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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 15-16, 19-23, 25-30, 34 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Antes et al. GB2577308A.
Regarding claim 15, Antes teaches laminate structures utilizing the adhesives where two substrates sandwiching the adhesive, can be different and which can be selected to be paper and a thermoplastic polymer such as acrylic polymers which are transparent, thus rendering the claimed requirement, obvious (page 9, lines 25-26, line 29; page 10, line 3; page 18, line 3). Antes further discloses one-part aqueous contact adhesives comprising polymer latex compositions (page 30, claim 1), obtained by free-radical emulsion polymerization for generating various laminated structures (page 18, lines 1-5).
Antes describes the preparation of an adhesive copolymer (Ex-1, page 25, lines 20-30; page 26, lines 1-5) comprising butyl acrylate (1028.1 parts, instant claims 25 and 34), methyl methacrylate (104.7 parts, instant claims 25 and 34), hydroxyethyl methacrylate (11.5 parts), ammonia oleate (10.35 parts) and diacetone acrylamide (DAAM, 57.5 parts, corresponding to the compound with keto group) by emulsion polymerization in the presence of potassium phosphate (0.57 parts) and free radical persulfate initiators (instant claim 19); and subsequent addition of adipic acid dihydrazide (ADH, 2.88 parts, corresponding to the required compound with two functional groups which is capable to react with the keto groups, instant claim 26).
The content of salt potassium phosphate with respect the total content of monomers is 0.57/1215 = 0.05%, all of which is present during the emulsion polymerization process (instant claims 16 and 21-22).
The claimed physical property i.e. solubility in water would naturally arise and be achieved by the salt potassium phosphate which meets the claimed cation and anion. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have generated a laminated adhesive product, with the adhesive composition of Ex-1 and where the two substrates are different and selected to be paper and a transparent polymer as taught by Antes.
Regarding claim 20, Antes teaches the % solids of 54.8 wt%, meeting the claimed requirement (page 28, Table 1, Ex-1)
Regarding claim 23, the content of diacetone acrylamide (DAAM) with respect the total weight of the polymer is ((57.5/ 1215) x 100) =4.7 %, meeting the claimed requirement (Ex-1, page 25, lines 20-30; page 26, lines 1-5).
Regarding claim 27, as discussed when addressing claim 15, Antes teaches a laminated product. Antes further discloses (reference claims 2 and 5) that polymer adhesive composition comprises 0.5 to 10 wt% of ethylenically unsaturated monomers such as diacetone acrylamide (page 7, lines 28-29, corresponding to the unsaturated monomer with keto group) and 0.1 to 5 wt% of compounds with two functional groups capable of reacting with the keto group which can be adipic dihydrazide (page 8, line 4). The diacetone acrylamide has a MW of 169.22 g/mol and adipic dihdrazide has a MW of 174.2 g/mol. When the wt% range are converted to keto and hydrazide functional group mol% this results in the keto group present in diacetone acrylamide in the range of 0.3-5.9 mol% and hydrazide functional group range of 0.1-5.7 mol%. The molar ratio of keto to hydrazide groups can be calculated to be 0.05 to 59, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the adhesive materials disclosed, the overlapping range of the prior art is sufficient to support an obviousness rejection.
Regarding claim 28, Antes teaches (reference claim 8) the polymer latex composition with the glass transition temperature Tg of less than -10 oC, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, owing to the closeness of adhesive materials disclosed by Antes to that of instant specification, the glass transition property would necessarily follow.
Regarding claim 29, Antes teaches the particle size for the polymer emulsion to be 317 nm, meeting the claimed requirement (page 28, Table 1, Ex 1, last row).
Regarding claim 30, the specification para [0052] notes that the protective colloids include cellulose based polymers and polyvinyl alcohol, and the nonionic emulsifiers (specification para [0050]) are alkyl polyglycol ethers. Antes Ex 1, as discussed when addressing claim 1, does not utilize a protective colloid or a nonionic emulsifier and meets the claimed requirement.
Regarding claim 36, Antes teaches (page 20, line 14) the concentration of salt to be at least 0.1 wt%, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the adhesive materials disclosed, the overlapping range of the prior art is sufficient to support an obviousness rejection.
Claims 15-16, 19-25, 27-31, 33-34 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Stockl US 6,417,267B1.
Regarding claim 15, Stockl teaches a method for creating a laminating structure where the adhesive composition is sandwiched between two substrates, and where one of the substrates can be paper and the second substrate can be polyethylene terephthalate corresponding to the transparent polymer film, thus making the claimed requirements obvious (reference claim 14, col 14, line 19 and line 54).
Stockl describes the preparation of polymer particles (Col 19, Example 7) by emulsion polymerization with free radical initiators sodium persulfate and t-butyl hydroperoxide (instant claim 19) and monomers TREM LF-40 (15.75 g), methyl methacrylate (327.01 g, instant claims 25 and 34), styrene (265.78 g), 2-ethylhexyl acrylate (478.03 g, instant claims 25 and 34), acetoacetoxyethyl methacrylate (143.92 g, corresponding to the compound with two keto groups), trimethylolpropane triacrylate (1.886 g) and sodium 2-acrylamido-2-methylpropanesulfonate (1.68 g); in the presence of sodium carbonate (7.3 g) and further addition of 115g of poly(ethylenimine) (corresponding to the required compound with at least two functional groups which is capable to react with the keto groups). The content of salt sodium carbonate with respect the total content of monomers is 7.3/1356 = 0.5%, all of which is present during the emulsion polymerization process (instant claims 16 and 21-22).
