Prosecution Insights
Last updated: April 19, 2026
Application No. 18/548,270

Chloroprene Rubber-Based Contact Adhesive Composition

Non-Final OA §102§103§112
Filed
Aug 29, 2023
Examiner
PEPITONE, MICHAEL F
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Henkel AG & Co. KGaA
OA Round
1 (Non-Final)
74%
Grant Probability
Favorable
1-2
OA Rounds
3y 2m
To Grant
96%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allow Rate
865 granted / 1165 resolved
+9.2% vs TC avg
Strong +22% interview lift
Without
With
+22.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
52 currently pending
Career history
1217
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
40.9%
+0.9% vs TC avg
§102
24.8%
-15.2% vs TC avg
§112
19.8%
-20.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1165 resolved cases

Office Action

§102 §103 §112
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. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Election/Restrictions Applicant's election with traverse of Group I, claims 1-14 in the reply filed on 11/24/25 is acknowledged. T he traversal is on the ground(s) that the restriction is too restrictive and the examiner has not shown it would be a serious burden to perform a complete search and examination on all of the claims as originally filed . This is not found persuasive because PCT rule 13.1 states the international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). The requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a tech nical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art [see MPEP 1850]. Groups I-IV lack unity of invention because even though the inventions of these groups require the technical feature of the composition of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Saito (JP2017155185 ) . The claimed composition is obvious in view of Saito (JP2017155185) , which discloses chloroprene adhesives [0001;0007-0008; 0014; 0016; Ex. 1-6] , wherein E x. 5 [ Ex. 5; Table 1; Ex. 5] contai ns a chloroprene rubber with a fast crystallization rate (G-70) a chloroprene rubber with a medium crystallization rate (Y-30S) and a solvent [ Ex. 5; Table 1; Ex. 5] . The requirement is still deemed proper and is therefore made FINAL. Claims 1 5 -17 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/24/25. Claim Objections Claim s 2-3 are objected to because of the following informalities: “having” should be “has” . Appropriate correction is required. Claim 9 is objected to because of the following informalities: “ comprising ” should be “ further comprising ” . Appropriate correction is required. 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. 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. Claim 8 is 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. Regarding claim 8, the phrase "more preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth [see MPEP 2173.05(d)]. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 1- 8 and 12-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (JP 5-179216) in view of C hloroprene Rubber Skyprene; Tosoh Corporation; 03/2014 . English machine translation of Hayashi et al. (JP 5-179216) for citation. Regarding claims 1- 7 and 13 -14 : Hayashi et al. (JP ‘ 216) discloses solvent-type polychloroprene adhesive compositions [0001], wherein Example 9 [Ex. 9; 0027; Table 1, Ex. 9], prepared as Ex. 1 [0017; 0019], contains 50 parts by weight CR Skyprene 510 ( fast crystallization CR; corresponding to the first chloroprene rubber having a 100% increased Shore A hardness in no more than 2 hours when crystallizing at -10 o C ; see instant specification pg. 3, ln. 32 – pg. 4, ln. 7 ), 25 parts by weight CR Skyprene G-40S ( fast crystallization CR; corresponding to the first chloroprene rubber ) , 25 parts by weight CR Skyprene Y - 20E (Medium crystallization CR; corresponding to the second chloroprene rubber having a 100% increased Shore A hardness in more than 2 hours when crystallizing at -10 o C {via Skyprene 570} ; see instant specification pg. 4, ln. 18-25 ) , 4 parts by weight MgO, 5 parts by weight ZnO, 2 parts by weight anti-aging agent , 100 parts by weight phenol-formaldehyde resin , 10 pbw MgO, and 376 parts by weight mixed solvent (226 parts by weight toluene, 75 parts by weight cyclohexane, 75 parts by weight ethyl acetate) (corresponding to 8.4 wt% CR Skyprene 510 ; 4.2 wt% CR Skyprene G-40S ; 4.2 wt% CR Skyprene Y-20E ; 3 :1 weight ratio ( 510 & G-40S) :Y-20E ; 16.8 wt% total chloroprene rubber ( 510 , G-40S and Y-20E ) [Ex. 9; 0027; Table 1, Ex. 9] . Chloroprene Rubber Skyprene provides evidence for : Skyprene G-40S as fast crystallization rate CR [pg. 16] ; Skyprene Y-20E as medium crystallization rate CR [pg. 7] ; Skyprene 510 as fast crystallization rate CR [pg. 16]; Skyprene 5 7 0 as medium crystallization rate CR [pg. 16] [see also MPEP 2112.01]. Regarding claim 8 : Hayashi et al. (JP ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1]. Claim 8 further defines species of the adhesion promoter recited in claim 1. However, as claimed, such species only further define the genus of the optional adhesion promoter (i.e. claims 1 and 8 do not require the contact adhesive composition to comprise the adhesion promoter ). Regarding claim 12 : Hayashi et al. (JP ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1]. Claim 12 further defines species of the tackifier resin recited in claim 1. However, as claimed, such species only further define the genus of the optional tackifier resin (i.e. claims 1 and 12 do not require the contact adhesive composition to comprise the tackifier resin ). 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, 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. 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) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (JP 5-179216) as applied to claim 1 above, and further in view of Mori et al. ( US 5,252,668 ) . Regarding claim s 9-11 : Hayashi et al. (JP ‘216) discloses the basic claimed composition [as set forth above with respect to claim 1]. Hayashi et al. (JP ‘216) does not disclose an aminosilane. However, Mori et al. (US ‘ 668) discloses chloroprene adhesive compositions [abstract], wherein the adhesive composition contains ~0.45 wt% γ-aminopropyl triethoxysilane [3:30-44; Table 1]. Hayashi et al. (JP ‘216) and Mori et al. (US ‘668) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of chloroprene adhesive compositions . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined ~0.45 wt% γ-aminopropyltriethoxysilane , as taught by Mori et al. (US ‘668) in the invention of Hayashi et al. (JP ‘216) , and would have been motivated to do so since Mori et al. (US ‘668) suggests ~0.45 wt% γ-aminopropyltriethoxysilane affords chloroprene adhesives having excellent initial bonding strength and high heat resistance [3:15-21; Table 1] . See attached form PTO-892. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MICHAEL F PEPITONE whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3299 . The examiner can normally be reached on FILLIN "Work Schedule?" \* MERGEFORMAT 7:00 AM - 3:30 PM . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Mark Eashoo can be reached on FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1197 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MICHAEL F PEPITONE/ Primary Examiner, Art Unit 1767
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Prosecution Timeline

Aug 29, 2023
Application Filed
Mar 20, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
74%
Grant Probability
96%
With Interview (+22.2%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 1165 resolved cases by this examiner. Grant probability derived from career allow rate.

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