DETAILED ACTION
Status of Application
This action follows a reply filed on 09/20/2026. Per the reply, the Specification and claims 1, 10 and 11 have been amended; claim 15 has been cancelled. No new claims have been added. Accordingly, claims 1-14 and 16-20 remain pending and under examination herein.
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 .
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 07/15/2026 is in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Withdrawn Objection(s)/Rejection(s)
The outstanding objections have been obviated by way of appropriate amendments to the Specification and claims 10-11.
The outstanding rejection under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s stated concurrence with the Examiner's interpretation that the phrase "for an acryl-based adhesive, or for an amine-based adhesive" in claim 17 is a non-limiting recitation describing the intended use or application of the adhesion-imparting resin (see page 13, filed 09/20/2026).
The outstanding rejections under 35 U.S.C. 102(a)(1) have been obviated by the amendment rewriting claim 1 to include the limitations of now-cancelled claim 15.
Withdrawn Allowability Indication
The indicated allowability of now-cancelled claim 15 (corresponding to claim 1 as currently amended) is withdrawn in view of the newly discovered reference(s) to Nagafuchi, et al. Rejections based on the newly cited reference(s) follow.
Claim Interpretation
With respect to claims 1-18, recitation of "adhesion-imparting" in the preamble of each claim is
considered non-limiting for purposes of claim construction because the body of each claim fully sets
forth all constitutive repeating units of the claimed resin, and the preamble merely states the purpose
or intended use of that resin. See MPEP 2111.02(II).
Claim Rejection – 35 U.S.C. 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As noted above, the Applicant has acknowledged on the record that the phrase "for an acryl-based adhesive, or for an amine-based adhesive" in claim 17 is a non-limiting recitation describing the intended use or application of the adhesion-imparting resin, and the remaining claim text is merely a reference to “[t]he adhesion-imparting resin of claim 1”. As such, claim 17 is fairly construed as merely repeating part of the scope of its parent claim, and therefore properly rejected as being of improper dependent form for failing to further substantively limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections – 35 U.S.C. 102
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.
Claims 1-2, 7-11 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagafuchi, et al (US 7754831 B2) (‘Nagafuchi’).
Regarding Claims 1-2 and 7, reference to Nagafuchi describes a polymer solution E-1 synthesized from a composition of monomers comprising styrene (St, a styrene-based species of petroleum resin monomer, per claim 7) and glycidyl methacrylate (GMA, an ethylenically unsaturated monomer containing an epoxy group) in respective amounts of 20 and 19 parts by weight (see col. 33-34 (Table 2) and col. 35, lines 1-6 and 17). As the amount of styrene exceeds the amount of glycidyl methacrylate in the monomer composition, it is plausible to infer that the obtained polymer solution E-1 likewise comprises the corresponding repeating unit (a) derived from the petroleum resin monomer (St) in an amount greater than an amount of the corresponding repeating unit (b) derived from the ethylenically unsaturated monomer containing an epoxy group (GMA) [for claim 1]. Further, the polymer solution E-1 is characterized by properties including a Mass average molecular weight of 3000. This parameter was measured by GPC using a polystyrene sample as detailed in Nagafuchi at column 22, line 25 et seq. As the Applicant’s weight-average molecular weight is similarly measured using GPC (cf., Spec., p. 23, penult. para), Nagafuchi’s mass average molecular weight of 3000 is considered equivalent to a weight-average molecular weight as recited in claims 1 and 2 herein. Accordingly, Nagafuchi is considered to identically describe an embodiment of the instant adhesion-imparting resin as claimed.
Regarding Claim 8, Nagafuchi discloses the adhesion-imparting resin of claim 7 as discussed above, wherein the styrene-based monomer (St) corresponds to recited Formula 1, when R1 and R₂ are each hydrogen and a1 is an integer of 5.
Regarding Claims 9-11, Nagafuchi discloses the adhesion-imparting resin of claim 7 as discussed above, wherein the ethylenically unsaturated monomer containing an epoxy group (GMA) includes an acryloyl group [for claim 9], and is a compound represented by recited Formula 2 (when L₁ is -C(=0)-0-, n1 and n2 are each an integer of 0, R₃ is a methyl group and R4 - R₆ are each hydrogen) [for claim 10] and recited Formula 2-3 [for claim 11].
Regarding Claim 17, Nagafuchi discloses the adhesion-imparting resin of claim 1 as discussed above, and the added claim language is merely directed to non-limiting recitations of intended use or application of the adhesion-imparting resin as acknowledged by Applicant.
Response to Argument
Applicant’s arguments with respect to claim(s) 1 have been considered but are deemed moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 3-6, 12-14, 16 and 18-20 are objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
The closest prior art to Nafaguchi et al, discussed above, does not describe the inventions of instant claims 3-6, 12-14, 16 and 18-20, or provide proper rationale to modify its invention into the invention of any of said claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 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, Robert Jones, can be reached at (571) 270-7733. The appropriate 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 Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, 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.
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/10-05-26
Prosecution Insights