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 .
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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 22 December 2025. A preliminary amendment was filed on 20 February 2026 canceling claims 18-19. Replacement drawings and an amended specification were submitted on 18 July 2023. Claims 1-17 and 20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 27 December 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-17 and 20) in the reply filed on 20 February 2026 is acknowledged. Applicant has canceled claims 18-19.
Specification
The use of the trademarks has been noted in this application, see, e.g., page 8 of the clean specification submitted on 18 July 2023 which refers to DEXCO DPX 600, VECTOR 4186, KRATON D1126P, and page 10 which refers to KRISTALEX 5140, ENDEX 155, PLASTOLYN 290LV, and HRJ-2765. Other trademarks are used throughout the disclosure. Trademarks should be capitalized wherever they appear and be accompanied by the generic terminology.
Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks.
Drawings
The replacement drawings received on 18 July 2023 are acceptable.
Claim Objections
Claims 3, 6 and 7 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 3, the claim is awkwardly worded as it refers to “…wherein the a styrene…”. The Examiner suggests instead reciting “..wherein the amount of styrene in the styrenic block copolymer is 17.2% and the amount of a di-block is 72.8% of the total weight percentage of the styrenic block copolymer.”
Regarding claim 6, the claim should recite “…comprises one or more of a phenolic resin…” to be grammatically correct.
Regarding claim 7, the claim should remove the hyphen between the words “end” and “block” so that the claim reads: “wherein the [[end-block]] end block modifier…” to be consistent with claim 1.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1, 2, 10, 11, 12, and 20, the claims recite numerical ranges using both “approximately” and “about”, e.g. “an adhesion promoter approximately in a range of about 1.1% to about 1.5%...”. The use of both “approximately” and “about” expands the scope of the numeric ranges to be indefinite as it is unclear what values may be outside of the numeric range yet sufficiently approximate to about the range to be considered within the scope of the invention. The specification uses this same terminology but does not further define the scope of either “approximately” or “about”.
The Examiner suggests removing the “approximately” references so that the claimed ranges read, e.g. “an adhesion promoter ”.
Regarding claims 9 and 13, these claims contain the trademark/trade name ESCOREX 2203, PICCOTEX 100, DYMEREX, and P-95 SUMMIT ROSIN. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name, particularly since the composition of the goods or products may change over time. Further, the proprietary nature of trademarks utilized in a patent application should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks, wherein it is noted that the use of trademarks in a claim might adversely affect their validity as trademarks.
Claim 10 recites “…further comprising one or more additives including an oil approximately in a range of about 1.5% to about 2.5% of the total weight percentage of the adhesive.” It is unclear whether the percentage amount refers to the total amount of additives in the composition, or the amount of oil in the composition. For example, if the adhesive includes an antioxidant and the oil as additives, does the claim require that the total amount of the additives (antioxidant + oil) be in the claimed range or that the amount of oil be within the claimed range? Clarity is needed.
Regarding claim 11, the reference to “the one or more additives” lacks sufficient antecedent basis as no such additives are referred to in claim 1, upon which this claim depends. The Examiner suggests amending the claim to depend on claim 10 which provides proper antecedent basis for this term. See MPEP § 2173.05(e).
Regarding claim 13, the reference to “the polymerized resin” lacks sufficient antecedent basis as no such resin is referred to in claim 1, upon which this claim depends. The Examiner suggests amending the claim to depend on claim 12 which provides proper antecedent basis for this term. See MPEP § 2173.05(e).
Claims 2-20 depend on one or more of the above claims and thus incorporate the above-described indefinite subject matter.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claims 1-14, 16, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/090068 A2 as evidenced by the ESCOREZ 2203 LC technical data sheet; the PICCOTEX 100 technical data sheet; the DYMEREX Polymerized Resin technical datasheet, and SUMMIT ROSIN P-95 Polymerized Rosin technical datasheet, each datasheet of record.
Regarding claims 1 and 20, WO ‘068 discloses a composition comprising a modified block copolymer having a conjugated diene monomer (CD), an unsubstituted vinyl aromatic monomer (UVA), and a substituted vinyl aromatic monomer (SVA), see p. 3-4, [0010]. Suitable CD monomers are described at p. 43, [0087] and suitable UVA and SVA monomers are described at p. 43, [0088]. The composition is used as a hot melt adhesive, see p. 119, [00210]. The amount of the diene copolymer in the adhesive composition is from 0.5 to 50 wt. %, see [0026] and claim 37.
A suitable substrate for the adhesive is a metal foil, see paragraph [00104].
