DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 1-18; “a hot-melt pressure-sensitive adhesive composition”) in the reply filed on 02/23/2026 is acknowledged.
3. Claims 19-25 were cancelled and withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/23/2026.
Claim Objections
4. Claims 10-11, 14, and 18 are objected to because of the following informalities:
As to Claim 10: The applicants are advised to replace the claimed phrase “chosen from” with the new phrase “selected from the group consisting of” to be consistent with the Markush claim language as set forth in MPEP section 2173.05 (h).
As to Claims 11, 14 and 18: The applicants are advised to replace the claimed phrase “the composition” with “the adhesive composition”.
Appropriate corrections are required.
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.
5. Claim 5 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.
As to Claim 5: It recites "substantially devoid of aromatic modifications.” The claimed term “substantially” is a relative expression, which can be interpreted subjectively absent any definition or guidance in the specification. Yet, the instant specification does not define or provide any guidance to understand the meaning of "substantially." Nor does the instant specification even mention or disclose the term “substantially" in the context of aliphatic tackifier being “substantially devoid of aromatic modifications" (see, for example, paragraph [0048] of applicants’ published application, i.e., US PG PUB 2024/0052212).
Accordingly, the scope of this claim is deemed indefinite.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
6. Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hussein (US 10,793,752)1 in view of He et al. (US 2005/0182194) OR in view of He et al. and Joseph et al. (US 2011/0135922).
The claims are directed to a hot-melt pressure-sensitive adhesive composition which is defined to have an operable temperature window between about 5-140°F (equivalent to -15°C to 60°C). The claimed composition also comprises a styrenic block copolymer having a particular amount of diblock content, an aliphatic tackifier, an oil-based plasticizer, and an aromatic tackifier. Moreover, the claimed composition has a phase-separated morphology comprising at least two distinct domains.
As to Claims 1-10 and 12-14: Hussein discloses a hot melt adhesive composition that may display pressure sensitive properties (Col. 4, lines 54-55 and Col. 5, lines 19-30), corresponding to the claimed hot-melt pressure-sensitive adhesive composition. This adhesive composition taught by Hussein comprises at least one thermoplastic polymer chosen from styrene block copolymers having a diblock content of 1-60% by weight (overlaps with the diblock contents of 5-40% by weight and 15-38% by weight recited in claims 1 and 8, respectively), at least one tackifying resin (tackifiers), and at least one plasticizer chosen from naphthenic oils, paraffinic oils and mixture thereof (corresponding to the claimed oil-based plasticizer) (Col. 4, line 57-Col. 5, line 65 and Col. 7, lines 25-60). Hussein also discloses that the styrene block copolymers may be selected from styrene-isoprene-styrene (SIS) block copolymer having a melt flow index of 5-20 (which overlaps with the claimed melt flow index of 8-28), a styrene content of, for example, 15% by weight (encompassed by the claimed styrene content of 10-30%), and a diblock percentage of 1-60 % by weight (which overlaps with the claimed at below or 38% by weight which is interpreted to include the range, i.e., 5-38% by weight) (Col. 6, lines 22-50 and Col. 7, line 4-Col. 8, line 35). Hussein further discloses that its composition further comprises 0.1-2% by weight of at last one antioxidant and 0-10% by weight of other ingredients including ultraviolet light stabilizers (Col. 16, lines 60-67 and Col. 17, lines 9-28), which overlaps with 0.1-2% by weight of the antioxidant and stabilizer recited in claim 14.
Moreover, Hussein discloses employing at least one tackifying resin (tackifiers) including aliphatic petroleum hydrocarbon resins such as C5-hydrocarbon monomers (which according to present claims 4 and 5 correspond to the claimed aliphatic tackifier including those that are substantially devoid of aromatic modifications) having a softening point of 60-140 degrees Celsius (overlaps with the claimed softening point of 10-120 °C) (Col. 9, line 1-Col. 10, line 50) and an end-block reinforcing resin selected from aromatic resins such as aromatic C9-hydrocarbon monomer and alpha-methyl styrene (which according to present claims 2 and 3 correspond to the claimed aromatic tackifier that associates with an end-block of the styrenic block copolymer and induces phase separation in the adhesive composition) having a softening point temperature of 120-140 degrees Celsius (overlaps with the claimed softening point of 50-250°C) in the adhesive composition (Col. 16, lines 30-56).
However, Hussein does not specifically mention that its aliphatic tackifier associates with a mid-block of the styrenic block copolymer as required by the claims.
