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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 30, 2026 has been entered.
Claims 9 and 10 are withdrawn due to a previous restriction requirement.
The 103 rejections of claims 2 and 5-7 are withdrawn due to Applicant’s cancellation.
Claims 1, 3-4, 8, and 11-14 are currently pending.
Claim Analysis
Summary of Claim 1:
A hydrophilic hot melt adhesive composition comprising:
(a) About 20 to about 90 wt% of an ethylene copolymer selected from the group consisting of ethylene vinyl acetate, ethylene n-butyl acrylate, ethylene octene, ethylene propylene, ethylene butene propylene, and mixtures thereof; and
(b) About 1 to about 25 wt% a nonionic, ethoxylate surfactant polymer emulsifier having
a melting temperature of from about 70oC to about 140°C, measured in accordance with ASTM D-127,
a fully saturated linear C20 to C50 synthetic alcohol,
an acid number below 100 mg KOH/g measured in accordance with ASTM E222, and
a molecular weight of about 400 to about 5000 Daltons; and
a hydrophile-lipophile balance (HLB) value less than 16; and
(c) About 20 to about 50 wt% of a hydrocarbon resin tackifier selected from the group consisting of C5 aliphatic resins, C9 aromatic resins, dicyclopentadiene resins, C5/C9 aliphatic/aromatic resins, and mixtures thereof;
wherein the composition exhibits a film contact angle with distilled water of less than 50 degrees both before and after aging for 15 days at 60°C.
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.
Claims 1, 3-4, 8, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Paul et al. (US 5685758 as listed on IDS dated August 17, 2023) in view of Dandreaux et al. (US 5541246 as listed on IDS dated August 17, 2023) as evidenced by Flanagan (US 4944994).
Regarding claim 1 and 3, Paul et al. disclose a hot melt adhesive composition in Example U comprising 40 parts by weight out of 100.5 parts of the total composition of an ethylene vinyl acetate copolymer Elvax 210W, 10 parts by weight out of 100.5 parts of the total composition of a nonionic ethoxylate surfactant polymer emulsifier Unithox 480, and 10 parts by weight of a styrenated terpene tackifying resin Zonatac 105L ([col 11, line 1-29]), thereby lying within the claimed ranges of the amounts of ethylene copolymer, nonionic surfactant polymer emulsifier, and lying outside the amount of tackifying resin of instant claim 1 and the ethylene copolymer of instant claim 3.
However, Paul et al. broadly teaches the amount of tackifying resin is 10 to 70 weight percent (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art to select the amount of tackifying resin as taught by Paul et al.
Paul et al. disclose Example U comprises Unithox 480, which has a melting point of 86°C, an ethoxylated C30 mono-ol, equivalent to 2250 Daltons an acid number of 22, molecular weight of 2300, and an HLB value of 16 [col 7, line 1-3],, and thereby lying within the claimed range of (i), (ii), (iii), and (iv) but lying outside the claimed range of (iv) HLB value as recited in the instant claim.
Dandreaux et al. teach a hot melt adhesive comprising an ethylene vinyl acetate copolymer and a nonionic ethoxylate surfactant polymer emulsifier Unithox 420 (Table 1). Dandreux et al. teach Unithox 420 has an HLB of 4 and a melting point of 91°C [col 2, line 31-37], thereby lying within the claimed range of (i) and (iv) of instant claim 1.
Dandreaux et al. is silent on if Unithox 420 is (ii) a fully saturated linear C20 to C50 synthetic alcohol, (iii) an acid number below 100 mg KOH/g and the molecular weight (iv).
However, Unithox 420 is listed in the instant specification having an acid value of 85 mg/KOH and molecular weight of 575 Da (see Table 1 of the instant specification), thereby lying within the claimed range. It is also expected that Unithox 420 is a fully saturated linear C20 to C50 synthetic alcohol because Unithox 420 is used in the examples of the instant specification (see Table 1 of the instant specification). Paul et al. is also concerned with a hot melt adhesive as recited above. Therefore, it would have been obvious to one of ordinary skill in the art to add the nonionic ethoxylate surfactant polymer emulsifier of Dandreaux et al. to the hot melt adhesive of Paul et al. since both are concerned with hot melt adhesives comprising ethylene vinyl acetate copolymers and the claimed nonionic ethoxylate surfactant polymer emulsifier is well known in the industry.
