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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (EP 3,048,148) in view of Tomoi (US 2012/0111469).
Tanaka is directed to an adhesive sheet for a tire comprising a substrate and an adhesive layer containing a hot melt adhesive comprising a block copolymer and plural tackifiers (paragraph 0020). The block copolymer may be a styrene-butadiene-styrene block copolymer (paragraph 0071). The plural tackifiers have different softening points and may be rosin-based resins, terpene resins, or petroleum resins (paragraph 0086). Having plural tackifiers (preferably three) with higher and lower softening points allow the composition to manifest adhesiveness at higher and lower temperatures (paragraph 0087). The first tackifier is preferably a terpene-based resin that is liquid at room temperature (paragraph 0088). The second tackifier is preferably a rosin ester having a softening point of at least 120 oC (paragraph 0098), with the embodiment of Example 1 employing one having a softening point of 160 oC (paragraph 0157). The third tackifier preferably has a softening point of 60 to 100 oC (paragraph 0103).
Tanaka does not teach that the block copolymer is a partially hydrogenated styrene-butadiene block copolymer. However, Tanaka does teach that the block copolymer may be a styrene-isobutylene-styrene, styrene-butadiene-styrene, or styrene-isoprene-styrene block copolymer (paragraph 0071).
Tomoi is directed to an adhesive composition allowing for excellent adhesion between a thermoplastic resin or elastomer and a tire (paragraph 0004). The adhesion comprises a thermoplastic elastomer block copolymer, such as styrene-butadiene-styrene, styrene-isoprene-styrene, or styrene-butadiene-butylene-styrene (paragraph 0006). A styrene-butadiene-butylene-styrene block copolymer is a partially hydrogenated styrene-butadiene block copolymer.
Tomoi show that styrene-butadiene-styrene, styrene-isoprene-styrene, and styrene-butadiene-butylene-styrene are known in the art as functionally equivalent structure block copolymer for adhesive compositions used with tires. Therefore, because these block copolymer were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute styrene-butadiene-butylene-styrene block copolymer for the styrene-butadiene-styrene or styrene-isoprene-styrene block copolymer of Tanaka.
Regarding the limitation directed to holding force in claim 1 and adhesive force in claim 5, since the adhesive sheet of Tanaka is designed to manifest adhesiveness at a high temperature (paragraph 0087) and the substrate of the adhesive tape of Tanaka is preferably a polypropylene (paragraph 0053), one of ordinary skill in the art would expect it to have both a holding force and an adhesive force to polypropylene that satisfies the limitations of claims 1, 5, and 8.
Regarding the limitation directed to melt viscosity, according to the applicant's specification (e.g., paragraph 0010 bridging pages 6-7) the melt viscosity is chosen such that the adhesive may be applied by hot-melt methods. Since the adhesive of Tanaka is a hot melt adhesive, one of ordinary skill in the art would expect it to have a viscosity that would allow it to be applied by hot melt methods - a viscosity that would also be expected to fall within the range recited in claim 1.
Regarding claim 3, while Tanaka teaches that the tackifier having a softening point of 60 to 100 oC is preferably a petroleum resin (paragraph 0103), Tanaka also teaches that tackifiers are not limited by kind with both terpene and petroleum resins cited as suitable (paragraph 0086). Since it has been held that a preferred embodiment does not constitute a teaching away from a broader disclosure (see MPEP 2123 II), it would have been obvious to one of ordinary skill in the art to use any of the disclosed classes of tackifiers, including terpene resins, as the tackifier having a softening point of 60 to 100 oC.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura et al. (JP 2017-186487) in view of Tanaka et al. (EP 3,048,148).
Yoshimura is directed to an adhesive tape having an adhesive layer formed from a hot melt adhesive comprising a partially hydrogenated styrene-butadiene block copolymer (A) and a tackifier (B) comprising a rosin ester resin (B1) (paragraph 0015). The adhesive is designed to have adhesive strength and holding power over a wide temperature range (paragraph 0008). Other tackifiers may be used in addition to the rosin ester (B1), such as petroleum resins and terpene resins, and may be solid or liquid at room temperature (paragraph 0052). (paragraph 0051-0052). The tackifier is preferably present at a concentration of 30 to 200 parts by weight per 100 parts of copolymer (A) (paragraph 0054).
While Yoshimura teaches that petroleum and terpene resins may be used in conjunction with the rosin ester resin tackifier, the reference does not teach using three tackifiers wherein one is a liquid at 23 oC (i.e., room temperature), one has a softening point of 70 to 120 oC, and one had a softening point of at least 140 oC.
