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 .
This Office Action is in response to the amendments and arguments filed January 14, 2026 wherein claims 1-4, 6, 8-9, 11, and 20 are currently pending and claims 23-24, 26, 29-32, 35, 37, 44, and 47 are withdrawn due to a restriction requirement.
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.
Claims 1, 2, and 20 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. Claims 3-4, 6, 8-9, and 11 depend on the above claims and, therefore, are also rejected.
With regards to claim 1, the claim limitations include that the adhesive or adhesive component enables simultaneous bonding to “low surface energy substrates” and “high surface energy substrates”. However, the claim nor the specification define what surface energy is considered to be low or high and fails to give examples regarding substrates that are low and high in surface energy.
With regards to claim 1, The term “improved” in claim 1 is a relative term which renders the claim indefinite. The term “improved” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “preferred adhesion” in claim 1 is a relative term which renders the claim indefinite. The term “preferred” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
With regards to claim 2, Claim 2 recites the limitation "the hot melt adhesive" in line 4. There is insufficient antecedent basis for this limitation in the claim.
With regards to claim 20, the limitations state that the phase separation of partially or poorly miscible ingredients is “substantially” avoided. The term “substantially” in claim 20 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 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.
Claim(s) 1, 2, 4, 8, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al (WO 2016/028970).
With regards to claims 1 and 11, Jin teaches a hot melt adhesive that is formed from a hard polymer including propylene and a soft polymer including ethylene (abstract) that is used for bonding a first and second substrate wherein the first and second substrate are a different material (00114). Jin further teaches the substrate to include metal (reading on a high surface energy material), and polyolefin, acrylonitrile butadiene styrene or polyvinyl chloride (reading on a low surface energy material).
With regards to claim 2, Jin teaches the adhesive to contain from greater than 0 to 97% of the adhesive being a polymer (0003).
With regards to claim 4, Jin teaches two block copolymers (abstract).
With regards to claim 8, Jin teaches the adhesive to be used for a polymer such as a polyurethane (00114) and grafted (reading on modified) polyolefins (0076).
With regards to claim 9, Jin teaches the optional addition of a couple agent (0072).
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.
Claims 3 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al (WO 2016/028970).
The disclosure of Jin is adequately set forth in paragraph 6 above and is herein incorporated by reference.
With regards to claim 3, Jin teaches the adhesives to be applied directly to the substrates (00107 and 0081 examples) reading on no pretreatment. Jin teaches the first and second substrate to be different materials (00114).
Jin does not teach the affinity to the different substrates. The affinity of an adhesive to a substrate is influenced by factors such as the surface chemistry of the adhesive, the surface roughness of the substrate, the surface energy of the substrate, the temperature and environment, and the adhesive chemistry. Because the adhesive is the same on both substrates the only factors that are relevant are the surface energy of the substrate and the surface roughness of the substrate. As stated above, the surface energy of the substrates differs and, therefore, the affinity between the two substrates would, therefore, be different.
With regards to claim 20, Jin teaches the polymer blend that may or may not be phase separated (0009). Jin teaches the adhesive to have a substantially lower melt flow rate than the initial flow rate (0072) reading on improved
Jin does not teach the adhesive to be without die swell. However, the die swell is largely dependent on the processing conditions, material viscoelastic properties, and the rheological properties of the adhesive. Therefore, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are used, the claimed physical properties relating to the absences of a die swell are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jin et al (WO 2016/028970) or in the alternative in view of Ye et al (CN 109679532).
The disclosure of Jin is adequately set forth in paragraph 6 above and is herein incorporated by reference.
With regards to claim 6, Jin teaches the adhesive component to be dissolved into the liquid feed of the hot melt adhesive (00187) and further teaches the adhesive to cool and solidify (00107) reading on being a solid at room temperature. Jin teaches the adhesive to be applied to the substrates and cured (reading on a film) (00107) wherein the substrate includes fabrics (00114)
Jin is silent on the use of the adhesive on a shoe. However, Jin does teach the use of the adhesive on fabrics (00114) and, therefore, one skilled in the art prior to the effective filing date of the present invention would know that the adhesive would work on a shoe material.
In the alternative, Ye teaches a hot melt adhesive film for top-grade shoe materials (page 1) that contains two different resins (page 1). Ye teaches the motivation for using the adhesive composition to be because it has good comprehensive properties including softening point, bonding strength, low temperature flexibility, fast curing, moderate hardness and moderate melt viscosity (page 1). Ye and Jin are analogous in the art of adhesive compositions. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to use the adhesive of Jin on shoes as done in Ye, thereby obtaining the present invention.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al (WO 2016/028970) or in the alternative in view of Rosin et al (EP 1471087).