Paul et al. does not disclose in Example U the tackifying agent as recited in the instant claim.
However, Paul et al. teach tackifying agents such as aromatic/aliphatic or alicyclic hydrocarbon resins like ECR 149B may be added ([col 4, line 35-67], [col 5, line 1-4]). ECR 149B is an aliphatic/aromatic C5/C9 resin as evidenced by Flanagan (Table I). Therefore, it would have been obvious to one of ordinary skill in the art to substitute the tackifying resin Zonatac 105L in Example U with hydrogenated resin since Paul et al. teach both are suitable tackifying resins.
Paul et al. is silent on the contact angle before and after aging for 15 days as recited in the instant claim.
In view of the substantially identical hot melt adhesive of Paul et al. in view of Dandreaux et al. as evidenced by Flanagan, the hot melt adhesive of Paul et al. in view of Dandreaux et al. as evidenced by Flanagan will possess the claimed properties because contact angle is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 8, Paul et al. does not disclose a plasticizer is present in Example U.
However, Paul et al. broadly teach plasticizing oils may be present in an amount up to 20% and include vegetable and animal oils [col 5, line 5-22]. Therefore, it would have been obvious to one of ordinary skill in the art to add the plasticizer as taught by Paul et al.
Regarding claim 11 and 12, Paul et al. teach the hot melt adhesive composition is applied to a substrate such as a tissue [col 6, line 13-18].
Regarding claim 13, Paul et al. disclose the amount of tackifying resin in Example U is 10 wt% as rejected above, thereby lying within the claimed range.
Paul et al. does not disclose in Example U the tackifying agent as recited in the instant claim.
However, Paul et al. teach tackifying agents such as aromatic/aliphatic or alicyclic hydrocarbon resins like ECR 149B may be added ([col 4, line 35-67], [col 5, line 1-4]). ECR 149B is an aliphatic/aromatic C5/C9 resin as evidenced by Flanagan (Table I). Therefore, it would have been obvious to one of ordinary skill in the art to substitute the tackifying resin with hydrogenated resin as taught by Paul et al.
Regarding claim 14, Paul et al. disclose a hot melt adhesive composition in Example U comprising 40 parts by weight out of 100.5 parts of the total composition of an ethylene vinyl acetate copolymer Elvax 210W, 10 parts by weight out of 100.5 parts of the total composition of a nonionic ethoxylate surfactant polymer emulsifier Unithox 480, and 10 parts by weight of a styrenated terpene tackifying resin Zonatac 105L ([col 11, line 1-29]), thereby lying within the claimed ranges of the amounts of ethylene copolymer and nonionic surfactant polymer emulsifier.
Paul et al. do not disclose Examples U comprises an ethylene copolymer as recited in the instant claim.
However, Paul et al. broadly teaches the hot melt adhesive comprises an olefin containing polymer (claim 1). Paul et al. further teaches suitable olefin containing polymers are those in which ethylene is polymerized with monomers such as n-butyl acrylate, propylene, and octene [col 3, line 58-67; col 4, line 1-10]., thereby reading on the instant claim. Therefore, it would have been obvious to substitute the ethylene vinyl acetate copolymer of Example U with another ethylene copolymer since Paul et al. teaches various ethylene copolymers can be used.
Paul et al. disclose Example U comprises Unithox 480, which has a melting point of 86°C, an ethoxylated C30 mono-ol, equivalent to 2250 Daltons an acid number of 22, molecular weight of 2300, and an HLB value of 16 [col 7, line 1-3],, and thereby lying within the claimed range of (i), (ii), (iii), and (iv) and lying outside the claimed range of (iv) HLB value as recited in the instant claim.
Dandreaux et al. teach a hot melt adhesive comprising an ethylene vinyl acetate copolymer and a nonionic ethoxylate surfactant polymer emulsifier Unithox 420 (Table 1). Dandreux et al. teach Unithox 420 has an HLB of 4 and a melting point of 91°C [col 2, line 31-37], thereby lying within the claimed range of (i) and (iv) of instant claim 1.
Dandreaux et al. is silent on if Unithox 420 is (ii) a fully saturated linear C20 to C50 synthetic alcohol, (iii) an acid number below 100 mg KOH/g and the molecular weight (iv).