A preferred embodiment includes a block copolymer of styrene, a conjugated diene (CD), and a ring-substituted vinyl aromatic monomer (P), see [0029], in which the amount of styrene is 5-49 wt. %, the CD is 50-94 wt. %, and the P is 1-20 wt. %. A polar modifier is included when forming the block copolymer, and the amount of the polar modifier is less than 20 wt. %, see [0065]. This reads on the endblock modifier as claimed.
A tackifier is included in the composition in the amount of 20-70 wt. %, see [00107]. This overlaps the claimed amount of tackifier.
A crosslinking promotor is included in the amount of from 0.01 to 5 wt. %, see [00100], which reads on an adhesion promoter as this provides reactive sites in the adhesive composition to allow photo-, thermal-, or chemical-cured crosslinking.
The amounts of the specified components overlap the claimed ranges. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claim 2, WO ‘068 teaches a block copolymer of styrene, a conjugated diene (CD), and a ring-substituted vinyl aromatic monomer (P), see [0029], in which the amount of styrene is 5-49 wt. %, the CD is 50-94 wt. %, and the P is 1-20 wt. %.
Regarding claim 3, WO ‘068 teaches a block copolymer of styrene, a conjugated diene (CD), and a ring-substituted vinyl aromatic monomer (P), see [0029], in which the amount of styrene is 5-49 wt. %, the CD is 50-94 wt. %, and the P is 1-20 wt. %. Furthermore, in Table 2 at p. 92-93, there are examples of a modified diene copolymer having 17.5 wt. % styrene with 82.5 wt. % of combined butadiene and p-methylstyrene (Example MDC5) and a modified diene copolymer having 16.3 wt. % styrene with 83.8 wt. % of combined butadiene and p-methylstyrene (Example MDC6). Although there is not a specific example of a block copolymer having exactly 17.2 wt.% styrene, there are examples on either side of this amount (16.3 wt. % and 17.5 wt. %) within the broad teaching of 5-49 wt. % styrene. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claims 4 and 5, Table A of applicant’s specification includes the UL 181A physical test requirements for an adhesive tape including adhesion to steel of at least 60 oz/inch, shear adhesion at room temperature of greater than 120 hours with less than 1/32” slip, and shear adhesion at 150 °F under a five-pound load of greater than 6 hours with less than 1/32” slip. See p. 6, [0032-0033] of applicant’s specification filed 18 July 2023. These are the same requirements of claim 5.
WO ‘068 describes testing the adhesion performance of the composition at paragraph [00209]. The specific claimed properties are not disclosed. However, the adhesive of WO ‘068 contains the same claimed components and thus is expected to exhibit the same claimed adhesive properties.
The Examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). The Examiner notes that the prior art discloses an adhesive composition having the same components as the adhesive tape recited in claim 1 as described above. Therefore, one of ordinary skill in the art would expect the same or similar properties to arise. Since the prior art discloses the adhesive tape of claim 1, the Examiner believes the claimed properties are either anticipated or highly obvious.
Regarding claim 6, WO ‘068 describes phenolic-modified pentaerythritol ester of rosin and phenolic modified terpene resins, see paragraph [00115] as suitable tackifying resins which also read on adhesion promoters.
Regarding claim 7, component P is a ring-substituted vinyl aromatic, reading on an aromatic hydrocarbon resin as claimed, see [0034].
Regarding claim 8, WO ‘068 teaches that the tackifier may be a hydrogenated hydrocarbon resin, see [00107], reading on a modified aliphatic hydrocarbon resin.
Regarding claim 9, Tackifier(s) are included in the composition in the amount of 20-70 wt. %, see [00107]. WO ‘068 teaches that suitable tackifying resins include (f) aliphatic petroleum hydrocarbon resins having a softening point of from about 70 to 135 °C, see paragraph [00115]. Paragraph [00117] also specifies aromatic modified hydrocarbon resins as suitable tackifiers. Paragraph [00114] notes various commercially available tackifiers including ESCOREZ 5300 series but does not note ESCOREZ 2203LC. Paragraph [001115] notes several suitable PICCOTAC tackifiers but not PICCOTEX 100.
While ESCOREZ 2203LC is not specifically named, is it noted that ESCOREZ 2203LC is an aromatic modified aliphatic petroleum hydrocarbon resin with a softening point of 92.6 °C, as noted in the ESCOREZ 2203 LC datasheet. PICCOTEX 100 is noted to be a thermoplastic aromatic hydrocarbon resin with a softening point of 98 °C as noted in its corresponding datasheet.