The claimed physical property i.e. solubility in water would naturally arise and be achieved by the salt sodium carbonate which meets the claimed cation and anion. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have generated a laminated adhesive product, with the adhesive composition of Example 7 and where the two substrates are selected to be paper and a transparent polymer as taught by Stockl.
Regarding claim 20, Stockl does not provide the solid content of the polymer dispersion in the general disclosure, but describes several examples of adhesive compositions which have a solid content of 47% (Example 10, col 22, line 1), which is shy of the required percentage of solids. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 23, Stockl teaches (reference claim 10) the generation of polymer derived from acetoacetoxy-functional monomers (corresponding to the required ethylenically unsaturated monomer with keto groups), in the range of 1 to 40 weight percent, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the adhesive materials disclosed, the overlapping range of the prior art is sufficient to support an obviousness rejection.
Regarding claims 24 and 33, Stockl teaches inclusion of acid vinyl monomers such as acrylic acid and methacrylic acid in the polymer, rendering the claimed requirement obvious (col 6, lines 43-44).
Regarding claim 27, Stockl teaches that the molar ratio of acetoacetoxy group (ketone groups) to N-H group (functional groups reactive with keto groups) is 1/2.12 ≈ 0.5, meeting the claimed requirement (col 19, Example 7).
Regarding claim 28, Stockl teaches (col 11, line 58) polymer glass transition temperature of -35 to 50 oC, encompassing the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 29, Stockl teaches the particle size of the polymer dispersion 110 to 450 nm, overlapping the claimed requirement (col 4, line 6). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 30, the specification para [0052] notes that the protective colloids include cellulose based polymers and polyvinyl alcohol. Stockl’s Example 7, as discussed when addressing claim 1, does not utilize a protective colloid and therefore meets the claimed requirement.
Regarding claim 31, Stockl’s Example 7, as discussed when addressing claim 1, does not contain ethylenically unsaturated monomer with a hydroxy group, meeting the claimed requirement.
Regarding claim 36, as discussed when addressing claim 15, Stockl’s Example teaches the presence of 0.5 wt% of salt which is slightly higher that the required amount. Applicant is reminded that, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the adhesive materials disclosed, and percentage of salt which is slightly higher is sufficient to support an obviousness rejection.
Claims 32 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Antes as applied to claims 15-16, 19-23, 25-30, 34 and 36 above, and further in view of Powell US4618390.
Regarding claims 32 and 35, as discussed when addressing claim 1, Antes renders the required laminated product obvious. Antes discloses adhesives comprising (meth) acrylic polymer latex compositions (page 30, claim 1), obtained by emulsion polymerization for generating various laminated structures (page 18, lines 1-5). Antes is silent on the use of a compound with at least two isocyanate groups.
In order to optimize the (meth)acrylic resin composition a skilled artisan would look to analogous reference such as Powell who also teaches aqueous acrylic adhesive emulsions used for creating laminates (Powell, abstract). Powell teaches incorporation of 1 to 20 wt% of a polyisocyanate hardener (reference claim 8). Advantageously, Powell provides the motivation for adding a polyisocyanate hardener to the acrylic adhesive so as to effectively cure the adhesive at ambient temperatures (col 5, line 25).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Antes acrylic emulsion composition with the 1 wt% polyisocyanate hardener as taught by Powell for the same application of creating an acrylic adhesive which can be cured at ambient temperatures.
Claims 32 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Stockl as applied to claims 15-16, 19-25, 27-31, 33-34 and 36 above, and further in view of Powell US4618390.
Regarding claims 32 and 35, as discussed when addressing claim 1, Stockl renders the required laminated product obvious. Stockl is silent on the use of a compound with atleast two isocyanate groups but notes that variations would be obvious to those of ordinary skill in the art (col 34, lines 5-6).
In order to optimize the (meth)acrylic adhesive a skilled artisan would look to analogous reference such as Powell who also teaches aqueous acrylic adhesive emulsions used for creating laminates (Powell, abstract). Powell teaches incorporation of 1 to 20 wt% of a polyisocyanate hardener (reference claim 8). Advantageously, Powell provides the motivation for adding a polyisocyanate hardener to the acrylic adhesive so as to effectively cure the adhesive at ambient temperatures (col 5, line 25).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Antes acrylic emulsion composition with the 1 wt% polyisocyanate hardener as taught by Powell for the same application of creating an acrylic adhesive which can be cured at ambient temperatures.
Response to Arguments
Applicant's arguments filed on 07/15/2026 have been fully considered, please see the response below.
The rejection of claim 14 under 35 U.S.C. § 112 (b) is withdrawn, since the subject matter of claim 14 is cancelled.
Applicant submits that the cited references Antes and Stockl do not teach or suggest a laminated product with paper and a transparent polymer. As discussed in the main rejection of the amended claims, the claimed requirements of paper and a transparent polymer as part of the laminated product are rendered obvious by the disclosure of Antes and Stockl. Additionally, the requirement of claim 36 is also made obvious by the prior art references Antes and Stockl.
Applicant arguments against the references are not convincing and the prior art Antes and Stockl continue to provide the support for maintaining the rejection.
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 Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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