Nevertheless, He et al. disclose the use of aliphatic tackifying resins (tackifiers) that are compatible (associates) with the mid-block of styrene block copolymer, including styrene-isoprene styrene, in hot melt adhesive compositions having excellent toughness, bond strength and adhesive properties (Paragraphs [0010]-[0011], [0013], and [0018]-[0022]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed aliphatic tackifiers that associates with the mid-block of styrene block copolymer taught by He et al. as the aliphatic tackifiers in the hot-melt adhesive composition of Hussein, with a reasonable expectation of successfully obtaining excellent toughness, bond strength and adhesive properties.
Additionally, the claimed phase-separated morphology of the adhesive composition comprising at least two distinct domains, according to applicants at paragraph [0050] of the present specification, refers to distinct chemical domains or layers with a material, where the distinction is based on differences in chemical composition or structure. Paragraphs [0043] and [0050] of the present specification also discloses that such phase-separated morphology is achieved by combination of one or more styrene-isoprene-styrene copolymer and at least two tackifier resins wherein one tackifier resin is aliphatic in nature (e.g., C5 resins) and the other is aromatic in nature (e.g., C9 resins) least one oil-based plasticizer that result in a low diblock content, e.g., less than or equal to about 40% by weight of the styrene block copolymer. Specifically, as mentioned above, Hussein suggests the combination of one or more styrene-isoprene-styrene copolymer, at least two tackifier resins wherein one tackifier resin is aliphatic in nature (e.g., C5 resins) and the other is aromatic in nature (e.g., C9 resins), and at least one oil-based plasticizer that result in a diblock content of 1-60 % by weight, which overlaps with the disclosed low diblock content of less than 40% by weight, and thus, according to applicants, result in the claimed adhesive composition having a phase-separated morphology comprising at least two distinct domains.
To the extent Hussein does not suggest the claimed adhesive composition having a phase-separated morphology comprising at least two distinct domains, Joseph et al. teach the use of adhesive compositions comprising multiple tackifiers and styrene block copolymers having a phase-separated morphology with distinct regions of domains to obtain structural and cohesive strengths (Paragraphs [0012], [0023], and [0028]). Thus, it would have been obvious to one of ordinary skill in the art to employ the adhesive composition suggested by Hussein and He et al. in the form of that having a phase-separated morphology comprising at least two distinct domains, as taught by Joseph et al., with a reasonable expectation of successfully obtaining structural and cohesive strengths.
Finally, as to the particular operable temperature windows recited in claims 1 and 9, paragraph [0049] of the present specification discloses that the softening points of the aromatic tackifier and aliphatic tackifier are relevant, in that their relation to each other facilitates the adhesive’s operation within a wide temperature window. Specifically, as mentioned supra, Hussein suggests using a tackifying resin such as an aliphatic petroleum hydrocarbon resins, e.g., C5-hydrocarbon monomers (aliphatic tackifier), having a softening point of 60-140 degrees Celsius (overlaps with the claimed softening point of 10-120 °C) and an end-block reinforcing resin selected from aromatic resins such as aromatic C9-hydrocarbon monomer and alpha-methyl styrene (aromatic tackifier) having a softening point temperature of 120-140 degrees Celsius (overlaps with the claimed softening point of 50-250°C) in the adhesive composition (Col. 16, lines 30-56). Since the claimed aliphatic and aromatic tackifiers suggested by Hussein have overlapping softening points as those claimed, the hot-melt adhesive composition suggested by Hussein would also, like the claimed hot-melt adhesive composition, possess operable temperatures between 5-140°F and 15-120°F.
As to Claim 11: Hussein discloses employing the styrenic block copolymer in an amount of 10-80% by weight, which overlaps with the claimed 10-50% by weight, the tackifying resins (tackifiers) including the claimed aliphatic tackifiers, in an amount of 20-70% by weight, which overlaps with the claimed 35-55% by weight of aliphatic tackifier, 3-20 % by weight of the endblock reinforcing resin, e.g., alpha-methyl styrene, which overlaps with the claimed 1-15% by weight of aromatic tackifier, and the oil-based plasticizer in an amount of less than 30% by weight, which overlaps with the claimed 15-25% by weight of the oil-based plasticizer, in the adhesive composition (Col. 8, lines 41-46, Col. 10, lines 49-55, Col. 15, lines 10-20, and Col. 16, lines 35-56). Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the overlapping portion of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness. See MPEP section 2144.05.
As to Claims 15-18: These claimed properties would have naturally followed from the suggestion of Hussein and He et al. (with or without Joseph et al.) and since Hussein and He et al. (with or without Joseph et al.) and collectively suggest the claimed hot melt adhesive composition for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “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.”
Correspondence
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 05/06/2025.