The disclosure of Jin is adequately set forth in paragraph 6 above and is herein incorporated by reference.
With regards to claim 8, Jin does not teach the addition of a thermoplastic polyurethane to the adhesive.
Rosin teaches a hot-melt polyurethane adhesive for bonding shoes (0003) that includes a polyurethane (abstract and 0001) and teaches the motivation for using a polyurethane to be because it provides for a good peel strength and creep resistance (abstract). Jin and Rosin are analogous in the art of hot melt adhesives. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to add the polyurethane of Rosin to the adhesive of Jin, thereby obtaining the present invention.
Response to Arguments
Applicant’s arguments, see pages 7-12, filed January 14, 2026, with respect to claims 1-4, 6, 8-9, 11, and 20 under 35 USC 102(a)(1) with respect to Yet et al have been fully considered and are persuasive. The rejection over Ye of claims 1-4, 6, 8-9, 11, and 20 has been withdrawn.
Applicant's arguments filed January 14, 2026 have been fully considered but they are not persuasive.
Argument - Applicants argue that Jin does not teach the polymer backbone to have segments present for preferred adhesion to a particular substrate type.
Response - As stated above in the rejection under 35 USC 112, the term “preferred adhesion” is rendered indefinite because it is a term of degree that is not defined nor does the specification provide a standard for ascertaining the requisite degree of what would classify the adhesive as being of preferred adhesion. Therefore, this argument is not persuasive.
Argument - Applicant argues that the present application describes different challenges with substrates with different polarities that are not addressed in Jin.
Response - It is important to note the claim only requires the substrates to be different and, now due to the amendment, to have different surface energies. The claim does not reference polarity of the substrates. Therefore, this argument is not persuasive.
Argument - Applicant argues that Jin focuses on the fact that the adhesive works on a rigid and flexible substrate but does not show that it has preferred adhesion to either substrate.
Response - As stated above, the term preferred adhesion is indefinite as it is a term of degree. Therefore, Jin does teach the adhesive to adhere to both rigid and flexible substrates, thus meeting the requirements of the claim.
Argument - Applicants argue that the polyethylene polymers or wax and propylene-based polymer or wax do not blend particularly well and, thus, product a mixture that exhibits less than desirable properties for HMA applications.
Response - Jin teaches the opposite to be true. Jin teaches that the adhesive is for HMA compositions exhibits good adhesive properties and short set time (0002). Further, the blendability of the components is not claimed and, therefore, how well the components blend is not a limitation that needs to be met.
Argument - Jin does not recognize the technical challenges of the present application of miscibility problems, crystallinity, or the like flowing from desirable adhesion of two different substrates.
Response - Jin does teach that the polymer blends may or may not be miscible (0009). Further, the miscibility of the HMA is not claimed. Therefore, this is not a limitation that needs to be met.
Argument - Applicants argue that with respect to claim 3, the claim requires all of the limitations as “and” is used, not “or”.
Response - This argument is persuasive and the new rejection is written above.
Argument - Applicant argues that for a negative limitation the art needs to not only be missing the element but to have something more to suggest the silence is significant.
Response - It is true that the art of Jin does not discuss pre-treatment. The “something more” is that the substrates in the examples are not pre-treated, meaning, it is not preferred to pre-treat the substrates.
Argument - Applicants argue that with regards to claim 6, that inherency is for a property or characteristic of the subject matter.
Response - It is first noted that inherency was not used for this rejection. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. However, Jin does teach the substrate to include fabric and the rejection further includes a secondary reference with motivation.
Argument - Applicants argue with regards to claim 8, that the polyurethan of Jin is in reference to the substrate, not the adhesive.
Response - It is true that Jin teaches a polyurethane to be included as an adhesive, therefore, this rejection is persuasive. However, a new rejection is made in view of Rosin.
Argument - With regards to claim 9, applicants state the limitations of the claim require free of any coupling agent and Jin teaches the addition of a coupling agent.
Response - The claim limitation states that the composition is free of coupling agents or is formed by the coupling with coupling agents. Therefore, a coupling agent may be used.
Argument - with regards to claim 20, applicants argue that die swell is not an additional component but rather a property.
Response - This argument is persuasive, however, a new rejection is written above.
Conclusion
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763