However, Unithox 420 is listed in the instant specification having an acid value of 85 mg/KOH and molecular weight of 575 Da (see Table 1 of the instant specification), thereby lying within the claimed range. It is also expected that Unithox 420 is a fully saturated linear C20 to C50 synthetic alcohol because Unithox 420 is used in the examples of the instant specification (see Table 1 of the instant specification). Paul et al. is also concerned with a hot melt adhesive as recited above. Therefore, it would have been obvious to one of ordinary skill in the art to add the nonionic ethoxylate surfactant polymer emulsifier of Dandreaux et al. to the hot melt adhesive of Paul et al. since both are concerned with hot melt adhesives comprising ethylene vinyl acetate copolymers and the claimed nonionic ethoxylate surfactant polymer emulsifier is well known in the industry.
Paul et al. is silent on the contact angle before and after aging for 15 days as recited in the instant claim.
In view of the substantially identical hot melt adhesive of Paul et al. in view of Dandreaux et al. as evidenced by Flanagan, the hot melt adhesive of Paul et al. in view of Dandreaux et al. as evidenced by Flanagan will possess the claimed properties because contact angle is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Response to Arguments
Applicant’s arguments, see page 5, filed June 30, 2026, with respect to the rejection(s) of claims 1-5, 7-8, and 11-12 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103. over Paul et al. (US 5685758) in view of Dandreaux et al. (US 5541246) as evidenced by Flanagan (US 4944994).
Applicant states “Sulfonic L-12-8 is a short chain, liquid surfactant. In fact, Sulfonic L-12-8 has 10-12 carbon number alcohol and is a liquid at room temperature. This surfactant is outside the range of the claimed range for the instant nonionic, ethoxylate surfactant polymer emulsifier.”
The examiner acknowledges that the surfactant of Paul et al. is outside the claimed range as directs attention to the rejection for claim 1, wherein Paul et al. does not teach a surfactant. However, Dandreaux et al. teach a hot melt adhesive comprising an ethylene vinyl acetate copolymer and a nonionic ethoxylate surfactant polymer emulsifier Unithox 420 (Table 1). Paul et al. is also concerned with a hot melt adhesive as recited above. Therefore, it would have been obvious to one of ordinary skill in the art to add the nonionic ethoxylate surfactant polymer emulsifier of Dandreaux et al. to the hot melt adhesive of Paul et al. since both are concerned with hot melt adhesives comprising ethylene vinyl acetate copolymers and the claimed nonionic ethoxylate surfactant polymer emulsifier is well known in the industry.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant states “It cannot be anticipated that Paul’s systems can provide such low contact angles based on their teachings. A skilled artisan would anticipate that terpene-based system would suffer a decline in wetting ability after prolong exposure to high temperatures”.
Applicant provides no evidence in support of its assertion. As such, it appears to be mere attorney argument. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant.
Applicant states “Dandreaux fails to cure the defects of Paul. Dandreaux requires an acid functionalized tackifier”.
The examiner disagrees and directs attention to the rejection for claim 1. Dandreaux is used to address the surfactant, not the tackifier. Paul et al. is concerned with a hot melt adhesive as recited above. Therefore, it would have been obvious to one of ordinary skill in the art to add the nonionic ethoxylate surfactant polymer emulsifier of Dandreaux et al. to the hot melt adhesive of Paul et al. since both are concerned with hot melt adhesives comprising ethylene vinyl acetate copolymers and the claimed nonionic ethoxylate surfactant polymer emulsifier is well known in the industry. Therefore, absent unexpected results, the examiner is unconvinced.
Applicant states “a skilled artisan seeking to formulate a high acid tackifier as taught by Dandreaux’s repulpable adhesive would not look to a bookbinding reference to select a C5/C9 tackifier”.
The examiner disagrees and directs attention the rejection for claim 1 wherein Paul et al. broadly teach tackifying agents such as aromatic/aliphatic or alicyclic hydrocarbon resins such as ECR 149B. Flanagan is relied on as evidence to address that the ECR 149B taught by Paul et al. is a C5/C9 aromatic resin because Paul et al. is silent on if the aromatic/aliphatic or alicyclic hydrocarbon resins are C5/C9 aliphatic/aromatic resins. It would have been obvious to one of ordinary skill in the art to substitute the tackifying resin Zonatac 105L in Example U with hydrogenated resin since Paul et al. teach both are suitable tackifying resins.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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