DETAILED ACTION
Claim Status
Claim(s) 1-4 is/are pending.
Claim(s) 1-4 is/are rejected.
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 .
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 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.
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2004-292716 (SEKIGUCHI-JP ‘716),
in view of YOKOMICHI ET AL (US 2018/0305592),
and in view of DIEHL ET AL (US 2016/0032045).
SEKIGUCHI-JP ‘716 discloses hot-melt adhesive compositions useful for bonding non-polar polyolefin substrates to polar substrates, wherein the hot-melt adhesives comprise at least 20 wt% of a blend containing:
(A) 1-50 parts by weight of an acid-modified polyolefin (e.g., a polyolefin such as polypropylene, which is grafted with an unsaturated carboxylic acid and/or its derivatives, such as maleic acid, maleic anhydride, etc.);
(B) 100 parts by weight of a base resin (e.g., a polyester derived from dibasic acid and a divalent glycol; etc.);
(entire document, e.g., paragraph 0003, 0009-0016, 0023-0024, 0027-0028, 0036. etc.)
However, the reference does not specifically discuss the melting points (T1, T2) of the acid-modified polyolefin and polyester, or the ratio of the acid value (AV) of acid-modified polyolefins and the hydroxy number (OHV) of polyesters.
YOKOMICHI ET AL ‘592 discloses that it is well known in the art to utilize an acid-modified polypropylene resin as a component in hot-melt adhesives useful for bonding non-polar polyolefin materials to polar materials, wherein the acid-modified polypropylene resin have:
• a preferred acid value (AV) of 3-50 mg KOH/g, wherein acid values of less than 3 mg KOH/g can impair adhesion to polar materials, and acid values of more than 50 mg KOH/g can impair adhesion to a polyolefin resin substrate;
• a preferred melting point (corresponding to the recited “(T2)”) of 65-140 ºC;
wherein the acid-modified polypropylene resin is a polypropylene resin grafted (i.e., modified) with an α,β-unsaturated carboxylic acid (or acid anhydride thereof) (e.g., maleic acid; maleic anhydride; etc.). (paragraph 0001-0003, 0014-0018, 0049, etc.)
DIEHL ET AL ‘045 discloses that it is well known in the art to utilize (co)polyesters derived from:
• a polyacid component comprising one or more dicarboxylic acid(s) or derivative(s) thereof (e.g., aromatic dicarboxylic acids such as terephthalic acid, isophthalic acid, naphthalenedicarboxylic acid, etc.; aliphatic dicarboxylic acids such as succinic acid, adipic acid, cyclohexanedicarboxylic acid, etc.);
• a polyol component comprising one or more diol(s) (e.g., 1,2-ethandiol (i.e., ethylene glycol); 1,3-propanediol; 1,4-butanediol; 1,6-hexanediol; etc.) (corresponding to the recited “saturated aliphatic glycol” of claim 3), in combination with a phosphorus-containing diol;
as a polyester-based component for hot-melt adhesives in order to provide the hot-melt adhesives with effective flame retardant properties while avoiding or minimizing the presence of flame-retarding additives which can impair adhesive properties, wherein the (semi)-crystalline or amorphous (co)polyesters have:
• have a concentration of hydroxy end groups (corresponding to the recited “hydroxy value” and “OHV”) of 0-200 mg KOH/g (preferably 5-50 mg KOH/g);
• typical glass transition temperatures (Tg) of up to 100 °C;
• working melt processing temperatures of 80-180 °C.
(paragraph 0001-0002, 0005, 0007, 0012-0015, 0019, 0021-0022, 0025-0028, 0044-0045, 0042-0055, etc.)
Regarding claims 1-4, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: (i) utilize a known acid-modified polypropylene resin as suggested in YOKOMICHI ET AL ‘592 as the acid-modified polyolefin (A) in the hot-melt adhesives of SEKIGUCHI-JP ‘716; and (ii) utilize a known polyester copolymer with flame-retardant properties as disclosed in DIEHL ET AL ‘045 as the polyester base resin (B) in the hot-melt adhesives of SEKIGUCHI-JP ‘716; in order to produce a flame-retardant hot-melt adhesive useful for bonding non-polar polyolefin substrates to a polar substrate.
