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 species i (claim 12) in the reply filed on 6/15/2026 is acknowledged.
Species ii (claims 13 and 14) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. Election was made without traverse in the reply filed on 6/15/2026.
Claim Objections
Claim 7 is objected to because of the following informalities: the recited “the acrylic copolymer contains 0.1% by weight or more and 10% by weight of the structure derived from a polar group-containing monomer” should be --the acrylic copolymer contains 0.1% by weight or more and 10% by weight or less of the structure derived from a polar group-containing monomer--. Appropriate correction is required.
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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) 1-12 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mallya et al (US 5625005 A) in view of Muroi et al (WO2015141382A1, machine translation is referenced herein). Artist SupplySource (“Regalrez 1094-Hydrocarbon Resin for Plastics , Adhesives, Coatings, Sealants and Caulks”, 2026) and Synthomer (“Technical data sheet Regalrez 1018 Hydrocarbn resin”, 2022) are cited as an evidentiary references. All documents are previously presented.
Regarding claims 1-12 and 15, Mallya teaches a pressure sensitive adhesive coated on a tape [col.7 lines 38-39], reading on the claimed adhesive tape.
The adhesive comprises a graft copolymer formed by reacting an acrylic monomer comprising at least one alkyl acrylate ester (e.g., 2-ethylhexyl acrylate (2-EHA)), an unsaturated carboxylic acid (e.g., acrylic acid (AA)), in the presence of a macromer selected from the group consisting of ethylene-butylene and ethylene-propylene macromers with each of said macromer having a terminal reactive group of acrylate or methacrylate (EB macromer) [abstract, col.6 lines 22-26, col.8 lines 21-28 Example 2]. The alkyl acrylate ester (e.g., 2-ethylhexyl acrylate (2-EHA)) reads on the recited structure derived from an alkyl (meth)acrylate in claim 4. The EB macromer reads on the recited structure derived from an olefinic polymer having a polymerizable unsaturated double bond at an end in claim 4. The unsaturated carboxylic acid (e.g., acrylic acid (AA)) reads on the recited structure derived from a polar group-containing monomer in claims 5-6. The graft copolymer reads on the recited acrylic copolymer in claim 3.
The graft copolymer in Example 2 has 15% of the EB macromer, falling within the recited range of 5-30% in claim 9.
The graft copolymer in Example 2 has 6.8% of the acrylic acid (8 ppha of 85% of the acrylic copolymer), falling within the recited range of 0.1-10% in claim 7.
Mallya is silent about the molecular weight of the graft copolymer.
In the same field of endeavor, Muroi teaches a pressure sensitive adhesive comprising a (meth)acrylic copolymer which is obtained by copolymerizing a (meth)acrylate alkyl ester and a monomer component containing a polymerizable macromonomer [abstract]. The copolymer has a weight average molecular weight (Mw) of 200,000 to 1,500,000 [P8 2nd para.].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a graft copolymer according to Mallya having a weight average molecular weight (Mw) of 200,000 to 1,500,000, as Muroi demonstrates this range to be suitable for similar copolymer for pressure sensitive adhesive. This represents the use of a suitable range of molecular weight for a copolymer which is compositionally similar to those of Muroi and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141. The weight average molecular weight (Mw) of 200,000 to 1,500,000 overlaps the recited range of 200,000 or greater and 2,000,000 or less in claim 8.
The adhesive comprises tackifiers comprising Regalrez 1094 and Regalrez 1018 [col.8 lines 57-60 Example 4]. Mallya is silent about the hydroxyl values of the tackifiers. However, as evidenced by Artist SupplySource, Regalrez 1094 has a hydroxyl value of about 40 [Properties], meeting the claimed high-hydroxy value tackifier resin in claim 10. Regalrez 1018 has no reported hydroxyl group as evidenced by Synthomer, therefore should have zero hydroxyl value.
Mallya teaches Example 4 containing 9.39 g of the copolymer, 1.41 g of Regalrez 1094, and 0.705 g of Regalrez 1018 [col.9 Example 4]. Thus, the high-hydroxy value tackifier (Regalrez 1094) is 15 part per 100 parts of the copolymer; the low-hydroxy value tackifier (Regalrez 1018) is 7.5 parts per 100 parts of the copolymer, as calculated by the examiner. The amount of high-hydroxy value tackifier falls within the recited range of 1-40 parts of high-hydroxy value tackifier in claim 11. The amount of low-hydroxy value tackifier is sufficiently close to 5 parts of low-hydroxy value tackifier in claim 12 that one of ordinary skill in the art would prima facie expect the adhesives based on these amounts to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Therefore, the adhesive composition is substantially identical to the claimed adhesive.
The recited scattering peaks in claims 1-2 and the recited gel fraction in claim 15 are properties of the product. “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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited properties are expected to be present.
