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 .
Applicant’s election without traverse of Group I, Claims 1-9 and 11-12 in the reply filed on May 20, 2025 is acknowledged.
Claims 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 20, 2025.
The previous 112(b) rejection of claim 2 is withdrawn due to Applicant’s amendments.
The previous double patenting rejection is withdrawn due to the abandonment of co-pending Applicant 17/676915.
Claims 9 and 10 are withdrawn due to a previous restriction requirement.
Claims 1-8 and 11-12 are currently pending.
This Action is FINAL.
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;
wherein the composition exhibits a film contact angle with distilled water of less than 70 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 1-5, 7-8, and 11-12 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).
The hot melt adhesive composition of claim 1 is incorporated herein by reference.
Regarding claim 1, 2, 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 and 10 parts by weight out of 100.5 parts of the total composition of a nonionic ethoxylate surfactant polymer emulsifier Unithox 480 ([col 11, line 1-29]), thereby lying within the claimed ranges of the amounts of ethylene copolymer and a nonionic surfactant polymer emulsifier. Paul et al. disclose Unithox 480 is an ethoxylated C30 mono-ol having a molecular weight of 2250 g/mole [col 7, line 1-3], equivalent to 2250 Daltons and thereby lying within the claimed ranges. Paul et al. further disclose Example U has a contact angle of <30, thereby lying within the claimed range.
Paul et al. is silent on the acid number and the HLB value of the ethoxylate surfactant polymer emulsifier.
However, Paul et al. disclose the same ethoxylate surfactant polymer emulsifier (Unithox 480) as seen in the instant specification, which is listed to have a hydroxyl number of 22 mg KOH/g and an HLB value of 16 (Table 1), thereby lying within the claimed acid value range but lying outside the claimed HLB value.
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 and (b) of instant claim 2.
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.
Paul et al. is silent on the contact angel 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., the hot melt adhesive of Paul et al. in view of Dandreaux et al 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 4, Paul et al. disclose in Example U 50 parts by weight out of 100.5 parts of the total composition of a tackifying resin Zonatac 105L and 0.5 parts by weight out of 100.5 parts of the total composition of antioxidant Irganox 1010 , thereby lying within the claimed ranges.
Regarding claim 5, Paul et al. disclose the tackifying resin Zonatac 105 L used in Example U is a styrenated terpene [col 6, line 54-56], thereby reading on the instant claim.
Regarding claim 7, Paul et al. does not disclose in Example U the tackifying agent as recited in the instant claims.
However, Paul et al. teach tackifying agents such as hydrogenated resin, dimerized rosin may be added ([col 4, line 35-67], [col 5, line 1-4]). 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 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].
Claim 6 is 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).
The hot melt adhesive composition of claim 1 is incorporated herein by reference.
Paul et al. does not disclose in Example U the tackifying agent as recited in the instant claims.
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.
Response to Arguments
Applicant’s arguments, see page 5, filed October 2, 2025, with respect to the rejection(s) of claims 1-5 under 35 U.S.C. 102(a)(1) 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).
Applicant states “Unithox 480 has a HLB value of 16. Again, this lies outside the claimed range of claimed HLB values.”
The examiner agrees and directs attention to the new rejection for claims 1, 2, and 3 wherein Paul et al. in view of a Dandreux et al. teach a hot melt adhesive comprising ethylene vinyl acetate 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]. 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.
Applicant states “Paul fails to teach or suggest that its composition can maintain low contact angles even after long-term aging at elevated temperature.”
The examiner respectfully disagrees. In view of the substantially identical hot melt adhesive of Paul et al. in view of Dandreaux et al., the hot melt adhesive of Paul et al. in view of Dandreaux et al 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).)
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 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