Further regarding claim 1, since: (a) DIEHL ET AL ‘045 discloses (co)polyesters with: (1) typical Tg values of up to 100 °C; and (2) typical working melt-processing temperatures of 80-180 °C; (b) the melting point (Tm), when present, of a polyester-type resin are always greater than the Tg of said polyester-type resin; and (c) the melt-processing temperature of thermoplastic polymers can be the same as, but is typically greater than (e.g., about 20-50 °C, etc.) the Tm of the thermoplastic polymers; the Examiner has reason to believe that copolyesters disclosed in DIEHL ET AL ‘045 can exhibit a range of Tm values which at least partially overlap the copolyester melting point (T1) range (i.e., 80-150 °C) recited in claim 1, therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Further regarding claim 1, one of ordinary skill in the art would have utilized acid-modified polyolefin resins (A) and polyester base resins (B) in the hot-melt adhesives of SEKIGUCHI-JP ‘716 with similar melting points (as represented by the recited “|T1-T2|” value of ≤ 40 °C) in order to produce hot-melt adhesives with uniform, consistent melting and flow characteristics for adhesive applications -- for example, significant differences in Tm values for various components of a hot-melt adhesive can cause: (i) inconsistent and/or only partial melting of the hot-melt adhesive; and/or (ii) thermal damage to lower Tm components because of exposure to substantially higher temperatures required to obtain complete melting of higher Tm components; etc.)
Further regarding claim 1, since:
OHV (eq/ton) = [1000 x OHV (mg KOH/g)] / 56.105 = 17.8 x OHV (mg KOH/g)
AV (eq/ton) = [1000 x AV (mg KOH/g)]/ 56.105 = 17.8 x AV (mg KOH/g)
the numerical value of the ratio AV/OHV calculated from AV and OHV in terms of (eq/ton) would be the same as the numerical value of the ratio AV/OHV calculated from AV and OHV in terms of (mg KOH/g).
Further regarding claim 1, since: (i) YOKOMICHI ET AL ‘592 disclose acid-modified polypropylene resins with AV values of 3-50 mg KOH/g (i.e., 53.4-890 eq/ton); and (ii) DIEHL ET AL ‘045 discloses polyester copolymers with preferred OHV values of 5-50 mg KOH/g (i.e., 89-890 eq/ton); a hot-melt adhesive in accordance with SEKIGUCHI-JP ‘716 utilizing: (i) known acid-modified polypropylene resins as disclosed in YOKOMICHI ET AL ‘592; and (ii) known polyester copolymers as disclosed in DIEHL ET AL ‘045; would exhibit AV/OHV ratios which at least partially read on the recited AV/OHV ratio of 0.5-4.5.
Regarding claim 3, one of ordinary skill in the art would have utilized combinations of known aromatic dicarboxylic acids and known aliphatic dicarboxylic acids as the polyacid component in the (co)polyesters of DIEHL ET AL ‘045 in order to optimize the thermal properties (e.g., Tm, Tg, melt viscosity, etc.) and/or crystallization characteristics of the (co)polyesters for specific adhesive usages and methods of application.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2004-292716 (SEKIGUCHI-JP ‘716), in view of YOKOMICHI ET AL (US 2018/0305592), and in view of DIEHL ET AL (US 2016/0032045),
as applied to claims 1-3 above,
and further in view of PASCHKOWSKI ET AL (US 2012/0315491).
PASCHKOWSKI ET AL ‘491 discloses that polyvinyl chloride (PVC) is characterized as a polar substrate material for (polyolefin / hot-melt adhesive / polar substrate) laminates. (paragraph 0102-0104, etc.)
Regarding claim 4, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize hot-melt adhesives of SEKIGUCHI-JP ‘716 incorporating: (i) known acid-modified polypropylene resins as disclosed in YOKOMICHI ET AL ‘592; and (ii) known flame-retardant copolyesters as disclosed in DIEHL ET AL ‘045; to form delamination-resistant (non-polar polyolefin / hot-melt adhesive / polar resin) laminates which are flame retardant, wherein the polar resin can be PVC (as suggested in PASCHKOWSKI ET AL ‘491).
Response to Arguments
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive.
(A) Applicant’s arguments regarding BATHE (US 5,008,366) have been considered but are moot in view of the new grounds of rejection necessitated by the Claim Amendments filed 01/30/2026.
(B) Applicant argues that hot-melt adhesives satisfying claimed requirements (1)-(5) produce “unexpectedly excellent adhesion between various types of substrates”. However, while the specification provide some evidence of unexpected results and/or criticality, the showings in the specification are not commensurate in scope with the present claims -- for example, but not limited to:
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• the type of copolyester -- in particular, the inventive Examples relied upon by Applicant utilize a limited range of copolyesters with OHV values of 70-100 eq/ton and Tm values of 90-130 °C, wherein the copolyesters are derived from:
• an acid component containing:
• 30-65 mol% terephthalic acid (TPA);
• 0-40 mol% isophthalic acid (IPA);
• 0-50 mol% adipic acid (AA);
• an diol component containing:
• 0-40 mol% ethylene glycol (EG);
• 59-100 mol% 1,4-butanediol (BD);
• 0-20 mol% polytetramethylene glycol with a Mn of 1,000 (PMTG1000).
However, the present claims 1-2, 4 contain nearly no limitations on the composition of the copolyester and utilize the open term “comprises” with respect to the composition of the copolyester which allows for the presence of any amount(s) and type(s) of additional repeating units as long as: (i) said copolyester is at least partially derived from a dicarboxylic acid component and a glycol component; and (ii) said copolyester has the recited T1 and OHV values.