Claim(s) 1-12 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mallya et al (US 5625005 A, previously presented) in view of Muroi et al (WO2015141382A1, machine translation is referenced herein, previously presented) and Kato et al (WO 2020013168 A1, machine translation is referenced herein).
Regarding claims 1-12 and 15, Mallya teaches a pressure sensitive adhesive coated on a tape [col.7 lines 38-39], reading on the claimed adhesive tape.
The adhesive comprises a graft copolymer formed by reacting an acrylic monomer comprising at least one alkyl acrylate ester (e.g., 2-ethylhexyl acrylate (2-EHA)), an unsaturated carboxylic acid (e.g., acrylic acid (AA)), in the presence of a macromer selected from the group consisting of ethylene-butylene and ethylene-propylene macromers with each of said macromer having a terminal reactive group of acrylate or methacrylate (EB macromer) [abstract, col.6 lines 22-26, col.8 lines 21-28 Example 2]. The alkyl acrylate ester (e.g., 2-ethylhexyl acrylate (2-EHA)) reads on the recited structure derived from an alkyl (meth)acrylate in claim 4. The EB macromer reads on the recited structure derived from an olefinic polymer having a polymerizable unsaturated double bond at an end in claim 4. The unsaturated carboxylic acid (e.g., acrylic acid (AA)) reads on the recited structure derived from a polar group-containing monomer in claims 5-6. The graft copolymer reads on the recited acrylic copolymer in claim 3.
The graft copolymer in Example 2 has 15% of the EB macromer, falling within the recited range of 5-30% in claim 9.
The graft copolymer in Example 2 has 6.8% of the acrylic acid (8 ppha of 85% of the acrylic copolymer), falling within the recited range of 0.1-10% in claim 7.
Mallya is silent about the molecular weight of the graft copolymer.
In the same field of endeavor, Muroi teaches a pressure sensitive adhesive comprising a (meth)acrylic copolymer which is obtained by copolymerizing a (meth)acrylate alkyl ester and a monomer component containing a polymerizable macromonomer [abstract]. The copolymer has a weight average molecular weight (Mw) of 200,000 to 1,500,000 [P8 2nd para.].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a graft copolymer according to Mallya having a weight average molecular weight (Mw) of 200,000 to 1,500,000, as Muroi demonstrates this range to be suitable for similar copolymer for pressure sensitive adhesive. This represents the use of a suitable range of molecular weight for a copolymer which is compositionally similar to those of Muroi and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141. The weight average molecular weight (Mw) of 200,000 to 1,500,000 overlaps the recited range of 200,000 or greater and 2,000,000 or less in claim 8.
Mallya teaches that the adhesive comprises tackifiers [col. 4 lines 59-61]. Mallya is silent about the hydroxyl values of the tackifiers.
In the same field of endeavor, Kato teaches acrylic based pressure sensitive adhesive [P1L58-59, P2L4-6], comprising a tackifier of high hydroxyl value resin having a hydroxyl value of 30 mg KOH / g or more [P11L45-47], and a tackifier of low hydroxy value resin having a hydroxyl value of 15 mg KOH / g or less [P11L38-41]. The proportion of the high hydroxyl value resin in the entire tackifier resin contained in the pressure-sensitive adhesive layer can be about 80% by weight or more [P12L37-40]. The content of the high hydroxyl value resin is 10 parts by weight or more based on 100 parts by weight of the base polymer [P12L47-48].
The high hydroxyl value resin having a hydroxyl value of 30 mg KOH / g or more meets the claimed high-hydroxy-value tackifier resin having a hydroxy value of 15 mg KOH/g or greater in claim 10; and its amount of 10 parts by weight or more based on 100 parts by weight of the base polymer meets the claimed 1 part by weight or more and 40 parts by weight or less of the high-hydroxy-value tackifier resin relative to 100 parts by weight of the acrylic copolymer in claim 11.
The low hydroxy value resin having a hydroxyl value of 15 mg KOH / g or less meets the claimed low-hydroxy-value tackifier resin having a hydroxy value of less than 15 mg KOH/g in claim 12. Its amount is about 0-2 parts based on 100 parts by weight of the base polymer (10 parts of total tackifier containing less than 20% of the low hydroxy value resin), meeting the claimed range of 5 parts by weight or less relative to 100 parts by weight of the acrylic copolymer in claim 12.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the combination of high hydroxyl value resin tackifier and low hydroxyl value resin tackifier as the tackifier in Mallya’s acrylic based pressure-sensitive adhesive composition, as it is expressly disclosed as being useful in this capacity (a tackifier for acrylic based pressure-sensitive adhesive). It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Therefore, the adhesive composition is substantially identical to the claimed adhesive.
The recited scattering peaks in claims 1-2 and the recited gel fraction in claim 15 are properties of the product. “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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited properties are expected to be present.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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