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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on April 11, 2026 have been entered. Claims 1, 3-6, 8-11, and 13-23 are pending in the application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 8-11, and 13-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nakada et al (US 2016/0244647 A1) in view of Koponen (US 2020/0299534) and Hiraoka et al (JP 2018/016714 A, using the machine translation for the citations below).
Regarding Claims 1 and 4: Nakada teaches a thermal bonding film/hot melt adhesive for use in adhesive films (para. 0001-0002) comprising at least 80 wt% of a copolymer (para. 0061). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the copolymer and would have been motivated to do so since Nakada teaches this amount allows for proper adhesion performance (para. 0061).
Nakada teaches the copolymer contains a monomer with a glass transition of 80 to 140°C and a monomer with a glass transition of -30 to 30°C (para. 0016). These temperatures overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a high-Tg monomer with an overlapping glass transition temperature to impart the adhesive with high cohesive force, durability, and heat resistance (para. 0032) and a low-Tg monomer with an overlapping glass transition temperature to achieve a high modulus at room temperature (para. 0042).
Nakada teaches the ratio of the high-Tg monomer block to the low-Tg monomer block is from 5:95-95:5, or preferably 25:75-40:60 (para. 0052) but is silent to the overall Tg of the copolymer. Based on the ratios of the two monomer blocks, the overall glass transition temperature will fall between -30-140°C.
Hiraoka teaches an adhesive material containing a copolymer having a low-Tg monomer block and a high-Tg monomer block (para. 0070), wherein the overall average Tg is 40°C or higher, which makes it easier to create an adhesive material with excellent storage stability (para. 0074); alternatively, the adhesive copolymer contains a high-Tg polymer such as a styrene-acrylic copolymer (para. 0069) having a Tg of 40°C or higher or preferably 40-60°C, which improves storage stability of the adhesive (para. 0049, 0051).
Hiraoka and Nakada are analogous art because they are directed toward the same field of endeavor, namely copolymer-based adhesives both utilizing copolymers having monomers with high Tg and monomers with low Tg.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the ratio of the high-Tg and low-Tg monomers in the copolymer taught by Nakada into a range that would result in an overall Tg of 40-60°C in order to improve the storage stability of the adhesive.
Nakada is silent to the coagulant and the dispersant.
Koponen teaches an adhesive film composition (para. 0207) comprising 70-90 parts of a copolymer (para. 0162), 0.1-5 parts of a coagulant (para. 0136), and 0.1-5 parts of a dispersant/surface-active agent (para. 0156), wherein the dispersant facilitates the dispersion of the polymer during the preparation of the adhesive (para. 0083) and the coagulant improves the wet strength of the adhesive/prevents dripping (para. 0137) and promotes film formation (para. 0120). Koponen and Nakada are analogous art because they are directed toward the same field of endeavor, namely adhesive films.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a dispersant and a coagulant to the thermal bonding film of Nakada in the amounts taught by Koponen in order to prevent dripping, facilitate film formation, and keep the polymer properly dispersed during preparation of the composition.
Regarding Claim 3: Nakada teaches monomers such as an alkyl methacrylate (para. 0029) and styrene (para. 0044), which would read on the polystyrene-alkyl methacrylate copolymer.
Regarding Claim 5: Koponen teaches fumed silica as the coagulant (para. 0126).
The limitations of Claims 6, 9-10, 18-19, and 23 are product-by-process limitations. MPEP § 2113 states that “even 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”. However, the Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II).
Although Nakada and Koponen do not teach the claimed production method of the thermal bonding film, they in combination teach the claimed structure of the film.
Regarding Claim 8: Nakada teaches a monomer with a glass transition of 80 to 140°C (para. 0016) and a monomer with a glass transition of -80 to -40°C (para. 0042). These temperatures overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a high-Tg monomer with an overlapping glass transition temperature to impart the adhesive with high cohesive force, durability, and heat resistance (para. 0032) and a low-Tg monomer with an overlapping glass transition temperature to achieve a high modulus at room temperature (para. 0042).
Regarding Claims 11 and 14-17: Nakada teaches that the thermal bonding film is suitable for use in sealing for heat insulation and bonding to curved/irregular surfaces (para. 0095), both of which would make it suitable for use in a water tank. The selection of a known material based on its suitability for its intended use support a prima facie case of obviousness. MPEP 2144.07. It would be obvious to use the thermal bonding film of Nakada in a water tank because of its art-recognized suitability for that purpose.
Because the claims are directed toward the thermal bonding film itself, limitations regarding the structure of the water tank are not considered to further limit the thermal bonding film.
Regarding Claim 13: Nakada teaches a monomer with a glass transition of 80 to 140°C (para. 0016) and a monomer with a glass transition of -80 to -40°C (para. 0042). These temperatures overlap the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a high-Tg monomer with an overlapping glass transition temperature to impart the adhesive with high cohesive force, durability, and heat resistance (para. 0032) and a low-Tg monomer with an overlapping glass transition temperature to achieve a high modulus at room temperature (para. 0042).
Regarding Claim 20: Koponen teaches that the dispersant is sodium dodecyl sulfate (para. 0085, sodium lauryl sulfate).
Regarding Claim 21: Nakada teaches butyl acrylate (para. 0037) and styrene (para. 0044-0045).
Regarding Claim 22: “Wherein the styrene monomer and the butyl acrylate monomer are mixed in a weight ratio of 2:1” in lines 2-3 is a product-by-process limitation. MPEP § 2113 states that “even 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”. Therefore, the structure implied by the process step of the mixing ratio of styrene and butyl acrylate will be considered when assessing patentability of Claim 22. However, the Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II).
A polymerization reaction will always result in a mixture of a polymer and residual, unreacted monomer. As such, the mixing ratio of the monomers is not necessarily the same as the final ratio of monomer units in the polymer; as long as the final product contains both butyl acrylate and styrene, the mixing ratio does not hold patentable weight.
Response to Arguments
Applicant’s arguments, filed April 11, 2026, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nakada, Koponen, and Hiraoka, as set forth above.
Correspondence
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/C.N.I./Examiner, Art Unit 1767
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
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