tackifying compounds are included towards increasing the tack of the HMPSA (para 0187), and comprise a tackifying rosin ester present at 0 to 40% by weight of the HMPSA (para 0188-0190); a rosin phenolics tackifying compound present at 0 to 40% by weight of the HMPSA (para 0195-0197); and a hydrogenated dicyclopentadiene tackifying compound present at 0 to 40% by weight of the HMPSA (para 0202-0204). Thus, the tackifying compounds of Kasitskaya are present in an amount which overlaps that presently claimed (40 to 65 weight%).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to include the tackifying compounds in the HMPSA of Kasitskaya in the presently claimed proportions based on the tack required by the prior art’s intended application as in the present invention.
Regarding claim 14, as noted above, Kasitskaya teaches that the (B) at least one tackifying compound comprises (I) at least one tackifying rosin ester.
Regarding claims 15 and 17-18, as noted above, Kasitskaya teaches that the HMPSA composition comprises (C) a plasticizer such as, inter alia, petroleum oils (para 0210), which is identical to that presently claimed as providing the solution viscosity of 60 to 90 cSt at 40 ℃ and the aniline point of 98 to 130 ℃.
Regarding claim 16, Kasitskaya teaches that the plasticizer content is 10 to 30% by weight of the HMPSA (i.e., 5 to 45 weight%) (para 0214-0215).
Regarding claims 19-20, Kasitskaya is silent to the HMPSA comprising at least one wax in an amount of greater than 0.0 to 10.0 weight%, and selected from the compounds of current claim 20.
However, Kasitskaya does instructs that the HMPSA composition further comprises additives in an amount of 0.1 to 5% by weight (para 0216-0220).
In addition, Hatfield teaches wax(es) selected from, inter alia, paraffin wax, and is present at 0 to 10 by weight% towards reducing the surface tack and blocking (para 0035).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to include the presently claimed wax(es), and in the presently claimed proportions, in the HMPSA of Kasitskaya towards reducing the surface tack and blocking as in the present invention.
Regarding claims 21-22, Kasitskaya teaches that the HMPSA composition further comprises fillers in an amount of 0.1 to 5% by weight (less than 20.0 weight%), and is selected from, inter alia, calcium carbonate (para 0216-0219).
Regarding claims 23-24, Kasitskaya teaches that the HMPSA composition further comprises antioxidants (stabilizer) in an amount of 0.1 to 5% by weight (less than 10.0 weight%), and is selected from, inter alia, hindered phenols (para 0216, 0218-0220).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasitskaya et al. (US 2022/0213354 A1) in view of Hatfield et al. (US 2006/0229411 A1) and in further view of Sugimoto et al. (JP 2016204665 A), the original document and machine translation of which were included with a previous 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, Kasitskaya is silent to the glass transition temperature (Tg) and solution viscosity of the SIS elastomeric block copolymer.
However, Sugimoto teaches hotmelt adhesives (title) comprising a SBS block copolymer (A1) comprising a solution viscosity of 100 to 250 mPa·s. Sugimoto instructs that the solution viscosity balances the retention strength and low-temperature coatability (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 with the presently claimed solution viscosity and Tg based on the SIS elastomeric block copolymer’s contribution to the HMPSA’s overall balance of retention strength and low-temperature coatability, viscosity, tack, peel, cohesion and Tg as required by the prior art’s intended application as in the present invention.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasitskaya et al. (US 2022/0213354 A1) in view of Hatfield et al. (US 2006/0229411 A1) and in further view of Igarashi et al. (US 2013/0244029 A1).
Regarding claim 13, Kasitskaya teaches that the tackifying compounds have a softening point (SP) of 95 to 125 ℃, or any range between two numbers with said SP range such as that presently claimed (i.e., 95 to 105 ℃) (para 0191-0193).
While Kasitskaya does not disclose the average molecular weight of the tackifying compounds, Igarashi instructs that the weight average molecular weight of a tackifier employed in styrene-based PSA compositions is selected in a range from 300 to 30,000 towards considerations of adhesive strength (abstract, para 0051).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to include the tackifying compounds in the HMPSA of Kasitskaya comprising the presently claimed average molecular weight based on the adhesive strength required by the prior art’s intended application as in the present invention.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasitskaya et al. (US 2022/0213354 A1) in view of Hatfield et al. (US 2006/0229411 A1) and in further view of Sugimoto et al. (JP 2016204665 A) and Igarashi et al. (US 2013/0244029 A1).
Regarding claim 25, the Applicant is respectfully reminded that, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Thus, given that the HMPSA composition of Kasitskaya/Sugimoto/Igarashi/Hatfield teaches or renders obvious all the limitations of the presently claimed invention as recited in current claims 1-3, 6-8 and 11-24, it is reasonable to conclude that the HMPSA of the cited prior art would demonstrate the presently claimed static shear time, viscosity range, Tg range and elastic modulus (G’).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasitskaya et al. (US 2022/0213354 A1) in view of Hatfield et al. (US 2006/0229411 A1).
Regarding claims 26, Kasitskaya teaches the HMPSA composition as in the rejection of at least current claim 1 set forth above.
Kasitskaya also teaches that the HMPSA is applied onto a carrier (substrate) to form an air-barrier membrane (label) (para 0230).
Claim(s) 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kasitskaya et al. (US 2022/0213354 A1) in view of Hatfield et al. (US 2006/0229411 A1).
Regarding claims 28-29, Kasitskaya teaches the HMPSA is applied onto a carrier to form an air-barrier membrane as in the rejection of at least current claims 1 and 26 set forth above
Kasitskaya also teaches that the air-barrier membrane is applied onto a substrate (article) to form a covered substrate (labelled article) (para 0075), which said substrate is, inter alia, plywood (para 0086).
Response to Arguments
Applicant’s arguments with respect to the rejections of claims 1-3, 7-8, 11-20 and 23-25 over Hatfield et al. under 35 U.S.C. 103; claims 1-3, 7-8, 11-20 and 23-25 over Hatfield et al. under 35 U.S.C. 103; claim 6 over Hatfield et al. in view of Sugimoto 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; claims 26-27 over Hatfield et al. under 35 U.S.C. 103; and claims 28-29 over Hatfield et al. under 35 U.S.C. 103 as set forth in paragraphs 14-18 of the action mailed 4/24/2026, 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.
Also, the alleged inventive Examples 1-4 are not commensurate in scope with the presently claimed invention. The thermoplastic SIS block polymer has no styrene content range much less representative of the presently claimed range of 15 to 45% by weight. The thermoplastic SIS block polymer has no di-block content range much less representative of the presently claimed range of 40 to 70% by weight. The non-thermoplastic random polymer has no styrene content range much less representative of the presently claimed range of 20 to 30% by weight.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “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 occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/25/2026
Prosecution Insights