Tanaka is directed to an adhesive sheet comprising a substrate and an adhesive layer containing a hot melt adhesive comprising a block copolymer and plural tackifiers (paragraph 0020). The plural tackifiers have different softening points and may be rosin-based resins, terpene resins, or petroleum resins (paragraph 0086). Having plural tackifiers (preferably three) with higher and lower softening points allow the composition to manifest adhesiveness at higher and lower temperatures (paragraph 0087). The first tackifier is preferably a terpene-based resin that is liquid at room temperature that comprises 0.5 to 20 wt% relative to the total amount of tackifiers (paragraph 0088). The second tackifier is preferably a rosin ester having a softening point of at least 120 oC (paragraph 0098) at a concentration of 5 to 25 wt% relative to the total amount of tackifiers (paragraph 0100). In the embodiment of Example 1, the second tackifier is a rosin ester having a softening point of 160 oC (paragraph 0157). The third tackifier preferably has a softening point of 60 to 100 oC (paragraph 0103).
It would have been obvious to use the tackifier system of Tanaka as the tackifier of Yoshimura to further improve adhesiveness at lower and higher temperatures.
Regarding the limitation directed to holding force in claim 1 and adhesive force in claims 5 and 8, since the adhesive tape of Yoshimura is designed to have adhesive strength and holding power over a wide temperature range (paragraph 0008) and designed to adhere to synthetic resins such as (paragraph 0068), one of ordinary skill in the art would expect it to have both a holding force and an adhesive force to polypropylene that satisfies the limitations of claims 1, 5, and 8.
Regarding the limitation directed to melt viscosity, according to the applicant's specification (e.g., paragraph 0010 bridging pages 6-7) the melt viscosity is chosen such that the adhesive may be applied by hot-melt methods. Since the adhesive of Yoshimura is a hot melt adhesive, one of ordinary skill in the art would expect it to have a viscosity that would allow it to be applied by hot melt methods - a viscosity that would also be expected to fall within the range recited in claim 1.
Regarding the contents of block copolymer and tackifiers in the adhesive composition recited in claim 2, Yoshimura teaches an adhesive composition comprises 30 to 200 wt parts tackifier per 100 parts block copolymer while Tanaka provides motivation for one of ordinary skill in the art to use a three component system as the tackifier - with the one corresponding to the first tackifier of the claims being 0.5 to 20 wt% of the tackifier system, the one corresponding to the third tackifier of the claims being 5 to 25 wt% of the tackifier system, and the one corresponding to the second tackifier of the claims being the remainder. As these ranges overlap the claimed ranges recited in claim 2 (e.g., a composition containing 100 parts tackifier per 100 parts block copolymer would have a block copolymer content of 50 parts per mass per 100 parts of the composition), the courts have held that a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claims 3 and 6, while Tanaka teaches that the tackifier having a softening point of 60 to 100 oC is preferably a petroleum resin (paragraph 0103), Tanaka also teaches that tackifiers are not limited by kind with both terpene and petroleum resins cited as suitable (paragraph 0086). Since it has been held that a preferred embodiment does not constitute a teaching away from a broader disclosure (see MPEP 2123 II), it would have been obvious to one of ordinary skill in the art to use any of the disclosed classes of tackifiers, including terpene resins, as the tackifier having a softening point of 60 to 100 oC.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/573,705 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions of instant claims 1, 4, and 5 represent a genus of which the inventions described by claim 1 of copending Application No. 18/573,705 is a species since the partially hydrogenated styrene-butadiene block copolymer recited in claim 1 of copending Application No. 18/573,705 is required to have one component with a peak top molecular weight of 200,000 to 400,000 and a second component having a peak top molecular weight of 100,000 to 200,000 while that of the instant claim may have components with any peak top molecular weight. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Regarding the limitation directed to holding force and melt viscosity in claim 1 and adhesive force in claim 5, one of ordinary skill in the art would expect these to be material properties. Since the adhesive composition recited in claim 1 of copending Application No. 18/573,705 is formed of the same material as the instant invention, one of ordinary skill in the art would expect it to have a melt viscosity, holding force, and adhesive force that satisfies the limitations of claims 1 and 5.
This is a provisional nonstatutory double patenting rejection because, while the patentably indistinct claims have been allowed, they have not in fact been patented.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/573,705 (reference application), as applied to claim 1 above, and further in view of He et al. (US 2010/0210163)
Claim 1 of copending Application No. 18/573,705 explicitly or inherently recites all the limitation of claim 3, except for specifying that the second tackifier contains a terpene-based resin.
He is directed to an adhesive composition comprising a styrene butadiene block copolymer and a tackifier (paragraph 0009). The tackifier may be a polyterpene resin having a softening point of about 80 to 150 oC (paragraph 0026).
It would have been obvious to use of the polyterpene resin of He as the second tackifier recited in claim 1 of copending Application No. 18/573,705 since the courts have held the selection of a known material (e.g., a terpene with softening point of about 80 to 150 oC) based on its suitability for its intended use (e.g. tackifier in a block copolymer based adhesive) supported a prima facie obviousness determination. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection because, while the patentably indistinct claims have been allowed, they have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787