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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/18/2026 has been entered.
Claim(s) 11-12 and 14-15 are withdrawn due to a previous restriction requirement.
Claim(s) 1-16, are now pending in the application.
Claim Rejections - 35 USC § 103
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.
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 1-10, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP2018091917 to Koike in view of CN104411796 to Shimamura et al. (as found on the IDS dated 3/6/2024). For the purposes of examination, citations for Koike and Shimamura are taken from a machine translation equivalent of the document.
Regarding Claim 1-8, Koike teaches a hot melt adhesive [title] comprising a thermoplastic block copolymer (A) [abstract] such as styrene-isoprene-styrene (SIS) [0021] thus reading on at least one styrene block copolymer, and (B), an acid modified petroleum resin manufactured by acid modification using unsaturated carboxylic acid [abstract] such as maleic acid [0030] reading on all limitations of acid tackifiying resin in claims 1 and 6-8.
Koike does not particularly teach an acid modified rubber.
However, Shimamura teaches a hot melt adhesive composition [title] comprising 3-10 parts [0042] (reading on claim 5) of liquid rubber (B) modified with a polar group such as a carboxyl group and/or carboxylic anhydride group [0033] such as LIR-410 produced by Kuraray [0038]. LIR-410 is the same commercial acid modified rubber used in instant specification [0041] thereby reading on the limitations of acid modified rubber in claims 1-4. Koike and Shimamura are analogous art as they are from the same field of endeavor, namely hot melt adhesives comprising styrene block copolymers and tackifiers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Shimamura’s acid modified rubber resin to Koike’s hot melt adhesive, thereby arriving at the claimed invention.
The motivation would have been that the acid modified rubber in these amounts contributes wet adhesion to a hot melt composition [0042 Shimamura] wherein Koike desires a hot melt adhesive agent having enhanced wet adhesiveness [Koike, abstract].
Koike in view of Shimamura teaches the at least one acid modified rubber in an amount of 3-10 parts relative to the thermoplastic block copolymer [0042] which lies just outside the instantly claimed range of greater than 10 parts. It is the Office's position that the values are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding Claims 9-10, Koike in view of Shimamura teaches the hot melt adhesive composition of claim 1, further comprising an unmodified petroleum resin [0036] such as C5 and C9 petroleum resins [0038] reading on non-acid tackifying resin selected from petroleum hydrocarbon resins of C5/C9 monomers.
Regarding Claims 13, Koike in view of Shimamura teach the hot melt adhesive composition of claim 1, that is used in disposable products such as diapers [0065] reading on article.
Regarding Claim 16, Koike in view of Shimamura teach the hot melt adhesive composition of claim 1, wherein the acid modified tackifying resin has an acid value preferably in the range of 0.1 to 50 mgKOH/g [0034] thereby reasonably reading on the acid value of at least 2.0 mg KOH /g.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. WO2014/185526 to Narita is made of record as it teaches an adhesive [title] comprising rubber, a tackifying resin, and a 20-40 parts of liquid isoprene [Narita, abstract] wherein the liquid isoprene is LIR-410 [Narita, Page 4]which is the same commercially available acid modified rubber used in instant specification.
Response to Arguments
Applicant's arguments filed 8/18/2026 have been fully considered but they are not persuasive.
Applicant states that neither Koike or Shimamura teach the newly amended claim of greater than 10 parts of acid modified rubber per 100 parts of styrene block copolymer.
In response, attention is drawn to the updated rejection of claim 1 wherein A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Applicant states that Shimamura expressly discourages the use of excessively high content of liquid rubber as it may result in low thermal stability, further stating that a skilled artisan seeking to improve wet adhesion using Shimamura’s teaching would have stayed within Shimamura’s recommended range of 0.05-10 parts.
Examiner respectfully disagrees as MPEP 2144.05 teaches A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, Shimamura teaches a range of 0.05-10 parts, 1-10 parts, and 3-10 parts by weight of the thermoplastic block copolymer [0042] wherein the amount of 10 parts is a preferred amount of liquid rubber. Based on MPEP 2144.05 as set forth above, it is expected that a negligible increase (such as using 10.1 parts of liquid rubber that reads on greater than 10 parts) would have given the same properties. This is further supported by Shimamura’s ambiguous terminology wherein Shimamura explicitly states “hot melt adhesive compositions with an excessively high content of liquid rubber (B) may result in low thermal stability” [0042] wherein the phrase “excessively high” is not defined and the term “may” implies that there is only a chance of decreasing thermal stability. It is further noted that the value of 10.1 is not reasonably expected to be considered “excessively high” as it is adjacent to the value of 10 which is considered within the most preferred range of liquid rubber [0042]. Therefore, it would have been obvious to one of ordinary skill in the art to use greater than 10 parts of liquid rubber such as LIR 410 in order to improve wet adhesion.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