Since WO ‘068 discloses suitable tackifiers which include the materials and properties of the commercial ESCOREZ 2203 LC and PICCOTEX 100 tackifiers, such commercial tackifiers are deemed to be suitable tackifiers for the adhesive composition. It would have been obvious to have used such specific commercial tackifiers as WO ‘068 discloses suitable tackifier materials and even names other ESCOREZ and PICCOTAC commercial products as suitable tackifier materials.
Regarding claim 10, WO ‘068 teaches including an oil plasticizer in the composition, see paragraph [00105]. While the reference teaches that the amount of such an oil in some embodiments is from about 5-35 wt. %, the reference does not teach away from using smaller amounts of oils.
Regarding claim 11, WO ‘068 teaches including an antioxidant in the amount of 0.05 to 3 wt. %, see paragraph [00105]. This overlaps the claimed amount.
Regarding claim 12, WO ‘068 teaches using a polymerized rosin tackifier, see paragraph [00115]. One or more tackifiers may be used in combination, see id, and the amount of tackifier is preferably in the amount of 1-30 wt. %.
Regarding claim 13, Tackifier(s) are included in the composition in the combined amount of 20-70 wt. %, see [00107]. WO ‘068 teaches that suitable tackifying resins include (a) dimerized rosins (see paragraph [00115]) as well as dimer fatty acids with an acid number of from 25-800 mgKOH/g (see paragraph [00116]). Neither DYMEREX nor P-95 SUMMIT ROSIN are specifically named.
However, it is noted that DYMEREX is a thermoplastic rosin resin formed predominantly from dimeric acids derived from rosin, having a ring and ball softening point of 144 °C and an acid number of 145 mgKOH/g, see the DYMEREX Polymerized Resin technical datasheet. SUMMIT P-95 Polymerized Rosin is a gum rosin having a softening point of from 90-100 °C and an acid number of at least 150 mgKOH/g, see the corresponding technical datasheet.
Since WO ‘068 discloses suitable tackifiers which include the materials and properties of the commercial DYMEREX and SUMMIT P-95 Polymerized Rosin components, such commercial tackifiers are deemed to be suitable additives for the adhesive composition. It would have been obvious to have used such specific commercial tackifiers as WO ‘068 discloses the materials and properties of suitable tackifier materials, which are inclusive of the commercial materials claimed.
Regarding claim 14, WO ‘068 teaches the use of a release paper combined with the adhesive, see paragraph [00125]. A release coating may be included, see id.
Regarding claims 16 and 17, the copolymer includes styrene endblocks with a conjugated diene (CD) monomer rubber block in between, see paragraph [0031]. The styrene endblocks may be modified to provide cross-linking structure as claimed.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/090068 A2 in view of Serra (U.S. Pub. 2008/0102240).
Regarding claim 15, WO ‘068 is relied upon as described above to teach an adhesive tape meeting the limitations of claim 1. WO ‘068 teaches the use of a release paper combined with the adhesive, see paragraph [00125]. A release coating may be included, see id. However, WO ‘068 does not specify a silicone release agent.
Serra discloses a polymeric composite adhesive tape comprising a layer of metallized polymeric material, an adhesive compound applied to one side of the metallized film, and a release liner applied to the exposed side of the adhesive compound. See abstract and p. 4, [0038]. The release liner may be a silicone liner material, see p. 4, [0038]. The release liner is applied to the exposed side of the adhesive layer which effectively blocks the adhesive from attaching to surfaces until the liner is removed, see p. 4, [0038]. The adhesive tape of Serra is UL181 compliant (see p. 1, [0005]) and used with flexible air ducts or air connectors.
WO ‘068 and Serra are analogous because they each disclose metal film-backed polymeric adhesive tapes with release coated liner materials. Thus they are similar in structure and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use a silicone release agent as the release agent material of the release liner of WO ‘068 in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include a silicone release agent as this is a typical suitable release agent used with polymeric adhesive tapes and is suitable for foil-backed adhesives as disclosed in Serra. Thus there is a reasonable expectation of success in the proposed combination.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Dalley (U.S. Pub. 2019/0023949) describes a triblock SIS copolymer adhesive which includes a tackifier, plasticizer, and antioxidant stabilizer. The adhesive is not used with a foil backing material.
WO 2019-131768 A1 describes an end-block modified copolymer adhesive with having aromatic and diene blocks. No foil backing layer is present.
U.S. Pub. 2022/0396654 is the U.S. document equivalent to WO 2021/090068 A2.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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