Furthermore, present claim 4 contains only minimal limitations on the composition of the copolyester (i.e., the term “contains”, in the absence of explicit language to the contrary, is deemed equivalent to the open term “comprises”, which allows for the presence of any amount(s) and type(s) of additional dicarboxylic acid-based units as long as: (i) the dicarboxylic acid component of the copolyester contains at least one aromatic dicarboxylic acid and at least one aliphatic dicarboxylic acid.
Given the Applicant’s reliance on the “unexpectedly excellent adhesion between various types of substrates” from the claimed invention, the Examiner has reason to believe that the composition of the copolyester can have a material -- and potentially unpredictable -- effect on the adhesion properties of a hot-melt adhesive.
Applicant has not provided persuasive evidence that that the “unexpectedly excellent adhesion” relied upon by Applicant would be present with different copolyesters with non-trivial or significant differences in composition (e.g., materially different amounts of TPA, IPA, AA, EG, BD, PTMG1000; the presence of other dicarboxylic acid comonomers and/or glycols, etc.).
Similarly, Applicant has not provided persuasive evidence that that the “unexpectedly excellent adhesion” relied upon by Applicant would be present with different copolyesters with OHV or T1 values which fall within the claimed ranges but which deviate materially from the OHV and/or T1 values of the copolyesters A-D used in the composition (e.g., materially different amounts of TPA, IPA, AA, EG, BD, PTMG1000; the presence of other dicarboxylic acid comonomers and/or glycols, etc.).
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• the type of acid-modified polyolefin -- in particular, the inventive Examples relied upon by Applicant utilize a limited range of acid-modified polyolefins with AV values of 160-400 eq/ton and Tm values of 70-125 °C, wherein the acid-modified polyolefins are derived from:
• a base polyolefin containing:
• 70-90 mol% propylene (PP);
• 10-30 mol % butene (Bt);
• 0-10 mol% ethylene (Et);
• modified by 8-20 wt% maleic anhydride.
However, the present claims 1-2, 4 contain nearly no limitations on the composition of the acid-modified polyolefin which allows for acid-modified polyolefins based on any type of polyolefin and any type / any amount of acid as long as: (i) said acid-modified polyolefin has the recited T2 and AV values.
Furthermore, present claim 4 contains only minimal limitations on the composition of the acid-modified polyolefin as long as: (i) the polyolefin is modified with maleic anhydride.
Given the Applicant’s reliance on the “unexpectedly excellent adhesion between various types of substrates” from the claimed invention, the Examiner has reason to believe that the composition of the acid-modified polyolefin can have a material -- and potentially unpredictable -- effect on the adhesion properties of a hot-melt adhesive.
Applicant has not provided persuasive evidence that that the “unexpectedly excellent adhesion” relied upon by Applicant would be present with different acid-modified polyolefins with non-trivial or significant differences in composition (e.g., materially different types of base polyolefin; materially different types and/or amounts of modifying acid; the presence of other comonomers, etc.).
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• composition of the hot-melt adhesive as a whole -- in particular, the inventive Examples in the specification relied upon by Applicant utilize hot-melt adhesive compositions wherein: (i) the copolyester and the acid-modified polyolefin constitutes the effective entirety (i.e., 100 wt%); (ii) the AV/OHV ratio is 2.3-4.3.
However, the present claims utilize the open term “comprising” with respect to the composition of the hot-melt adhesive, which allows for the presence of any amount(s) and type(s) of additional components (e.g., other polymers, organic additives, inorganic additives, etc.) as long as: (i) the combined total of copolyester and acid-modified polyolefin constitute at least 70 wt% of the hot-melt adhesive.
Given the Applicant’s reliance on the “unexpectedly excellent adhesion between various types of substrates” from the claimed invention, the Examiner has reason to believe that the presence of non-trivial amounts (up to 30 wt%) of other components (e.g., other polymers, organic additives, inorganic additives, etc.) can have a material -- and potentially unpredictable -- effect on the adhesion properties of a hot-melt adhesive.
Applicant has not provided persuasive evidence that that the “unexpectedly excellent adhesion” relied upon by Applicant would be present when: (i) the recited copolyester and acid-modified polyolefin constitute less than the effective entirety (as low as 70 wt%) of the hot-melt adhesive as a whole.
Similarly, Applicant has not provided persuasive evidence that that the “unexpectedly excellent adhesion” relied upon by Applicant would be present when the AV/OHV ratio is less than 2.3.
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While Applicant is not required to provide evidence of unexpected results and/or criticality for every possible embodiment encompassed by the present claims, any showings of criticality and/or unexpected results provided by the specification or Applicant should be reasonably representative of the full scope of the claimed invention and/or provide sufficient evidence that can be reasonably extended by one of ordinary skill in the art over the scope of the present claims.
MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
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Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "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 occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
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I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
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The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
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II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
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To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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May 25, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787
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