DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 4/8/2026 has been entered.
Response to Amendment
Applicants have not submitted claims that include all of the changes shown in the Examiner’s amendment in the Notice of Allowance mailed 1/9/2026. The claim set filed 4/8/2026 is showing changes vis-à-vis the claim set of 11/10/2025. This is non-compliant as it undoes the previous changes.
However, for the purposes of compact prosecution, the Examiner will be rejecting/objecting to the problems in claims 1, 3, 4, 10, 21, 22, 38, 39 and 41-45, and will be interpreting them as they were presented in the Notice of Allowance. The next set of claims should include all of the changes of the Examiner’s amendment set forth in the Notice of Allowance mailed 1/9/2026 along with any of the other changes made in the amendment of 4/8/2026.
Currently, claims 1-4, 8, 10, 19, 21, 22, 38-41 and 43-51 are pending, claims 5-7, 9, 11-18, 20, 23-37 and 42 are cancelled, and claims 46-51 are new.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “A colour-forming hot melt adhesive composition”.
Claim Objections
Claims 1, 4, 10, 38, 39, 43 are objected to because of the following informalities:
In claim 1, the difference between the claim of 11/10/2025 and how the claim was amended in the Notice of Allowance of 1/9/2026 is objected to grammatically, e.g. “5 isobenzofuran”. The objection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026 combined with the changes of 4/8/2026. Claims 8 and 46-50 will also be objected to as depending from claim 1.
In claims 4 and 39, the difference between the claims of 11/10/2025 and how the claim was amended in the Notice of Allowance of 1/9/2026 is objected to grammatically, e.g. “or ethylene-vinyl acetate copolymers”, “tri- and copolymers” (not an exhaustive list) etc. The objection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claim 10, the difference between the claim of 11/10/2025 and how the claim was amended in the Notice of Allowance of 1/9/2026 is objected to grammatically, i.e. “and the thermal”. The objection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claim 38, the difference between the claim of 11/10/2025 and how the claim was amended in the Notice of Allowance of 1/9/2026 is objected to grammatically, e.g. “A composition”, “5 isobenzofuran” etc. The objection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claim 43, the difference between the claim of 11/10/2025 and how the claim was amended in the Notice of Allowance of 1/9/2026 is objected to grammatically, e.g. “and pigments”. The objection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 4, 19, 21, 22, 39, 41, 43-45 and 51 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.
In claims 4 and 39, “selected from…or combinations thereof” is an improper Markush group as it is not closed. The rejection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claim 19, “the infrared radiation absorbing agent” (two instances) lacks antecedent basis in the claim. This rejection can be overcome by changing the phrase to “the infrared radiation absorbing compound” which is how the claim will be interpreted.
In claims 21 and 44, the phrases “applied thereon” and “the…multi-layer substrate” render the claim indefinite because multi-layer substrate lacks antecedent basis and if the composition is on top of a coated substrate of the preamble then it is not required part of the coated substrate per se. The rejection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claims 22 and 45, the phrases “applied thereon and/or incorporated therein” and “wherein the substrate” render the claim indefinite as “wherein the substrate” lacks antecedent basis and if the composition is on top of a multi-layer substrate construction of the preamble then it is not required part of the multi-layer substrate construction per se. The rejection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claim 41, the compounds on lines 16-20 include repeats of the compounds on lines 2-5 of the claim, which render the claim indefinite. The rejection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claim 41 on lines 6 and 36, the word “and” appears not at the end of the Markush group, which renders the claim indefinite as it is unclear what are the members of the Markush group. The rejection can be overcome by making the claim be how the claim was amended in the Notice of Allowance of 1/9/2026.
In claim 43 on line 2, “the infrared radiation absorbing agent” lacks antecedent basis in the claim. This rejection can be overcome by changing the phrase to “the infrared radiation absorbing compound” which is how the claim will be interpreted.
Regarding claim 51, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the claim will be treated as drawn to the broadest range recited.
Claim Rejections - 35 USC § 102
Claims 2, 39-41 and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (CN 104087201).
With regard to claims 2 and 39, Li teaches a hot melt adhesive powder having ammonium molybdate, which reads on applicants’ oxyanion of a multivalent metal, and ethylene-vinyl acetate hot melt adhesive [0008] and [0009]. Other materials in the composition absorb infrared radiation, including the zinc ricinoleate and fluorinated graphite, as they will necessarily have absorption bands in the infrared spectrum [0009] and [0011].
With regard to claim 40, given the fact that the composition is a hot melt adhesive having the same adhesive material as preferentially claimed, it will inherently have the melt flow index claimed.
With regard to claim 41, this claim is not requiring the leuco dye, but rather further defining the leuco dye when it is used. Given the fact that the Examiner has met the oxyanion of a multivalent metal, this also reads on this claim.
With regard to claim 44, the hot melt adhesive can be used by spraying [0017]. This means that the composition will necessarily be sprayed on some substrate, which reads on this claim.
Claim Rejections - 35 USC § 103
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 104087201).
Li teaches that the hot melt adhesive can be used by spraying it [0017]. This means that the composition will necessarily be sprayed on some substrate; however, they do not specifically teach spraying on a multi-layer substrate construction.
The provision of a multi-layer substrate is a mere duplication of parts. It has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). It would have been obvious to one having ordinary skill in the art to have duplicated the substrate on which the EVA hot melt adhesive was sprayed to be two or more layers such that the article of manufacture formed by the spraying was thicker and less likely to fall apart in use.
Potential Allowable Subject Matter
Claims 1, 3, 8, 10 and 46-50 are objected to, but would be allowable if rewritten to address all of the objections above.
Li (CN 104087201) cannot teach of suggest the weight percent of the oxyanion of a multivalent metal or an oxyacid or hydrate thereof of claim 1.
Yamaguchi et al. (JP 2006-342208) do not teach or suggest the thermal acid-generating agents (developers) of claim 1 and there would have been no rationale, save improper hindsight, to have included these developers in the heat-sensitive adhesive of the prior art.
Claim 38 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Li does not teach or suggest ammonium octamolybdate or the leuco dyes claimed in combination with the thermal acid-generating agent claimed.
Claims 4, 19, 21, 22, 43 and 51 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art does not teach or suggest the combination of a hot melt adhesive having a colour-forming compound selected from one of the materials of claim 2 in combination with one of the radiation absorbing compounds of claim 43. The closest prior art is Li (CN 104087201) applied above, but there would have been no rationale, save improper hindsight to have added one of the infrared absorbing compounds of claim 43 to the composition of Li.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The Examiner notes that Yamaguchi et al. (JP 2006-342208) is cumulative to the above Li rejection of claims 2, 39-41, 44 and 45.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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