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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on 2/26/2026 is acknowledged.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/26/2026.
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.
Claim(s) 2 and 5 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 2, the phrase "in a case in which" renders the claim indefinite because it is unclear when, and when not, the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "in a case in which" renders the claim indefinite because it is unclear when, and when not, the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
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 current 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.
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.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 3/21/2026