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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 6/22/2026, with respect to the rejection of claims 2 and 5 under 35 U.S.C. 112(b) as set forth in paragraph 5 of the action mailed 3/25/2026, have been fully considered and are persuasive. The ejection of claims 2 and 5 has been withdrawn.
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 § 103
Claim(s) 1-3 and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoyama et al. (JP 2012188133 A). The Examiner notes that citations from ‘133 were taken from a machine translation, which is included with the previous action.
Regarding claim 1, Aoyama teaches a sealant material adhered to a carrier tape (para 0001) for heat bonding (heat sealable resin composition) (para 0014), and comprising (A) an ethylene-(meth)acrylate alkyl ester copolymer (ethylene-unsaturated carboxylic acid ester copolymer (B)), (B) tackifier, (C) ethylene-vinyl acetate copolymer (ethylene-vinyl ester copolymer (A)), (D) ethylene-a-olefin elastomer, (E) antiblocking agent and (F) slip agent (para 0011-0013).
Aoyama also teaches that the sealant material contains at least one (and thus two or more) (B) tackifier (tackifier resin (C)) such as, inter alia, alicyclic hydrocarbon resins (C1) and aromatic hydrocarbon resins (C2) (para 0032-0033). Aoyama further teaches that the vinyl ester content in the ethylene-vinyl acetate (EVA) copolymer is 3 to 20% by mass, which overlaps that presently claimed (8% by mass or more), towards a balance of heat seal strength and stickiness (para 0043).
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 EVA copolymer with the presently claimed vinyl acetate proportion towards the sealant material demonstrating the heat seal strength and stickiness based on the requirements of the prior art’s intended application as in the present invention.
Regarding claim 2, Aoyama teaches that the at least one (B) tackifier is present at 3 to 30 parts mass (1 to 40 % by mass) per 100 parts by mass of the components (A)-(D) (i.e. the resin components) (para 0032).
Regarding claim 3, Aoyama teaches that the softening point of the tackifiers (to include the aromatic hydrocarbon resin) is 85 to 130 ℃, which overlaps that presently claimed (70 to 140 ℃), towards a balance of heat resistance and adhesive properties (para 0040).
Regarding claims 5-6, Aoyama teaches that the (C) EVA copolymer is present at 0 to 70 parts mass (0 to 70 % by mass) per 100 parts by mass of the components (A)-(D) (i.e. the resin components), which overlaps that presently claimed (20 to 80 % by mass), towards adequate heat seal strength (para 0041-0042).
Aoyama also teaches that the (A) an ethylene-(meth)acrylate alkyl ester copolymer is present at 25 to 95 parts mass per 100 parts by mass of the components (A)-(D) (i.e. the resin components), which provides an overlap with the presently claimed mass ratio (B/A) of 0.20 to 1.0, with the (A) an ethylene-(meth)acrylate alkyl ester copolymer providing the disclosed sealant material high temperature/humidity adhesive/heat seal strength, heat resistance, mechanical properties and suppressed stickiness (para 0020, 0024-0026, 0029).
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 EVA copolymer in the presently claimed proportion and the mass ratio of copolymers (A) and (C) identical to that presently claimed towards the sealant material demonstrating the high temperature/humidity adhesive/heat seal strength, heat resistance, mechanical properties and suppressed stickiness based on the requirements of the prior art’s intended application as in the present invention.
Regarding claim 7, while Aoyama does not specify a haze value such as that presently claimed (less than 6.0%) under the recited conditions, Aoyama’s invention is concerned with transparency (0053). In addition, 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.
Indeed, given that Aoyama disclosed a sealant material identical to the presently claimed heat sealable resin composition, to include identical materials and in identical proportions, it is reasonable to conclude that the sealant material of the prior art would demonstrate identical haze values as determined under the presently claimed conditions, and one skilled in the art would have been apprised to adjust the haze to the presently claimed value based on the optical properties required of the prior art’s intended application as in the present invention.
Regarding claims 8-9, Aoyama teaches a cover tape (packaging material) comprising layer of the sealant material (heat sealable layer) on a base material (substrate layer) (claim 5).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoyama et al. (JP 2012188133 A) in view of Lange et al. (US 2018/0105693 A1).
Regarding claim 4, Aoyama does not specify a mass ratio between the disclosed alicyclic hydrocarbon and aromatic hydrocarbon tackifier resins.
However, Lange instructs that the degree of aromaticity for tackifiers included in compositions comprising EVA and ethylene-(meth)acrylate copolymers should be low towards more efficient mixing (para 0006) and compatibility (para 0012).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective date of the present invention to employ the disclosed alicyclic hydrocarbon and aromatic hydrocarbon tackifier resins in the sealant material of Aoyama in the presently claimed mass ratio (0.05 to 0.8) towards providing the sealant with the tackifier/copolymer compatibility while maintaining the requisite advantage(s) of aromatic tackifiers based on the requirements of the prior art’s intended application as in the present invention as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/22/2026, with respect to the rejections of claims 1-3 and 5-9 over Aoyama et al. under 35 U.S.C. 103 and claim 4 over Aoyama et al. in view of Lange et al. under 35 U.S.C. 103 as set forth in paragraphs 8-9 of the action mailed 3/25/2026, have been fully considered but they are not persuasive.
In response, the Examiner respectfully directs the Applicant’s attention to the prior art rejections set forth above, wherein it is noted that Aoyama teaches or renders obvious the presently claimed invention of at least current claim 1. Indeed, Aoyama, as cited, apprises the skilled artisan that the disclosed tackifiers comprises two tackifiers (B), to include both of the presently claimed tackifiers (C1) and (C2). Aoyama also teaches the presently claimed vinyl ester content, and further instructs the skilled artisan as to the motivation towards the same; that is, a balance of heat seal strength and stickiness.
Turning now to the Applicant’s assertion that the presently claimed invention demonstrates unexpected and advantageous effects, the Applicant is respectfully reminded that Aoyama does teach both the presently claimed tackifiers. Also, in regard to the vinyl ester proportions of the claims and those presented in the data presently disclosed, the Examiner submits that,
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).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of the vinyl ester given that the presently claimed amount of 8% by mass or more allows for values much higher than 8% by mass such as, for example, 70% by mass. Ethylene vinyl acetate copolymers EVA2 to EVA5, which are provided the inventive Examples 1-9, demonstrate vinyl acetate proportions ranging only from 10 to 25% by mass. Thus, it is unclear from the data whether the alleged unexpected effects would be provided over the full scope of the presently claimed invention as recited in at least current claim 1.
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 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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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.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/26/2026
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