DETAILED ACTION
Applicant’s amendment submitted on February 16, 2026 (“amendment”) in response to the Office action mailed on November 26, 2025 (“previous OA”) have been fully considered.
Support for claim 1 amendments “a natural resin selected from rosin and terpene”, “a petroleum resin”, and “wherein the natural resin has 56-85 parts of the total tackifying resin” can be found in original claim 4, and paragraphs 0065 and 0067 of the published application.
In view of the amendment, the rejection of claims 1-4 and 6-8 under 35 USC 112(b), as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims 1-4 and 6 under 35 USC 103 as being unpatentable over Sugimoto et al. (US 20180100091 A1) in view of Everson et al. (US 20220387661 A1), and as evidence by Stafeil et al. (US 20150203725 A1) and product data sheet Sylvalite 9100 Rosin Ester from Kraton, as set forth in the previous OA is withdrawn. Sugimoto discloses that the styrene content of the SIS block copolymer is preferably 10-40% by mass. According to Sugimoto, when the styrene content is less than 40% by mass or less, the tack of the hotmelt adhesive at low temperature is improved (0045). Claim 1 requires a first SIS polymer having styrene content of 45-50%. Everson is silent as to disclosing claimed thermoplastic block copolymer (A1) and (A2).
In view of the amendment, new rejections under 35 USC 112(a) and 35 USC 112(b) are introduced.
Claim Objections
Claim 1 is objected to because of the following informalities: in claim the styrene content, di-block content, and natural resin amount should be referred to as % by mass, parts by mass as appropriate.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 1, the specification fails to provide support for the following claim limitation:
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Applicant has not pointed out support for the aforementioned claim limitation the amendment and the examiner is unable to find support for the aforementioned claim limitation. The examiner respectfully submits that with respect to “(A1)” in the claim, the specification provides support for the following at 0042 of the published application:
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Further, the examiner submits that with respect to “(A2) in the claim, the specification provides support for the following at 0059 of the published application:
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However, the examiner submits that the specification fails to provide support for the aforementioned claim limitation.
As to claim 2, the specification fails to provide support for the amendment to this claim
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 1, this claim recites “a first styrene-butadiene-styrene polymer, which is a di-block”, “a second styrene-butadiene-styrene polymer, which is a di-block, and “a third styrene-butadiene-styrene, which is di-block”. This recitation is ambiguous because “styrene-butadiene-styrene” as recited is generally understood by one ordinary skill in the art as a tri-block copolymer (i.e. contains polystyrene, polybutadiene, polystyrene). Therefore, it is unclear what is meant by “which is a di-block” when refereeing to “styrene-butadiene-styrene”. It is unclear whether applicant intends to claim that each of the styrene-butadiene-styrene block copolymer contains some amount of di-block content.
Further, as to claim 1, this claim recites “wherein the natural resin has 56-85 parts of the total tackifying resin”. The recitation “parts of the total tackifying resin” is confusing. It is unclear whether applicant intends to claim that the amount of natural resin is 56-85 parts by mass relative to the total amount of the (B) combination of tackifying resin.
As to claim 2, this claim recites “the component (A1)”. There is a lack of antecedent basis with respect to this limitation in the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Diehl et al. (US 5143968) discloses a hot melt containing polystyrene-polyisoprene-polystyrene block copolymers.
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 ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
March 6, 2026
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