DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
No new grounds of rejection have been introduced, therefore this action is properly deemed FINAL.
Claim Rejections - 35 USC § 103
Claim(s) 1, 7, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuniya (US 2002/0045043) in view of Asada (WO 2019/230700).
The rejection is adequately set forth in the office action mailed on 7/1/2026 and is incorporated here by reference.
Claim(s) 1, 5-7, 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitson (US 2009/0312483) in view of Asada (WO 2019/230700).
The rejection is adequately set forth in the office action mailed on 7/1/2026 and is incorporated here by reference.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitson (US 2009/0312483) in view of Asada (WO 2019/230700) and Koda (JP 2016/089051).
The rejection is adequately set forth in the office action mailed on 7/1/2026 and is incorporated here by reference.
Claim(s) 1, 3-4, 7, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuniya (US 2002/0045043) in view of Asada (WO 2019/230700) and Koda (JP 2016/089051).
The rejection is adequately set forth in the office action mailed on 7/1/2026 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 9/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the inherency position presented in the rejection relies on a possibility and is not sufficient to establish the property is necessarily present.
Applicant argues that the rejection relies on improper hindsight because it relies on the Applicant’s own disclosure.
This is not persuasive.
Asada teaches farnesene polymers with a Mw of 166,000 and 60,000 (Table 1). The position in the rejection is that these polymers necessarily have the claimed Mt. The rejection presents the position that the Mt is about the same as the Mw, and thus the Mt of Asada would be about 166,000 and 60,000 which meets the claimed range.
As evidence of the relationship between the Mw and Mt, the examiner directed attention to Table 1 of the instant specification which shows a Mw of 135,000 has a Mt of 155,000 and an Mw of 66,000 has a Mt of 74,000 and a Mw of 146,000 has an Mt of 141,000. Each of these examples shows that a Mw is about the same as the Mt.
As the information from the instant specification is being used to establish that a property of a component of the prior art is necessarily present in said component, it is not used in hindsight reconstruction. The instant specification must be used to interpret instant claim limitations. In this instance, the instant specification was used to interpret how Mt is being calculate and what Mt polymers of a given Mw will have.
Applicant argues that the data in the instant specification relates to polymers, polymerization conditions, and molecular weight distributions of the present application and not obtained from Asada.
This is not persuasive because the data referred to in the instant specification does not rely on the polymerization conditions or molecular weight distributions. The Mw/Mn is taught by Asuda and no polymerization conditions are present in the claims.
Additionally, no data or evidence has been provided that shows a polymer with a Mw of 60,000-200,000 would have a Mt outside the claimed range.
Applicant argues that the claimed adhesive achieves a combination of temperature selective peeling and transfer behavior. It is noted that these features are not recited in the claims. Additionally, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by application. See MPEP 2144(IV). In other words, it is not necessary for the prior art to have the same reason for using the farnesene polymers as the instant invention.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Other relevant art includes Hirata (JP 2016-037588). Hirata teaches a rubber composition (¶1) which includes 100 pbm rubber, 20-150 pbm filler, and 0.1-30 pbm modified farnesene polymer (¶ 8) where the farnesene polymer has a melt viscosity of 0.1-3,000 Pa.s, a Mt of 3,000-550,000 (¶ 8) and gives examples where the farnesene polymer has a Mw of 148,000, a Mt of 156,000, a Mw/Mn of 1.12, and a viscosity of 107 Pa.s (Table 1). This meets claimed requirements (I)-(II). This shows a farnesene polymer having an Mw of 148,000 gives a Mt of 156,000.
Conclusion
THIS ACTION IS MADE FINAL. 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 ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
